John Bean Technologies Corp. v. Morris & Associates, Inc., No. 20-1090 (Fed. Cir. 2021)Annotate this Case
Bean’s patent, issued in 2002, covers an auger-type poultry chiller. Days after the patent issued, Bean’s only domestic competition, Morris, wrote a demand letter, arguing that the patent was invalid and citing prior art. Morris received no response and proceeded to develop and sell chillers that included features described in the Bean patent. About 11 years later, Bean requested ex parte reexamination of its patent. After John Bean amended and added claims, the Patent and Trademark Office issued a reexamination certificate; six weeks after receiving that certificate, Bean filed suit, alleging that Morris infringed the patent once the reexamination certificate issued.
The Federal Circuit affirmed partial summary judgment in favor of Morris. A defendant, accused of infringing a reissued patent, may raise the affirmative defense of equitable intervening rights, 35 U.S.C. 252, and may be protected from liability for infringement of substantively and substantially altered claims in a reissued patent. Granting equitable intervening rights is a matter of judicial discretion. Once granted, they give the alleged infringer the continued right to manufacture, sell, or use the accused product after the reexamination certificate is issued “when the defendant made, purchased, or used identical products, or made substantial preparations to make, use, or sell identical products, before the reissue date.” The public has the right to use what is not specifically claimed in the original patent.