Main Menu

The Federal Circuit upheld the jury’s verdict invalidating five claims over a prior invention, holding that the testimony of the prior inventor and the defendants’ expert were not conclusory, were sufficiently corroborated, when applying the court’s flexible, rule of reason demand for independent evidence of the alleged prior conception and reduction to practice, and the prior invention was not abandoned, suppressed, or concealed as there was a “reasonable pause in active work” due to a bankruptcy.  As to the defendants’ assertion that the reissue patents were invalid because there was no “error” in drafting the original patents, the court held that failing to “appreciate the full scope of [the] invention and the inadequacy of the original claims for properly capturing the full scope” is a “classic reason that qualifies as error.”

Hoyt A. Fleming v. Escort Inc., Case No. 2014-1331, -1371 (December 24, 2014); Opinion by: Taranto, joined by Bryson and Hughes; Appealed From: District of Idaho, Winmill, J.  To read the full opinion, please click here.

If you have questions or need more information, please contact info@mckoolsmith.com.

Back to Page