Claim Amendments May Reset Timing For Equitable Estoppel

The US Court of Appeals for the Federal Circuit held that prior acts related to earlier-issued claims did not lead to equitable estoppel for amended claims that issued in a later re-examination proceeding. John Bean Technologies Corp. v. Morris & Associates, Inc., Case No. 17-1502 (Fed. Cir., Apr. 19, 2018) (Reyna, J).

John Bean Technologies competes with Morris & Associates over chillers designed for poultry carcasses. John Bean owns a patent that it alleged covers Morris's competing chiller. When Morris learned of John Bean's allegations, Morris informed John Bean of invalidating prior art. In its demand letter, Morris invited John Bean to refute its invalidity position, but John Bean never responded. Relying on John Bean's silence, Morris continued to sell allegedly infringing chillers.