Recoup Your Investment and More – Your Equitable Intervening Rights Are Safe

In John Bean Tech. Corp. v. Morris & Associates, Inc., Nos. 2020-1090, 2020-1148 (Fed. Cir. Feb. 19, 2021), the Federal Circuit affirmed the district court’s decision granting-in-part Morris’s motion for summary judgment as to equitable intervening rights.

In 2003, Morris sent John Bean a letter explaining its belief that U.S. Patent No. 6,397,622 was invalid and provided prior art.  After receiving no response from John Bean, Morris began practicing the claimed invention.  John Bean took no action until eleven years later when it sought ex parte reexamination of the ’622 patent.  Through ex parte reexamination, John Bean amended two claims and added six additional claims.  After the reexamination certificate issued in 2014, John Bean sued Morris for infringement.  Morris filed a motion for summary judgment arguing that John Bean’s claim was barred due to equitable intervening rights.  After analyzing six equitable intervening rights factors, the district court concluded that Morris was entitled to equitable intervening rights.

On appeal, John Bean argued that the district court did not give sufficient weight to the fact that Morris had already recouped its investment.  The Federal Circuit rejected John Morris’s argument, explaining that monetary investments are not the only relevant investments and that recoupment of monetary investments does not preclude the grant of equitable intervening rights.  The Court concluded that the district court did not abuse its discretion in granting-in-part Morris’s summary judgment motion for equitable intervening rights.