CAFC says PTO Reexamination Should Not Preclude Validity Challenges at District Court

By Steve Brachmann
January 28, 2018

Gavel questionOn January 12th, the Court of Appeals for the Federal Circuit issued a precedential opinion in Exmark Manufacturing Company, Inc. v. Briggs & Stratton Power Products Group, LLC which vacated a $48 million damages award for willful patent infringement and remanded proceedings back to the district court. Along with the willfulness finding, the Federal Circuit also overturned findings of no invalidity on a patent that had already survived multiple reexaminations at the U.S. Patent and Trademark Office in a decision giving patent owners further reason to question whether the Federal Circuit may be more aligned with anti-patent viewpoints. The Federal Circuit panel on the case included Circuit Judges Evan Wallach, Raymond Chen and Kara Stoll with Stoll penning the opinion in the case.

The patent at issue in the Federal Circuit appeal is U.S. Patent No. 5987863, titled Lawn Mower Having Flow Control Baffles and Removable Mulching Baffles. Issued to Exmark in November 1999, it claims a multiblade lawn mower including a mowing deck having a plurality of cutting blades rotatably disposed therein as well as first and second flow control baffles defining a plurality of open throat portions which are positioned between adjacent cutting blades. The resulting invention provides a lawn mower with removable mulching baffles which efficiently directs grass clippings and air toward the side discharge of the mower deck, preventing grass clippings and air from being directed downwardly towards the ground, while requiring a minimum number of parts and connection points.

The appeal to the Federal Circuit follows trial proceedings in the District of Nebraska, which began back in May 2010 when Exmark filed a complaint for patent infringement against Briggs & Stratton asserting the ‘863 patent. In its complaint, Exmark alleged that Briggs & Stratton’s sale of the Snapper Pro S200X and Ferris Comfort Control DD mowers, as well as mowers utilizing Briggs’ iCD Cutting System. An amended complaint filed by Exmark in August 2010 notes that Briggs has been provided with written notice of the alleged infringement and charges that Briggs’ infringement of the ‘863 patent had been willful.

The district court’s finding of no invalidity came in a memorandum and order entered in the case in July 2015. Both Briggs and fellow defendant Schiller Grounds Care had argued that the ‘863 patent was invalid under multiple statutes including 35 U.S.C. § 102 grounds for obviousness, 35 U.S.C. § 103 grounds for obviousness and 35 U.S.C. § 112 grounds for indefiniteness. The Nebraska district court found that no reasonable jury could find the claims of the ‘863 patent invalid for anticipation or obviousness as the patent had been examined four times by the USPTO with all claims being upheld as valid, rejecting the same prior art invalidity arguments which were presented by defendants during this trial.

On the indefiniteness challenge, defendants cited to the U.S. Supreme Court’s 2014 decision in Nautilus, Inc. v. Biosig Instruments, Inc. (Nautilus II), arguing that the case changed the standards for indefiniteness, and noted that the USPTO had not been asked to consider an indefiniteness challenge to the ‘863 patent. However, the district court found that claims including terms of degree such as “substantially” or “adjacent” are not indefinite under the Nautilus II standard and could be easily understood in the context of the ‘863 patent claims.

Along with denying Briggs’ motion on indefiniteness, the Nebraska district court granted Exmark’s motion of infringement against Briggs with respect to its original designs on summary judgment in the July 2015 order. A jury verdict entered in September 2015 awarded Exmark damages in excess of $24 million along with a finding that Briggs & Stratton’s infringement had been willful with respect to its original mower deck design. Exmark’s motion on enhanced damages for willful infringement was granted in an order filed in May 2016 after the court found that Exmark had presented strong evidence of deliberate copying of the motor deck as well as evidence that Briggs’ knew of the ‘863 patent.

On appeal to the Federal Circuit, Briggs & Stratton challenged six orders coming from the district court in the case including summary judgment that claim 1 of the ‘863 patent is neither anticipated nor obvious; denial of summary judgment that claim 1 is indefinite; denial of a new trial on damages; evidentiary rulings related to damages; denial of a new trial on willfulness; and denial of Briggs’ laches defense. Although the Federal Circuit affirmed the lower court’s denial of summary judgment on indefiniteness as well as Briggs’ laches defense, the appellate court vacated the Nebraska court’s finding of willfulness, the jury’s damages award as well as the enhanced damages award, remanding those aspects of the case back to the lower court.

“We hold that a reexamination confirming patentability of a patent claim alone is not determinative of whether a genuine issue of fact precludes summary judgment of no invalidity,” the Federal Circuit’s opinion reads. Giving deference to patentability determinations in reexamination proceedings at the USPTO forecloses “challenges to patent validity in district court based on the same prior art.” This determination would seem to fly in the face of the presumption of validity given to patents which have issued from the USPTO as codified by 35 U.S.C. § 282 as the Federal Circuit seems to contemplate that validity challenges based on the same prior art might have more weight in district court than within the USPTO itself, but such a stance on patentability seems unfortunately all too familiar at a time when an Article I tribunal is rendering 90 percent of challenged patents defective outside of the Article III federal judiciary. The Federal Circuit cites to case law such as its own 2007 decision in Pfizer, Inc. v. Apotex, Inc. to conclude that “a court is never bound by an examiner’s finding in an ex parte patent application proceeding.” While the findings of the USPTO in reexamination proceedings may be considered evidence, they are not themselves dispositive, a legal viewpoint which grants additional due process to infringement defendants to the detriment of both jury trials and patent owners, at least in this case. The Federal Circuit downplayed the presumption of validity in this opinion, finding that this statutory presumption “can be overcome by the patent challenger who meets its high burden of proving the factual elements of invalidity by clear and convincing evidence.” Thus the district court erred in not determining whether a genuine issue of material fact was presented by Briggs’ anticipation or obviousness invalidity arguments.

The Federal Circuit’s opinion further noted that Briggs & Stratton was precluded from arguing the validity of the challenged claims despite a broader claim construction adopted by the district court than at the USPTO in the reexamination proceedings. Given the broader claim construction, the Federal Circuit found that a jury could find that asserted anticipating prior art references disclosed the claim requirements even if the USPTO did not find so on reexamination. “The mere fact that the asserted claims survived Briggs’ requested reexamination does not necessarily establish that it cannot meet its burden to overcome the presumption of validity under a broader claim construction,” the Federal Circuit found.

The Author

Steve Brachmann

Steve Brachmann is a writer located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He has become a regular contributor to IPWatchdog.com, writing about technology, innovation and is the primary author of the Companies We Follow series. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 10 Comments comments. Join the discussion.

  1. Anon January 28, 2018 7:49 am

    I am not seeing much here, Mr. Brachmann.

    It is well known that different standards may very well yield different results on the same set of facts.

    Beyond that already known fact, what is the takeaway that should be gathered from this article?

  2. David January 28, 2018 11:11 am

    “$48 Million Willful Infringement Award Vacated by Federal Circuit”

    Houston we have a problem.

    When was the last time an 8 figure judgment survived review at the Federal Circuit? A 7 figure judgement?

    The socialists have infiltrated the patent court, and the faux intellectual judges there are devaluing billions, maybe even trillions, in American IP assets.

    This is what they do with a new case:

    Patent infringement? Yes.
    7 or 8 figure judgment? Yes.
    Response: Not on my watch.

    And then they turn to the briefs.

  3. Invention Rights January 28, 2018 7:48 pm

    It is very unfair. A patent owner can overcome the prior art several times in the PTO with multiple exams, reexams, and IPRs. But it does not help him at trial. On the otherhand, if the infringer persists, the PTO eventually changes its mind. And this typically results in nullifying a ny contrary jury verdict. All on the same prior art. This is insane. This is un-American.

  4. Paul Morgan January 29, 2018 10:25 am

    This is confusing IPRs, and their statistics, with reexaminations – which are entirely ex parte and have no estoppel statute. Also, the Court did not say that reexaminations are not relevant, just that they cannot be the sole basis for a summary judgement.

  5. Dan Hanson January 29, 2018 11:48 am

    The summary judgment aspect of the case strikes me as being one more of procedure than substance. The record in general, and the district court decision in particular, should have been more clear.

    Had the district court discussed the evidence in some detail and the effect of its own claim construction and the parties’ arguments about disputed issues of material fact, and then granted the summary judgment, the result might have been the opposite.

  6. Anon January 29, 2018 11:56 am

    Dan,

    Or maybe not.

    Is there a “form” that the lower court did not follow in its write-up? Are they not ascribed full faith and credit for what they say? Or – as here – does a reviewing court get to say “even though you said you took more into account, we do not like the end result and thus rule differently”

  7. Dan Hanson January 29, 2018 1:59 pm

    In recent days, some Federal Circuit decisions have been critical of district court analyses that do not expressly mention consideration of particular issues of law and fact that are central to appeal. If the record is unclear, the Federal Circuit does not seem to assume that everything at the district court level is all right.

    In Exmark, the SRI case was distinguished because there the district court “considered all the record evidence” and did not rely on the reexamination alone. The Federal Circuit also complained about a lack of clarity of issues “from the limited record before us,” and suggested that it was up to the advocates to get the damn record in order prior to appeal: “But we decline the invitation to scour the record to determine in the first instance whether genuine issues of fact preclude summary judgment with respect to the teachings of the prior art, particularly where claim construction issues were not clearly presented or addressed by the district court.”

    The Federal Circuit indicated that summary judgment could be reconsidered on remand, so long as the district court would ” consider the entire record and reach its own independent conclusion on whether a genuine issue of fact exists regarding invalidity….”

    From the Federal Circuit’s perspective, the court perhaps sees an unclear or incomplete analysis of issues by the district court as an impediment to its function as an appellate court. But a district court judge might rightly wonder whether her/his job in a patent case is to expressly mention and weigh every single piece of evidence and every single issue, lest the resulting appeal cause a reversal based upon an incomplete analysis.

  8. Invention Rights January 29, 2018 2:33 pm

    The net result is cases get bounced up and down the Federal Circuit until the damages are whittled down to less than the cost of litigation. Take Apple v. Samsung – $1 Billion jury verdict in 2012. They go to trial again in May 2018 for apportionment of the $399M award vacated by the Supreme Court last year, this time it will be much less than $100M. A decade of litigation will not result in Samsung paying a final judgment – Apple will soon realized they are paying the lawyers more than they can possibly collect. The Federal Circuit ensures that infringers get off and law firms are enriched. Same thing in this case – Exmark will have to pay their lawyers another $10M in hopes of winning another judgment and opportunity to get smacked down again by the Federal Circuit. There is no hope for inventors and their investors to enforce patents in these conditions.

  9. Anon January 29, 2018 3:12 pm

    Dan,

    But that was not my point.

    The point here was that the lower court explicitly stated something that the CAFC then turned on its head and stated otherwise.

    I “get” if something is totally absent and the reviewing court cannot even comment on something – but here, the lower court explicitly stated that its decisions was NOT on a single factor, and the reviewing court completely disregarded that statement,

    Unless there is an explicit form and requirement for a certain level of detail, is not the statement in and of itself from the lower court determinative of the point of that statement?

  10. Paul Morgan January 29, 2018 3:38 pm

    Dan your apt comment reminds me of another famous judicial comment, that:
    “this court does not engage in truffle hunts in the record below.”

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