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By Tony Dutra
March 23 — B/E Aerospace's airline toilets don't infringe patents invented by their current director of engineering but assigned to MAG Aerospace Industries LLC when he worked there, a Federal Circuit ruling said March 23 (MAG Aerospace Indus., LLC v. B/E Aerospace, Inc., Fed. Cir., No. 2015-1426, 3/23/16).
The court relied on a 1990 prior opinion on “assignor estoppel” to prevent B/E from asserting a patent invalidity defense to MAG's infringement charge.
Assignor estoppel is a patent law doctrine that bars a patent's assignor—the typical employee to employer assignment applied here—from attacking its validity in subsequent infringement litigation.
The court had set an eight-factor test for whether B/E would be barred from the defense. What tilted the decision was that the engineer was hired specifically to develop the toilets and headed the division that makes them.
However, even though B/E couldn't attack validity, the court affirmed district court judgments of its noninfringement of three MAG patents.
In each case, MAG failed by relying on evidence other than comparisons of the product to the patent.
U.S. Patent No. 6,536,054 claims replacing a toilet “toollessly,” and B/E's technical documents said that its product could be serviced “without tools.” However, it was screwed to a frame, requiring at least a coin to remove the screws.
The district court rejected MAG's attempt to construe “toollessly” to be limited to “without conventional mechanics' tools.” So, in this case at least, a coin counts as a tool, the Federal Circuit said.
Similar evidentiary failings doomed MAG's assertion of U.S. Patent Nos. 6,536,055—a B/E video showing valve set replacement didn't clearly show a “single module” replacement—and 6,353,942—there was no evidence that a computer-aided design drawing showing infringement “represented the actual product marketed and sold.”
Case below:No. 2:13-cv-06089 (C.D. Cal.)
Inventor Mark Pondelick was bound by assignor estoppel, but the question was whether B/E, the company to which he moved, was bound by being in privity with Pondelick.
The eight-factor test for a finding of privity was laid out in Shamrock Techs., Inc. v. Med. Sterilization, Inc., 903 F.2d 789, 14 U.S.P.Q.2d 1728 (Fed. Cir. 1990).
The specific factors applied were that Pondelick “was hired specifically to develop the toilets that are accused of infringement; and that he was the Director of Engineering for B/E during his time as a consultant and later became Vice President and General Manager of B/E EcoSystems, the division that manufactured the accused toilets.”
B/E “availed itself of [Mr. Pondelick's] knowledge and assistance” to take potentially infringing actions, the court said as an overarching principle.
Chief Judge Sharon Prost wrote the court's opinion, which was joined by Judges Haldane Robert Mayer and Jimmie V. Reyna.
Steven Moore of Kilpatrick Townsend & Stockton LLP, San Francisco, represented MAG. Andrei Iancu of Irell & Manella LLP, Los Angeles, represented B/E.
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