# United States **Court of Appeals**  **for the Federal Circuit**

______________________

HOYT A. FLEMING,

Plaintiff

- Appellant

,

v.

ESCORT INC. AND BELTRONICS USA, INC. , Defendants

- Cross

- Appellants

.

______________________
2014

- 1331,

- 1371

______________________ Appeal from the United States District Court for the District of Idaho in No. 1: 09

- CV

- 00105

- BLW, Chief Judge B. Lynn Winmill.

______________________
Decided: December 24, 2014

______________________
M ICHAEL S. D OWLER , Park
, Vaughan
, Fleming & Do wler, LLP, of Houston, Texas, argued for plaintiff

appellant

.
G REGORY F. A HRENS , Wood, Herron & Evans, L.L.P., of Cincinnati, Ohio, argued for defendants

- cross

appellants. With him on the brief was B RETT A. S CHATZ

.

______________________ Bef ore T ARANTO , B RYSON , and H UGHES , Circuit Judges.FLEMING v. ESCORT INC

. 2

T ARANTO , Circuit Judge

. Th e district court in this case refused to disturb a jury verdict concerning two reissue patents. The jury found for the patentee on infringement and validity as to most of the asserted claims, but it invalidated five claims

. The patentee , Hoyt Fleming, appeal s the five invalidity determi nations, arguing that (1) the testimony offered to establish invalidity was insufficiently specific to support the verdict; (2) the re was insufficient corroboration of the prior invention relied on for the invalidity determinations ; and (3) the prior invention
, if it existed
, was abandoned, suppressed, or concealed
, disqualifying it from invalida ting the claims

. The adjudicated infringer s , Escort, Inc., and Beltronics USA, Inc. (collectively, Escort), cross

appeal on the ground that all of the asserte d claims are invalid because Fleming’s reason for seeking reissue did not meet the “error” precondition for obtaining reissue. We affirm

. B ACKGROUND Hoyt Fleming owns two reissue patents

— U.S. Patent Nos. RE39,038 (issued Mar. 28, 2006) and RE40,653 (issued Mar. 10, 2009)

— issued under 35 U.S.C. § 251

. Both relate to radar detectors for detecting police signals

. They claim methods for incorporating, as well as appara tuses that incorporate, a Global Positioning Satellite ( GPS ) unit into a radar detec tor. The incorporated GPS can reduce false alarms ( i.e. , the signaling of a police presence when none exists) by allowing the detector to disregard, or “lock out,” certain signals from an identified location known to produce such false alarms ( e.g. , a sto refront door opener transmit ting a radar signal that can be mistaken for a police presence)

. Claim 1 of the ’038 patent is representative of the method claims. It reads:FLEMING v. ESCORT INC

. 3

1. A method, executed by a device having a pos ition, of generating an alert to an i ncoming radar signal having a frequency and a signal strength, the method comprising the acts of: (a) detecting the incoming radar signal; (b) determining the position of the device that d etected the incoming radar signal; and (c) generating an alert if th e position of the device is not within a predetermined distance of a pred etermined position. ’038 patent, col. 6, lines 49

– 58. Claim 18 of the ’038 patent is representative of the apparatus claims. It reads: 18. A radar detector for alerting an operator of a motor vehicle to an incoming police radar signal comprising: (a) a microprocessor; (b) a circuit coupled to the microprocessor for d etecting the incoming police radar signal; and (c) a global positioning system receiver coupled to the microprocessor and operable to provide the microprocessor with data that indicates the pos ition of the radar detector. ’038 patent, col. 7, lines 5 3–61.
On March 10, 2009, Fleming sued Escort for i nfringement of his two patents. At the heart of Escort’s defenses was the contention that Steve n Orr, who works for Escort as a consultant, had invented a GPS

incorporating radar detector before Fleming did

— a prior invention Escort invoked to support antic ipation andFLEMING v. ESCORT INC

. 4

obviousness challenges under 35 U.S.C. §§ 102(g) and 103 (2006). 1 Fleming ’s claimed priority date is April 14, 1999

— the filing date of his original patent application

. Orr alleged that he conceived his invention in 198 8 and made a working emb odiment that red uc ed it to practice in April 1996. From 1988 to 1996, Orr was working at Cincinnati Microwave
, which owned the potential patent rights to the alleged invention at issue . Cincinnati M icrowave entered bankruptcy o n February 14, 1997 . W ith Orr assist ing in the bankruptcy process , Escort acquired Cincinnati Microwave’s assets, including the potential patent rights to the alleged Orr in vention, during the summer of 1997

. Escort sought Orr’s assistance in the new enterprise
, and Orr began work ing at Escort in July 1998. He filed a patent application to claim his alleged invention , with Escort as assignee, o n June 14, 1999 , two months after Fleming filed his application

. The jury in this case found most of Fleming’s asserted claims to be infr inged by Escort and not to be invalid . It found invalidity , however, as to five claims of the ’038 patent

— claims 1, 18, 45, 47, and 48. The jury invalidated

c laim 45 as anticipated by Orr’s prior invention

. It inva lidated c laim 18 as anticipat ed by the Orr invention and also for obviousness in light of Orr’s invention and two prior

- art patents, Hoffberg (U.S. Patent No. 6,252,544 )

1 This case is governed by the statutory provisions in effect before the Leahy

– Smith America Invents Act (AIA), Pub. L. No. 112

- 29, § 3, 125 Stat. 284, 285

– 93 (2011), put into effect revisions of many provisions of Title 35 of the U.S. C ode , including sectio ns 102, 103, and 251. See AIA § 3(n)(1), 125 Stat. at 293 (relevant AIA amen dments apply only to applications and patents containing a claim with an effective filing date of March 16, 2013, or later). We hereafter omit a date in citing the statutory
prov isions.FLEMING v. ESCORT INC

. 5

and Ros s (U.S. Patent No. 5,977,884 )

. And it invalidated claims 1, 47, and 48 for obviousness in light of Orr’s pr ior invention and two prior

- art patents, Hoffberg and Vale ntine (U.S. Patent No. 5,146,226). Fleming subsequently sought judgment as a matter of law to reverse the jury’s five invalidity determinations

. He argued that the testimony regarding invalidity was conclusory, that Orr’s testimony regarding his prior invention was insufficiently corroborated, and that Orr’s prior invention —even if it existed

— had been abandoned, suppressed , or concealed within the meaning of 35 U.S.C. § 102(g)(2), disqualifying it as a basis for invalidity

. Escort, in turn, sought judgment that Fleming’s patents were invalid , arguing that Fleming had not identified an “error” in his original patent (U.S. Patent No. 6,204,798),

a prerequisite to securing a reissue patent under section 251

. The district court denied both sides’ motions. Both parties appeal the district court’s decision

. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
D ISCUSSION We review the denial of a motion for judgment as a matter of law de novo , applying the same standards as did the district court in deciding whether the jury verdict must be reversed

. See Enovsys LLC v. Nextel Commc’ns, Inc. , 614 F.3d 1333, 1341 (Fed. Cir. 2010) ( applying Ninth Circuit law )

. In doing so, we accept express or implied jury factual determinations
, if supported by substantial evidence
, and assess whether those facts support the judgment under the governing legal standards, whose interpretation we review de novo

. See
, e.g. , Baxter Healthcare Corp. v. Spectramed, Inc. , 49 F.3d 1575, 1582 (Fed. Cir. 1995) (applying Ninth Circuit law); Pierce v. Underwood , 487 U.S. 552, 558 (1988). “ Substantial evidence is such relevant evidence as reasonable minds might accept as adequate to support a conclusion even if it is possi ble to draw two inconsistent conclusions fromFLEMING v. ESCORT INC

. 6

the evidence.” Landes Const. Co., Inc. v. Royal Bank of Can

. , 833 F.2d 1365, 137 1 (9th Cir. 1987).
A

1 Fleming’s first contention on appeal from the five i nvalidity verdicts is that Escort’s evidence in suppor t of invalidity was insufficiently specific to support the ve rdict

. Fleming’s argument invokes our rulings that “[g]eneral and conclusory testimony .

. . does not suffice as substantial evidence of invalidity.” Koito Mfg. Co. v. Turn

- Key

- Tech, LLC , 381 F .3d 1142, 1152 (Fed. Cir. 2004) ; see CytoLogix Corp. v. Ventana Med. Sys., Inc. , 424 F.3d 1168, 1176 (Fed. Cir. 2005); Motorola, Inc. v. Inte rdigital Tech. Corp. , 121 F.3d 1461, 1473 (Fed. Cir. 1997)

. It is not enough simply to introduce a prior

- art reference into the record, with no testimony showing where the limitations of the claims are to be found. Koito , 381 F.3d at 1151

– 52; see also Fresenius USA, Inc. v. Baxter Int’l, Inc. , 582 F.3d 1288, 1300 (Fed. Cir. 2009). In this case, the principal prior art was not a patent or publication but the prior invention of Orr, who testified extensively about it.
W e conclude that there was sufficiently specific fact ual support for the invalidity determination s. T he jury’s verdict on invalidity rested on two overlapping classes of findings. The first concerned Orr’s prior invention , which the jury found to anticipat e claims 18 and 45

— a question of fact

. TI Grp. Auto. Sys. (N. Am.), Inc. v. VDO N. Am., LLC , 3 75 F.3d 1126, 1133 (Fed. Cir. 2004). The second concerned the teachings of the asserted combinations of Orr’s prior invention and Hoffberg, Ross, and/ or Vale ntine

. The content of those teachings and the motivation to combine are fact questions
, see Kinetic Concepts, Inc. v. Smith & Nephew, Inc. , 688 F.3d 1342, 1360, 136 7 (Fed. Cir. 2012)
, which we assume the jury answered in Escort’s favor in finding claims 1, 18, 47, and 48 invalid for obv i-FLEMING v. ESCORT INC

. 7

ous ness

. S ufficiently specific evidence supported th e jury’ s findings.
The invalidated claims do not contain a large number of limitations, so extensive testimony was not required. Nevertheless, Orr and Escort’s expert, Dr. Grindon, together provided testimony that explained how the prior art taught the limitatio ns of each invalidated claim

. For example, claim 45 recites two limitations: (1) “a circuit operable to detect an incoming radar signal” and (2) “a microprocessor operable to disable an alert to the incoming radar signal based at least in part upon the
pos ition of the radar detector.” ’038 patent, col. 10, lines 24

– 30. As to the first limitation, Orr explained that part of his invention consisted of a radar detector that received frequency inform ation, allowing the detection of radar signals. J.A

. 6198. As to the second limitation, Orr explained that the radar detector was connected to a GPS navigational card and a laptop, allowing the muting of certain signals “when [he] hit the spacebar” based on position information expressed in cylindrical coordinate s. J.A

. 6198. As to both limitations, Dr. Grindon evaluated evidence of Orr’s prior invention, including files that showed “routes that [Orr] took driving around under different conditions to collect .

. . position and velocity information from a GPS dev ice in his car,” J.A

. 6324, and explained that Orr’s invention “definitely shows and discloses

. . . the combination for a radar detector with a GPS system .

. . combined with a processor, in this case a laptop computer .

. . [to] suppress[] .

. . false alerts .

. . based upon location .

. . [and] the speed of the car .

. . [by] press[ing] the space bar on the laptop,” J.A

. 6325.
W ith regard to the other invalidated claims, Dr. Gri ndon testified in some detail to the aspects of Hoffberg, Ross, and Valen tine

— as well as the motivation to co mbine

— that would have made the claimed subject matter obvious at the relevant time

. E.g.
, J.A

. 6328

– 29 (descri b-FLEMING v. ESCORT INC

. 8

ing how Hoffberg “teach[es] .

. . radar detection .

. . in .

. . various frequency bands” and “stor[ing] inf ormation .

. . to discriminate against false alarms”); J.A

. 6330

– 31 (descri bing how Ross “integrat[es] a system with a radar detector and a GPS, and then a processor .

. . [to] address[] the same problem of false alarms and false alerts” through a comparison of “[t]he speed of the vehicle, which is derived from the GPS unit, .

. . with [a] preset maximum”); J.A

. 6332

– 33 (describing how Valentine “address[es] the problem of false alerts in a very similar, but slightly different, way [from Hoffberg],” by “discriminat[ing] the si gnals based on frequency .

. . in the same way [as Orr’s prior invention]”). In light of this and other testimony, we cannot say that the invalidity challenge was supported by only conclusory testimony and unexplained prior

- art doc uments

. There was specific evidence sufficient to support the verdict.

2 Fleming also challenges the proof of Orr’s prior inve ntion by invoking the principle that “o ral testimony by an alleged inventor asserting priority over a patentee’s rights

. . . must be supported by some type of corroborating evidence.” Woodland Trust v. Flowertree Nursery, Inc.
, 148 F.3d 1368, 1371 (Fed. Cir. 1998) ( citation and intern al quotation marks omitted) . Such evidence is evaluated under “the rule of reason,” whereby “all pertinent ev idence is examined in order to determine whether the inventor’s story is credible.” Sandt Tech., Ltd. v. Resco Metal & Plastics Corp. , 264 F.3d 1344, 1350 (Fed. Cir. 2001) (citations and internal quotation marks omitted) ;
see also Medichem, S.A. v. Rolabo, S.L. , 437 F.3d 1157, 1171 (Fed Cir. 2006) (“corroboration is fundamentally about ‘credibility ’ ”) . Importantly, “[t]he law does not impose an impossible standard of independence on co rroborative evidence by requiring that every point of aFLEMING v. ESCORT INC

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reduction to practice be corroborated by evidence having a source totally independent of the inventor; indeed, such a standard is the antithesis of the rule of reason.” Cooper v. Goldfarb , 154 F.3d 1321, 1331 (Fed. Cir. 1998) ( citation and internal quotat ion marks omitted ). We have treated the sufficiency of corroboration as a question of fact, with the district court’s determination subject to review for clear error. Medichem , 437 F.3d at 1171

– 72. Here, Orr’s te stimony of prior invention was sufficient ly corroborated by the documentary evidence

. The record contains 1992 data from GPS experiments that Orr ran at the time
, e.g. , J.A

. 7757 (frequency plot entitled “Ka band in False Region Record”) , and 1996 notes and correspondence from Orr pertaining to GPS and , more specifically, to “realizing product features identified in .

. . [a] brainstorming meeting .

. . [by] integrat[ing] a radar detector into .

. . automotive navigation systems,” J.A

. 7352

– 53 . Most tellingly, perhaps, the record contains a 1996 letter from Greg Blair, Vice President of Cincinnati Microwave, addressed to Orr and other employees , which refer s to “ entering the ETAK [a type of automotive nav igation system] business .

. . to get speed and position to silence a detector ” and to “ paten t [ing] the concept of .

. . vehicle position muting and then working with the ETAK folks for a data link to our detectors,” J.A

. 7354.
This evidence makes credible Orr’s general ac count: in 1988 , when he had his specific conception, various indu stry participants were thinking generally about equipping radar detectors with GPS to reduce false alarms; Cinci nnati Microwave, in particular, was interested in the idea; by 1992, Orr was collecting data and working toward reducing the conception to practi c e; and in 1996, spurred by great interest in his project, Orr reduced his invention to practice. The evidence, i n referring to frequencies and to using a GPS

- given location to mute a detector alarm, also provides substantial corroboration of the more spe ci f-FLEMING v. ESCORT INC

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ic claim limitations concerning lockout frequencies and distances that Fleming has highlighted in his argument. Fleming is correct that none of the corroborating ev idence constitutes definitive pro of of Orr’s account or discloses each claim limitation a s written. But the co rroboration requirement has never been so demanding. See Cooper , 154 F.3d at 1331. It is a flexible
, rule -ofreason demand for independent evidence that
, as a whole, makes credible the testimony of the purported prior invent or with regard to conception and reduction to practice of the invention as claimed

. Sandt , 264 F.3d at 1350

– 51 . The evidenc e presented here sufficiently does that.

3 Fleming’s final challenge is that , even if Orr had pr iority of invention by virtue of his a ctivities through 1996, he lost priority under 35 U.S.C. § 102(g)(2)’s disqualific ation of prior inventions that have been “abandoned, suppressed, or concealed

. ” Although we accept the facts as found by the jury where (as here) they are supported by subst antial evidence, w e have said that “[s]uppression or concealment is a question of law which we review de novo.” Fujikawa v. Wattanasin , 93 F.3d 1559, 1567 (Fed. Cir. 1996). We reject Fleming’s challenge. Abandonment, suppression, or concealment may be sh own by proof of the prior inventor’s active efforts to do so or “ may be inferred based upon the prior inventor’s unreasonable delay in making the invention publicly known.” Dow Chem. Co. v. Astro

– Valcour, Inc. , 267 F.3 d 1334, 1342 (Fed. Cir. 2001) ; see also Fox Grp

. , Inc. v. Cree, Inc. , 700 F.3d 1300, 1305

– 06 (Fed. Cir. 2012)

. Whether a delay is sufficiently reasonable to avoid the inference “has consistently been based on equitable principles and public policy as applied to the facts of each case.” Checkpoint Sys., Inc. v. U.S. Int’l Trade Comm’n , 54 F.3d 756, 761 (Fed. Cir. 1995) (citation and internal quotation marksFLEMING v. ESCORT INC

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omitted)

. For example, “delay between the first reduction to practice and public disclosure” is excused “i f the inve ntor continued t o refine, perfect, or improve the invention.” Eolas Techs

. Inc. v. Microsoft Corp. , 399 F.3 d 1325, 1333 (Fed. Cir. 2005). Moreover, even “ a long period of inacti vity need not be a fatal forfeiture, if the first inventor resumes work on the invention before the second inventor enters the field.” Paulik v. Rizkalla , 760 F.2 d 1270, 1272 (Fed. Cir. 1985). In this case, there is no evidence of any active efforts to suppress or conceal. And we find the timing of Orr’s activities leading to his June 1999 pat ent application not to warrant an inference of abandonment, suppression, or concealment. The evidence is sufficient to establish the following facts, covering three periods starting from the April 1996 reduction to practice. In the first period, before t he February 1997 date of Cincinnati Microwave’s bankruptcy, Cincinnati Micr owave had great interest in the project, J.A. 6094, and Orr studied, refined, and improved his invention: he studied “selective availability,” i.e.
, signal interference by the milit ary that impaired the use of his invention, J.A. 6095, and conducted field testing and wr ote additional cod e to perfect his invention
, J.A. 6104

– 22. In the third period, after Orr started working at Escort in the summer of 1998 , he was immediately put to work on his invention, and he continued this work at least until he filed for his own patent in June 1999

. E .g. , J.A. 6 293 ( Escort’s Kuhn testifying that Escort was motivated to hire Orr because of Orr’s expertise in radar/GPS , and that Kuhn told Orr to work on his invention once he joined Escort), J.A. 7494

– 5 46 (Orr’s timesheets at Escort from July 1998 to July 1999, mentioning work on radar/GPS work, including “Ka falsing improvements”).
W hat happened in the middle period

— between Febr uary 1997 and summer 1998

— is th is: F or a period ofFLEMING v. ESCORT INC

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“approximately 13 months after the bankruptcy,” Orr joined another firm to work with “a group of engineers that were designing a cordless telephone.” J.A. 6123. The patent rights to Orr’s radar/GPS prior invention, created at Cincinnati Microwave, were acquired by Escort in the bankruptcy, and Escort set priorities to get its new bus iness going but, even so, was interested in developing this invention . Orr testified that
, from the middle of 1997 to the middle of 1998, while working elsewhere, he was giving Escort information about his invention
, J.A. 6182
, and that Escort was pursuing Orr’s invention and confe rring with Orr about it during that period
, J.A. 6184

. Escort’s Kuhn testified that , from the start, Escort was motivated to hire Orr because of Orr’s expertise in r adar/GPS, was seeking to hire him during its startup period, and finally did hire Orr, in July 1998, to adapt his invention to “a new detection scheme” to resolve perfo rmance issues. J.A. 62 87

– 93

. In these circumstances, we do not infer suppression, concealment, or abandonment for two reasons. First: In making his argument in this court and in the district court, Fleming’s position has been that his prior ity date is April 14, 1999, when he filed his patent application. That date is later than the dates of Orr’s conception (1988) and reduction to practice (1996)

— not in dispute for purposes of the present issue

. It also is later than the latest poss ible da te —s ummer 1998

— that the evidence establishes Orr resumed work on his prior invention when joining Escort

. Even if the focus were solely on Orr ( thus disr egarding Escort , the patent

- rights owner ), and even if Orr had aban doned his invention before summer 1998
, t he defense of abandonment is properly rejected on the ground that Orr resumed his active work before Fleming’s April 1999 priority date. See Paulik , 760 F.2d at 1272.
Second: Although F leming has not made an argument based on a pre

- 1999 pri ority date, the conclusion would not change even if we assumed a May 1998 conceptionFLEMING v. ESCORT INC

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date for Fleming ( for which there is evidence). On that assumption, t he crucial period for the abandonment analy sis would be the time between Cincinnati Micr owave’s Febru ary 1997 bankruptcy and Orr’s July 1998 employment at Escort. But what occurred during that period does not warrant an inference of suppression, concealment, or abandonment. At most
, there was a reasonable pause in active work : the rights to the inve ntion were transferred from one owner to a new owner during a period of bankruptcy; the new owner concentra ted its initial efforts on products ready for immediate sale ; and even during that period, the new owner maintained communication with Orr and ma de ef forts to bring him to the firm precisely to resume the work needed to perfect the prior invention. The delay of active work in these circumstances was not unreasonable and was consistent with a continuing commitment to pursu ing the project to the full ext ent conditions allowed . In brief, the concept s of abandonment
, suppression , and conc eal ment d o not fit the facts as reasonably found by the jury.
B
Escort , in its cross

- appeal, argues that Fleming’s rei ssue patents are invalid because there was no “error” in the original patent, a prerequisite to obtaining a reissue patent. “Determining whether an applicant has met the statutory requirements of 35 U.S.C. § 251 is a question of law, which we review de novo .” In re Clement , 131 F.3d 1464, 1468 (Fed. Cir. 1 997). We reject Escort’s conte ntion.
The version of section 251 applicable here reads: Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawin g, or by reason of the p atentee claiming more or less than he had a right to claim in the patent, the Director shall, on theFLEMING v. ESCORT INC

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surrender of such patent and the payment of the fee required by law, reissue the patent for the i nvention disclosed in the original patent, and in a ccordance with a new and amended application, for the unexpired part of the term of the original p atent. 35 U.S.C. § 251 (2006)

. Escort invokes the requirement that there have been

an “error” in the original patent. Errors are not limited to slips of the pen but encompass

— and most often are

— deliberate drafting choices. See In re Dinsmore , 757 F.3d 1343, 13 47

– 48 (Fed. Cir. 2014). Not all choices qualify, though: “i t is important whet her deficient understan dings, by the applicants or their agents, gave rise to the patenting choice that reissue is being invoked to correct.” I

d. at 1348

. A drafting choice that rested on “no cogniz able false or deficient understanding of fact or law ,” b ut that was, say, an eyes

- open choice made to secure the patent , “ is not ‘error’ as re quired by section 251.” Id . at 1347. That kind of choice is nothing but a “now

- regretted choice,” which is not error. Id. But this case does not fall into that category.
The asserted error here is that, when drafting his original patent, Fleming failed to appreciate the full scope of his invention and the inadequacy of the original claims for properly capturing th e full scope

. This is a classic reason that qual ifies as error. Id. at 1348. It identifies a deficient understanding of some combination of fact and law bearing on the meaning of claim language, the inve ntions disclosed in the written description, and how parti cular language does or does not map onto products or processes that could be claimed under section 251 co nsistent with the written description. Escort suggests otherwise by noting Fleming’s expl anation that he wrote his original patent from the perspe ctive of a “programmer. ” J.A. 5947, 5980. That fact,FLEMING v. ESCORT INC

. 15

however, in no way undermines the premise of a mistaken understanding of the scope of the written description and/or claim s— it actually helps explain the origin of the

error . Likewise, the fact that it was marketplace deve lopments that prompted Fleming to reassess his issued claims and to see their deficien cies , J. A. 5926

– 27, 5945, does not alter the qualifying character of the reason for reissue . E rroneous understandings of the written descri ption or claim s are just that
, regardless of what tri ggered the recognition of error in those understandings. Any reissue patent, of course, must meet all of section 251’s requirements. But the only challenge presented by Escort is the lack of “error.” That challenge is meritless.
C ONCLUSION For the foregoing reasons, we affirm the district court’s judgment upholding the jury’s verdict

. AFFIRMED