## Facts

- Hoyt A. Fleming owned two reissue patents covering radar detectors that integrate GPS to reduce false alarms by “locking out” known non-police signal sources at identified locations.
- A representative method claim required detecting a radar signal, determining the detector’s position, and generating an alert if not within a predetermined distance of a predetermined location.
- Fleming sued Escort Inc. and Beltronics USA, Inc. for infringement; Escort defended in part by asserting invalidity based on prior invention by its consultant, Steven Orr.
- A jury found infringement and validity for most asserted claims, but found five claims invalid based on Orr’s prior invention; the district court declined to overturn the verdict.
- Fleming appealed only the invalidity findings as to the five claims, arguing lack of specificity, inadequate corroboration, and abandonment/suppression/concealment of Orr’s work.
- Escort cross-appealed, contending all asserted reissue claims were invalid because Fleming’s reissues allegedly failed the “error” requirement of 35 U.S.C. § 251.

## Issues

1. Whether substantial evidence supported the jury’s finding that Orr’s prior invention met the limitations of the five invalidated claims.
2. Whether Orr’s prior-invention testimony was adequately corroborated under the “rule of reason.”
3. Whether Orr’s prior invention was abandoned, suppressed, or concealed so as not to invalidate the five claims.
4. Whether Fleming’s reissue patents were invalid because the reissue applications did not satisfy § 251’s “error” prerequisite.

## Decision

- The Federal Circuit affirmed the judgment in full.
- It upheld the jury’s invalidity verdict for the five claims, finding substantial evidence of prior invention and sufficient corroboration.
- It rejected Fleming’s abandonment/suppression/concealment argument, concluding the record supported a finding of continued development and no disqualifying concealment.
- It rejected Escort’s § 251 cross-appeal, holding Fleming’s reissues satisfied the statutory “error” requirement.

## Legal Principles

- A jury finding of prior invention under pre-AIA law is sustained if supported by substantial evidence; appellate review does not reweigh credibility or conflicting evidence.
- An interested witness’s testimony on prior invention must be corroborated; corroboration is assessed under a “rule of reason” based on the totality of documentary, physical, and testimonial evidence.
- Prior invention may be disqualified by abandonment, suppression, or concealment, but ongoing development and efforts toward use or commercialization can support a finding of no disqualifying conduct.
- Section 251 “error” is construed broadly and includes a patentee’s failure to claim the full scope of the invention disclosed and invented; reissue is not invalid solely because it broadens or adjusts claims consistent with the disclosure, if statutory requirements are met.

## Conclusion

The Federal Circuit affirmed invalidity of five claims based on corroborated prior invention and affirmed that the remaining asserted reissue claims were not invalid for failure to satisfy § 251’s “error” requirement.


Fleming v. Escort, Inc., 774 F.3d 1371 (Fed. Cir. 2014)