Wednesday, March 23, 2016

CAFC rules on vacuum toilets used in airplanes; a coin is a tool

These appeals concern vacuum toilets, such as those
that are commonly found on commercial aircrafts. Plaintiff-
Appellant MAG Aerospace Industries, LLC (“MAG”)
sued B/E Aerospace (“B/E”), alleging infringement of U.S.
Patent Nos. 6,536,054 (“’054 patent”), 6,536,055 (“’055
patent”), and 6,353,942 (“’942 patent”) in the United
States District Court for the Central District of California.
The district court granted summary judgment of noninfringement
on all patents, from which MAG timely appeals.
The district court also ruled that the doctrine of
assignor estoppel barred B/E from arguing that the asserted
patents are invalid, and B/E cross-appeals from
that ruling. For the reasons stated below, we affirm the
district court’s rulings.

Each party appealed an aspect of the CD Cal decision:

MAG argues that the district court erred in granting
summary judgment of noninfringement of the asserted
patents. B/E argues that the district court erred in ruling
that it was barred from asserting invalidity under the
doctrine of assignor estoppel. We address each of these
arguments in turn.

As to noninfringement:

Thus, MAG contends that there is a genuine issue of
material fact as to whether B/E’s toilet bowls meet the
“toollessly” replaceable limitation of the ’054 patent.

MAG is incorrect. There is no dispute that B/E’s toilet
bowl is attached to its frame with two screw fasteners.
And the record evidence showed that to release the screws
and remove the bowl, some kind of tool is necessary. In
fact, MAG presented no evidence that the screw fasteners
could be turned using only one’s hands (e.g., using a
fingernail). Indeed, B/E points out that every fact witness
who was asked testified that a tool, such as a coin or a
screwdriver, is necessary to release the screws. The B/E
documents on which MAG relies do not create a genuine
issue of material fact on this point. Instead, as the district
court properly determined, those promotional and
non-technical documents were simply “using a definition
of ‘tools’ that excludes coins.”

Of assignor estoppel:

In addition to granting B/E’s motion for summary
judgment of noninfringement, the district court also
granted MAG’s motion for summary judgment of no
invalidity. B/E cross-appeals from that ruling, contending
that the district court improperly applied assignor estoppel
to bar it from asserting that the patents-in-suit are


“Privity, like the doctrine of assignor estoppel itself, is
determined upon a balance of the equities.” Shamrock
Techs., Inc. v. Med. Sterilization, Inc., 903 F.2d 789, 793
(Fed. Cir. 1990). As we previously said in Shamrock
If an inventor assigns his invention to his employer
company A and leaves to join company B,
whether company B is in privity and thus bound
by the doctrine will depend on the equities dictated
by the relationship between the inventor and
company B in light of the act of infringement. The
closer that relationship, the more the equities will
favor applying the doctrine to company B.
Id. Here, one of the inventors of the patents-in-suit, Mark
Pondelick, now works for B/E. Mr. Pondelick assigned the
patents to his former employer, who in turn assigned
them to MAG. The district court concluded that Mr.
Pondelick was in privity with B/E and thus that assignor
estoppel applies to bar B/E from attacking the validity of
the patents. The district court did not clearly err in its


Based on the extent of
Mr. Pondelick’s involvement in the alleged infringing
activity and the fact that B/E “availed itself of [Mr. Pondelick’s]
knowledge and assistance” to conduct the alleged
infringement, Intel Corp. v. U.S. Int’l Trade Comm’n, 946
F.2d 821, 839 (Fed. Cir. 1991), we cannot say that the
district court abused its discretion in finding that assignor
estoppel applies. We therefore affirm the district court’s
ruling that B/E is barred under the doctrine of assignor
estoppel from arguing that the patents-in-suit are invalid.

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