Wednesday, October 23, 2019

Wilson loses appeal to CAFC. No judicial estoppel here.

The outcome

John R. Wilson appeals from a decision of the Patent
Trial and Appeal Board in an interference proceeding finding certain claims
of U.S Patent No. 8,809,044 unpatentable as anticipated or obvious. Because substantial evidence
supports the Board’s finding that the prior art discloses the
claimed “ambient gas” limitation, and the Board did not
abuse its discretion by refusing to apply judicial estoppel,
we affirm.

As to judicial estoppel:

The doctrine of judicial estoppel provides that “where a
party successfully urges a particular position in a legal proceeding, it is estopped
from taking a contrary position in a
subsequent proceeding where its interests have changed.”
Data Gen. Corp. v. Johnson, 78 F.3d 1556, 1565 (Fed. Cir.
1996) (citing Davis v. Wakelee, 156 U.S. 680, 689 (1895)).
The Board has authority and discretion to apply the doctrine of judicial estoppel.
Id.; see New Hampshire v. Maine,
532 U.S. 742, 750 (2001) (“[J]udicial estoppel is an equitable doctrine invoked by a court at its discretion.”
quotation marks omitted)). To decide whether to apply judicial estoppel, courts typically consider several factors,
including (1) whether a party’s later position is “clearly
inconsistent” with its earlier position; (2) whether a court
has accepted the party’s prior position, such that accepting
its “inconsistent position in a later proceeding would create
the perception that either the first or the second court was
misled”; and (3) whether the party changing its position
“would derive an unfair advantage or impose an unfair detriment on the opposing party if not estopped.”
New Hampshire, 532 U.S. at 751 (internal quotation marks and
citations omitted). “Additional considerations may inform
the doctrine’s application in specific factual contexts.” Id.
We review the Board’s refusal to apply the doctrine for
abuse of discretion. Id. The Board abuses its discretion
when it makes “a clear error of judgment in weighing the
relevant factors” or bases its decision “on an error of law or
clearly erroneous factual findings.” ArcelorMittal Atlantique et Lorraine v. AK Steel Corp., 908 F.3d 1267, 1277
(Fed. Cir. 2018).
Wilson argues on appeal that the Board abused its discretion by refusing to judicially estop Martin from arguing
that Toner discloses the “ambient gas” limitation. Wilson
contends that application of the judicial estoppel doctrine
was warranted in this case because during prior prosecution of a parent application to the ’267 application,
Corning, the real party in interest behind Martin, made
statements that allegedly are inconsistent with Martin’s
position in this case. Specifically, Wilson points to Corning’s response to a non-final rejection of its prior application,
in which Corning stated that “Toner discloses a ‘closed
oxygen chamber’” that permits “users [to] ‘control and manipulate’ the gas delivered to the device,” and argues that
a closed oxygen chamber cannot be open to “ambient gas.”
Appellant’s Br. 19. Wilson further asserts that accepting
Martin’s current position that Toner discloses “ambient
gas” would lead to the perception that “either the patent
examiner or the Board was misled,” and would provide an
unfair advantage to Corning. Appellant’s Br. 24 (capitalization removed). We disagree for two reasons.


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