QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC.,  Appeal No. 2017-2423 (Fed. Cir. May 21, 2019).  Before Dyk, Taranto, and Hughes.  Appealed from D. Del. (Judge Robinson).  (Sham Affidavit Doctrine)


Quest sued Cokebusters for infringement of Quest’s patent directed to a method for displaying inspection data collected from commercial furnaces.  Cokebusters alleged that the claims of the patent were invalid under §102(b) because Quest used the methods recited by the claims of the patent to provide services to a client (the “Norco Sale”) more than one year before the date of the application that led to the patent.  Quest claimed that a “composite data markers” feature of the claims was not performed in the Norco Sale.  However, during a deposition, one of the inventors (“De Lorenzo”) reviewed a portion of the source code of Quest’s software and testified that the software would have performed the composite data markers limitation in the Norco Sale.  Quest subsequently submitted declarations from De Lorenzo and a co-inventor (“Bondurant”) contradicting the deposition testimony and explaining why De Lorenzo erred during the deposition.

The district court granted Cokebusters’s motion for summary judgment of invalidity of the claims due to the Norco Sale.  In granting the motion, the district court relied on the deposition testimony of De Lorenzo, and concluded that the later declarations of De Lorenzo and Bondurant were sham affidavits and declined to consider them.


Are declarations of inventors that contradict the earlier deposition testimony of one of the inventors and offer an explanation for the conflict sham affidavits that can be disregarded?  (continue reading)

Summary by:  Donald Raymond

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