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INVENTOR CONSTRAINED BY INCONSISTENT DEPOSITION TESTIMONY
03-15-2010 [Ben Hanrahan] [Permalink]In a recent Federal Circuit decision (Delaware Valley Floral Group, Inc., et al. v. Shaw Rose Nets, LLC, et al.) an inventor, Kenneth P. Shaw, was held to admissions made at deposition, even though he subsequently stated in a declaration that the deposition testimony was incorrect. Mr. Shaw is the inventor and owner of U.S. Patent No. 5,765,305 ("the '305 patent") which was filed on January 16, 1996 for a process that produces larger rose heads by placing elastic material, such as a netting sleeve, around the rose head while the flower is growing. This partially constrains the rose head from opening, thereby limiting the amount of light and heat incident on the inner petals, which increases their growth.
Prior to his deposition, Mr. Shaw answered interrogatories stating that he invented the patented process in August 1995, and that he first offered to sell a product using the process in 1995. At deposition, however, he testified eighteen times that he invented the process in 1994, and that he commercially exported roses grown with the patented process in September 1994 (more than one year prior to the filing date of the '305 patent).
After his deposition, Mr. Shaw was served with a motion for summary judgement and a motion for sanctions under Fed.R.Civ.P. 11 demanding that he withdraw the allegations of infringement due to invalidity based upon the application of the "on sale" bar pursuant to 35 U.S.C. 102(b). In response, Mr. Shaw submitted a declaration stating that he conceived the patented method and began selling and importing roses grown utilizing the patented method in 1995, not in 1994 as testified at deposition. Mr. Shaw also submitted an errata sheet attempting to alter his deposition testimony in the same manner. The District Court rejected these subsequent submissions (which were submitted well after the 30 days that Fed.R.Civ.P. 30(e) affords deponents to make changes to deposition testimony) and granted summary judgment of invalidity based upon the "on sale" bar. The Federal Circuit affirmed.