sub-header

Federal Circuit Explores the Sham Affidavit Doctrine

| Eric MalmgrenMark Kachner

QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC.

Before Dyk, Taranto, and Hughes.  Appeal from the U.S. District Court for the District of Delaware.

Summary: An affidavit should not be dismissed as a sham where: (1) the affidavit contradicts another witness’s prior deposition testimony; or (2) where the affidavit does not simply contradict the witness’s own prior deposition testimony but instead provides a detailed explanation why the prior testimony was incorrect.

Quest Integrity sued Cokebusters for infringing the ’874 patent, relating to the display of furnace inspection data.  The district court granted summary judgment of invalidity on claims 12, 24, 30, 33, and 40, finding that the patented invention was offered for sale more than one year prior to the filing date (the “Norco sale”).   Claims 30 and 40 required additional limitations not present in the other invalidated claims.  The district court interpreted Quest’s corporate witness deposition testimony to confirm that the Norco sale included the additional limitations in Claims 30 and 40.  Quest’s corporate witness and another co-inventor later submitted affidavits explaining why the corporate deposition testimony was inaccurate and incomplete.  In granting summary judgment of invalidity, the district court rejected and disregarded the affidavits as shams because they contradicted the witnesses’ prior deposition testimony.

The Federal Circuit affirmed the invalidity of claims 12, 24, and 33.  For claims 30 and 40, the Federal Circuit examined the sham affidavit doctrine, which prevents a party from creating a material issue of fact by filing an affidavit that disputes prior sworn testimony without demonstrating a plausible explanation for the conflict.  The Federal Circuit found that rather than merely contradicting his prior testimony, Quest’s corporate witness submitted a detailed declaration, with record evidence explaining his misstatements.  The court held that Quest’s corporate witness’s affidavit was not a sham and raised an issue of material fact sufficient to defeat summary judgment.  The court further held that the co-inventor’s affidavit was similarly not a sham, because it also provides a detailed explanation why his prior deposition testimony was incorrect.  In addition, the co-inventor’s affidavit was not a sham because it did not relate to the affiant’s own prior deposition testimony, and instead clarified another witness’s prior deposition testimony. 

Editor: Joseph Cianfrani