On February 25, 2014, Chief U.S. District Judge Leonard Davis of the Eastern District of Texas unveiled an optional accelerated discovery schedule for cases involving claims of patent infringement. General Order 14-3 authorizes the use of a “Track B Initial Patent Case Management Order,” which requires the early disclosure of license and settlement agreements for the asserted patents, summary sales information for the accused products, and a good faith damages calculation and estimate. This is in addition to the early disclosure of infringement and invalidity contentions already familiar to patent litigants in the Eastern District of Texas.
As more and more AIA post-grant review decisions are being issued, practitioners should be aware that the Patent Trial and Appeal Board (PTAB) may rule on the validity of the patent at issue despite settlement by the parties. Unlike ex parte and inter partes reexamination proceedings, AIA statutory provisions allow for settlement of post-grant trials before the Board. However, recent PTAB decisions show the broad discretion used in determining whether a post-grant proceeding will be terminated upon settlement between the parties.
A decision issued by the Federal Circuit earlier this year raises a few things to have in mind when considering whether to concede infringement and when planning to design around a patent.
In Proveris Scientific Corp. v. Innovasystems, Inc., 739 F.3d 1367, 109 U.S.P.Q.2d 1314 (Fed. Cir. 2014) Innovasystems, Inc. (“Innova”) was sued by Proveris Scientific Corp. (“Proveris”) for infringement of U.S. Patent No. 6,785,400 (“’400 patent”). The ’400 patent is directed to “a mechanism for evaluating aerosol spray plumes” that “is used to observe the delivery of drugs that are administered through spray devices, such as inhalers or nasal sprays.” Id. at 1315-1316. Specifically, Proveris accused Innova’s Optical Spray Analyzer (“OSA”) of infringing the ’400 patent. While Innova conceded infringement of claims 3-10 of the patent, it challenged Proveris’s allegations that it infringed claims 1 and 2 of the patent. Ultimately, a jury found that Innova did not infringe claims 1 and 2 of the patent. Nevertheless, in view of the fact that Innova conceded infringement of claims 3-10 of the ’400 patent, the district court entered a permanent injunction that prohibited Innova from making, using, selling, offering for sale, or importing into the United States any Optical Spray Analyzer products. See id. at 1316.
In December, the Supreme Court granted certiorari in CLS Bank Int’l v. Alice Corp., No. 13-298, in which the question presented by the petitioner is “[w]hether claims to computer-implemented inventions — including claims to systems and machines, processes, and items of manufacture — are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court?” This will be the fourth recent Supreme Court case addressing § 101 following Bilski, Mayo and Myriad, and many hope the Court will provide more clarity on the application of § 101 to computer-implemented patents. The argument in CLS Bank is scheduled for March 31, 2014, and a decision is not expected until about June 2014. In the meantime, the issue of patent eligibility of various computer-implemented inventions is before the Federal Circuit and district courts in many cases. Will these courts wait until CLS Bank is decided and should they? The Federal Circuit recently decided Smartgene, indicating that at least some cases can be decided based on current Supreme Court and Federal Circuit precedent. The trend of district courts, however, has been to stay computer-related cases with a § 101 issue until after CLS Bank, and therefore defendants should consider filing a motion to stay in such cases.
A company’s receipt of unsolicited ideas for new products or product modifications can create significant risks. The receiving company may have similar products or improvements under development or may undertake these efforts in the future without any actual knowledge that the unsolicited idea was sent or received. In such a situation, the receiving company going forward with its own independently developed products risks a claim that it knowingly stole the intellectual property of the sender.