Scott Daniels | January 18, 2012
Stay of infringement actions pending completion of a reexamination, even after trial, continues to be a possibility, at least in some jurisdictions. In a decision that might be unthinkable in other courts, Magistrate Judge David Baker of the Middle District of Florida recommended a stay last Thursday in Peach State Labs v. Environmental Mfg. Sols. (EMS), 6:09-cv-395.
The patentee Peach State had alleged that EMS infringed its patent for calcium carbonate removal. The trial judge granted summary judgment that the EMS had failed to show that the patent was invalid, and at trial last April the jury issued a verdict that the patent was willfully infringed and awarded enhanced damages to Peach State. The trial judge later ruled that EMS had engaged in litigation misconduct and issued a permanent injunction against its further infringement of the patent.
Shortly after this complete rout in court, EMS requested reexamination of the Peach State patent. The request was granted and at the beginning of December, the PTO rejected all the claims as being obvious. EMS then moved to stay enforcement of the permanent injunction, a pending contempt proceeding, and the issuance of the final judgment, until the reexamination could be completed.
Magistrate Judge Baker agreed with EMS.
He acknowledged that “EMS [had] obviously waited until this litigation was far advanced before seeking action by the PTO,” but added that “the division of responsibilities between the courts and the PTO under our patent laws often creates difficulties in timing and in reaching reasonably prompt final decisions.” He also acknowledged that reexamination sometimes involves prolonged delays, but he found that “open-ended delays are not anticipated here” since EMS’s reexamination has moved quickly so far. Finally, he addressed the possibility of prejudice to Peach State by requiring EMS to post a bond to satisfy any prospective damages judgment. Magistrate Judge Baker concluded that resolution of the infringement dispute, despite completion of the trial, was still far from over and that reexamination might advance that resolution. The matter now passes to Judge Altoon.
This decision, taken in light of the CAFC’s recent decision in the Construction Equipment case and the new post-grant review possibilities under the AIA, is further indication of an increasing role for the PTO in patent infringement actions.