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.
Scott Daniels | August 9, 2011
Judge Colleen McMahon included some interesting comments on reexamination in her decision last week, ordering a permanent injunction against future infringement in Inventio v. Otis Elevator, 01-cv-5377 (S.D.N.Y.). Inventio, a subsidiary of Schindler, sued Otis in 2006 for infringement of U.S. Patent No. 5,689,094. At the conclusion of a trial last month, the jury found the ‘094 patent to be valid and infringed, and Inventio requested a permanent injunction.
Judge McMahon applied the four-factor test required by eBay, finding that the first three factors – irreparable injury to the patentee in the absence of an injunction, adequacy of money damages, balance of hardship between the parties – weighed heavily in favor of enjoining any future infringement. The Judge, however, was troubled by the fourth factor, the public interest. “Ordinarily, [the public interest] would weigh heavily in favor of the patentee,” but in this case, “[u]nbeknownst to the Court … by the time we went to trial, the PTO not only had ‘094 patent under reexamination … but … had issued an initial office action rejecting all the claims in suit.” Apparently, no one had told the Judge about the co-pending reexamination filed last December or about the PTO’s non-final rejection issued in April.
Scott Daniels | June 2, 2011
Last week we speculated that the results to date in three reexaminations might save Lawson Software from being enjoined in the ePlus v. Lawson case in the Eastern District of Virginia. After a trial in January, the jury found that ePlus’s U.S. Patent Nos. 6,023,683 and 6,505,172 relating to electronic sourcing systems were valid and infringed, whereupon ePlus asked Judge Robert Payne to enjoin Lawson from future acts of infringement.
Lawson replied that no injunction should issue because it was likely to prevail on the validity and infringement issues, either in the co-pending reexamination proceedings or at the CAFC. Indeed, the PTO Board of Appeals had recently affirmed the examiner’s rejection in the reexamination of the ‘683 claims, and rejections had issued in the other reexaminations.
Despite the pending reexaminations, Judge Payne decided to enjoin Lawson. He began by noting that on three previous occasions he had refused attempts by Lawson to use the reexaminations to affect the litigation. Critically, he held that a patent “claim is not invalidated unless and until the entire reexamination process, culminating in an appeal to the Federal Circuit, has occurred, a final decision is reached adverse to the patentee, and a certificate is issued by the PTO cancelling the patent claims” (emphasis added). The Judge added that he was troubled by “uncertainty of both the outcome of those appeals and the length of time until the last reexamination proceeding is concluded…” (emphasis added). He also noted that the ePlus patents will expire in a few years, so that a “grant [of] a stay of the permanent injunction based on the reexamination proceedings would put into doubt whether ePlus would ever enjoy the remedy to which it has proven it is entitled.”