The case of Egenera, Inc. v. Cisco Systems, Inc. raised the question of whether inventors named on a patent can be repeatedly changed as litigation strategy changes. Because of judicial estoppel, the district court said no way.  But, on appeal, the Court of Appeals for the Federal Circuit said no problem—at least no problem in this case.

Mr. Shulter was listed as an inventor on Egenera, Inc.’s (“Egenera”) patent application and the resulting patent, U.S. Patent No. 7,231,430 (the “’430 Patent”).  The ‘430 patent relates to “a platform for automatically deploying a scalable and reconfigurable virtual network” of processors.  The claimed approach alleviates the need for physical reconfiguration of processors by allowing “processing resources [to] be deployed rapidly and easily through software.”
Continue Reading No Judicial Estoppel in the Case of the On-Again, Off-Again Patent Inventor

A new temporary pilot program in the US PTO will speed up appeals in patent applications before the Patent Trial and Appeal Board (PTAB). The program, which went into effect on July 2, 2020, is called the “Fast Track Appeals Pilot Program.” The program is limited to 125 appeals per quarter.

The PTO instituted the pilot program because of the popularity of its Track I Prioritized Examination Program for patent applications. Under that program, an applicant can petition the PTO for expedited prosecution when filing a new application by paying an extra fee and limiting the number of claims. The Track I program is limited to 12,000 applications per year, and has been very successful. In 2019, 2.7% of the applications filed were under the Track I program.
Continue Reading New Fast Track for Patent Appeals

An unpublished decision from the Northern District of California emphasizes how important it is for attorneys to follow patent local rules.

Patent local rules are rules that many federal district courts have for patent infringement cases. These rules supplement the regular local rules for that court and the Federal Rules of Civil Procedure, and allow the courts that have a lot of patent infringement cases to more efficiently manage those cases. Patent local rules are also helpful to the parties and their counsel, as they provide a standard structure and some certainty to the litigation process.
Continue Reading Make Sure You Follow the Patent Local Rules!

In f’real Foods, LLC et al v. Hamilton Beach Brands, Inc. et al, 1-16-cv-00041 (DDE 2020-07-16, Order) (Colm F. Connolly), plaintiffs freal Foods, LLC and Rich Products Corporation sued defendants Hamilton Beach Brands, Inc. and Hershey Creamery Company for infringement of four patents on four accused products that are high performance blenders manufactured by Hamilton Beach. After a four-day jury trial, the jury found that all four accused products infringed various claims of the asserted patents, and that none of the asserted patents are invalid. The Court then turned to the plaintiffs’ motion for a permanent injunction.

The Court first noted that a plaintiff seeking a permanent injunction must demonstrate the four eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388,391 (2006) factors: “( 1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and ( 4) that the public interest would not be disserved by a permanent injunction.” To satisfy the irreparable injury factor, a patentee must establish ( 1) that absent an injunction it will suffer irreparable injury and (2) that a sufficiently strong causal nexus relates the injury to the infringement. The Court also noted that the Supreme Court has cautioned lower courts that “[a]n injunction is a drastic and extraordinary remedy, which should not be granted as a matter of course” and when “a less drastic remedy … [is] sufficient to redress [ a plaintiffs] injury, no recourse to the additional and extraordinary relief of an injunction [is] warranted.”
Continue Reading Irreparable Harm for Permanent Injunction Supported by Lost Profits Award

Following the America Invents Act, a petition for inter partes review (“IPR”) has become a common method for challenging the validity of a patent before the Patent Trial and Appeal Board (“PTAB”) at the United States Patent and Trademark Office (“USPTO”).  Such challenges are often brought by petitioners in response to a patent owner suing them for patent infringement.  But what happens to the IPR if the parties settle the infringement lawsuit?

When parties settle the underlying dispute, they can request that the IPR be terminated.  Under 35 U.S.C. § 317(a),

An inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.

However, under 35 U.S.C. § 317(b), any settlement agreement, including any collateral agreements that are referenced, must be filed with the USPTO before the termination of the IPR.  Specifically, the statute states:

Any agreement or understanding between the patent owner and a petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of an inter partes review under this section shall be in writing and a true copy of such agreement or understanding shall be filed in the Office before the termination of the inter partes review as between the parties. At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents, and shall be made available only to Federal Government agencies on written request, or to any person on a showing of good cause.
Continue Reading The PTAB Requires Settlement and Collateral Agreements to Terminate IPRs