Sometimes taking court action in Europe pays off
This is based on a report by Dennis Crouch and David Hricik of Patently-O:
with respect to the case Kelley Drye & Warren, LLP v. Orbusneich Med. Co. Ltd., BVI, 2014 WL 1814204 (Conn. Super. Ct. Apr. 4, 2014).
This case relates to a law firm – Kelley Drye (KDW) – trying to get their fees paid by their client Orbus. But that is not what is interesting.
Orbus had filed suit for patent infringement and related common law claims against Boston Scientific. The case was filed in the Eastern District of Virginia, but then transferred to Massachusetts. Then, Boston Scientific moved for reexam and the suit was stayed.
Orbus then turned to a replacement law firm whose strategy was for Orbus to file a number of European actions, including ones in Germany, UK, Ireland, and the Netherlands.
This had the required effect – in 2013, Orbus and Boston Scientific came to a settlement resulting in a one-time payment to Orbus and a worldwide patent license for Boston Scientific.
The situation in USA following the new AIA act, is that there are a considerable number of past-grant attacks against patents. As shown in this case a post grant re-exam can delay infringement proceedings in USA.
However, due to the bifurcation system in Germany, which allows infringement cases to proceed independent of nullity actions there can be a better chance of reaching settlement.