Considerations If Conceding Infringement Or Designing Around

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