February 7, 2013

Chilled Out

Arkema wants to compete against Honeywell in the automotive cooling system market. Honeywell had already tried to freeze them out with a patent infringment suit. So Arkema filed a declaratory judgment action to invalidate other relevant Honeywell patents. Judge William H. Yohn, Jr. in the Eastern District of Pennsylvania (Philadelphia) saw no cause for complaint. Facing undisputed facts, citing the SCOTUS MedImmune ruling, the CAFC (2012-1308) found otherwise. This appears another biased ruling by a district court judge for the American company (Honeywell) against a foreign interloper (France-based Akrema).

Posted by Patent Hawk at 12:17 AM | Declaratory Judgment

January 11, 2012


Streck sued Research & Diagnostic Systems (R&D) for infringing hematology control patents 6,200,500 and 6,221,668. R&D counterclaimed a declaratory judgment action of noninfringement and invalidity. The two competitors were innovating in stride, but Streck had the edge, at least with the favor of the courts, which is really all that matters.

Continue reading "Bleeding"

Posted by Patent Hawk at 2:02 PM | § 112

September 30, 2011


Powertech (PTI) wanted to get out from under the thumb of its patent license to Tessera, so it filed a DJ. The district court dismissed "for lack of subject matter jurisdiction." PTI appealed, whereupon the CAFC, citing the Supreme Court's 2007 MedImmune, Inc. v. Genentech ruling, reversed and remanded - because every patent license is a grudge match just waiting to happen. (CAFC 2010-1489).

Posted by Patent Hawk at 12:10 PM | Declaratory Judgment

May 20, 2011

Packetized Standing

British Telecommunications accused an Arris Group customer of infringing its VoIP patents. Voice over Internet Protocol (VoIP) is the reason that many phone calls nowadays sound garbled, like you're talking through tin cans with wires attached, only higher tech. Makes one yearn for the days when "you can hear a pin drop" through your phone line. Positively Amish. But I digress. Then again, so did this litigation. "Economic injury" doesn't justify a declaratory judgment action, but "adverse legal interests" does. But then, one gets to "adverse legal interests" by "economic injury."

Continue reading "Packetized Standing"

Posted by Patent Hawk at 2:06 PM | Declaratory Judgment

February 17, 2011

No Ill-Plead Evisceration

Cooper Industries owns a portfolio of patents for electric equipment that contains dielectric fluid, which acts as a thermal and electrical insulator. Back in 2003, Cooper sued ABB for infringement. They settled two years later, with ABB taking a non-exclusive license that did not extend to third parties. ABB decided to outsource manufacture, but left to itself filing a declaratory judgment action to shuck off the licensing limitation.

Continue reading "No Ill-Plead Evisceration"

Posted by Patent Hawk at 6:59 PM | Declaratory Judgment

October 6, 2010

Jumping Line

The 1984 Hatch-Waxman Act created a path for generic drug companies to line up for manufacture of drugs coming off patent. Teva tried to jump the line for donepezil, an Alzheimer treatment drug, from Eisai, who was first in line for permission to make a generic version. Teva did this by filing a DJ of noninfringement. The district court dismissed, citing lack of jurisdiction, figuring no actual controversy between Eisai and Teva. The CAFC reversed and remanded. Teva v. Eisai (CAFC 2009-1593) is essential reading, in its entirety, for those interested in the intricacies of the drug patent game, as this precedential ruling changes the game, albeit in a nuanced way.

Posted by Patent Hawk at 9:01 PM | Declaratory Judgment | Comments (1)

April 5, 2010


The 2007 Supreme Court ruling in MedImmune, Inc. v. Genentech set the stage for declaratory judgment actions at the sound of a snort from a patent holder. Or so those weak-in-the-knees over infringement reckon. Innovative Therapies (ITI) worried itself into a DJ action over five patents held by competitor Kinetic Concepts (KCI). "The patents relate to medical devices for negative pressure wound therapy, used in treatment of chronic wounds." KCI got the action dismissed, "stating that it had not seen the ITI device, had not examined it for possible infringement of any KCI patent, and had not accused ITI of infringement." ITI appealed.

Continue reading "Scared"

Posted by Patent Hawk at 8:29 AM | Declaratory Judgment

December 5, 2009


It used to take a kick in the pants to file a declaratory judgment (DJ) action. Then the January 2007 Supreme Court MedImmune ruling lowered the bar, followed by the spring chicken CAFC Sandisk decision. Untested was how low the bar was. HP tested it, and found that "a lowered bar does not mean no bar at all." At least in district court. At the CAFC, which uttered the foregoing quote, paying lip service means a lowered bar is really no bar at all. Especially if the patent holder isn't in the business of something more than patents.

Continue reading "Barred"

Posted by Patent Hawk at 1:01 AM | Declaratory Judgment | Comments (14)

November 3, 2009

License Crossed

Philips and 3M inked a patent cross license in 1995. The next year, 3M spun off Imation. The agreement, which granted license to subsidiaries, continued. In 2003, Imation formed a joint venture that created GDM. In 2006, Imation acquired Memorex. In 2007, Imation filed a declaratory judgment action seeking a finding that GDM and Memorex are licensed subsidiaries under the agreement. The district court ruled against Imation, and so Imation appealed.

Continue reading "License Crossed"

Posted by Patent Hawk at 2:05 PM | Case Law | Comments (2)

May 18, 2009


Young CAFC Judge Moore sadly suffered a strange lack of rationality by affirming Central California's dismissal of a DJ action brought by Autogenomics against Oxford Gene. As Judge Newman, the CAFC's font of wisdom, put it: "The Federal Circuit again restricts United States parties from access to our courts when a United States patent is owned by a foreign entity." Today's ruling was "contrary to law, precedent, and policy," and will be repudiated.

Continue reading "Lacking"

Posted by Patent Hawk at 2:32 PM | Declaratory Judgment

February 26, 2009


Before the 2007 Supreme Court MedImmune ruling, a company worried about infringing a patent could only bite its nails and wait. But SCOTUS, in its mumbling way with patents in recent years, made Article III jurisdiction as bright-line a rule as pornography: you only know it when you see it. The CAFC Sandisk decision lowered the DJ bar further, so that infringers could be more like the vultures in a Gary Larson cartoon: "Patience? Hell, I want to kill something." But the line of "actual controversy" is still drawn in mud.

Continue reading "Unthreatened"

Posted by Patent Hawk at 9:56 PM | Declaratory Judgment

February 16, 2009

Fighting to the Finish

No aspect of patent law better illustrates the trend in recent years for the Supreme Court to introduce uncertainty into patent litigation than declaratory judgment - when can a potential infringer sue a patent holder, so as to get the advantage of being plaintiff? Before the SCOTUS MedImmune decision, the line was clearer than "under all the circumstances..." Not to say that bright-line rules are necessarily a good thing. Herein, a through-the-looking-glass dispute between two eyewear makers.

Continue reading "Fighting to the Finish"

Posted by Patent Hawk at 3:02 PM | Declaratory Judgment

January 11, 2009


National Products (NPI) started an enforcement campaign with 6,666,420, filing "at least six separate lawsuits against various entities." '420 claims suction cup mouting for portable equipment. Panavise, a competitor, got spooked, so it filed a declaratory judgment motion, practically admitting infringement, but of course seeking a ruling that it did not, as well as '420 being invalid and unenforceable and everything vile. NPI told the court they hadn't even seen Panavise's product. The district court told Panavise to take their jitters elsewhere, and the CAFC agreed.

Continue reading "Sucker"

Posted by Patent Hawk at 11:16 PM | Declaratory Judgment

December 16, 2008


The appeals court is sponsoring a shell game against folks threatened with patent infringement by foreign companies. Aten, a Taiwanese company, affiliated with IOGEAR, sent threatening letters of infringement regarding patented KVM switch technology. Recipient Avocent sought declaratory judgment in Alabama, where it is located. The district court pitched the case for lack of personal jurisdiction, stating that the letters weren't enough, and 2-1, CAFC panel Judges Linn and Schall agreed. In dissent, Judge Newman argued that the majority had "no basis for this delicate distinction" upon which they relied, that they failed to grasp the big picture, and that fairness was paramount "where there is no other forum for this complaint." (CAFC 2007-1553).

Posted by Patent Hawk at 8:20 PM | Declaratory Judgment

August 15, 2008

The Scream

Prasco got so paranoid about infringing patents from competitors Medicis Pharmaceutical and Imaginative Research Associates that it filed a declaratory judgment motion. The problem for Pasco was that Prasco wasn't even on the defendants' radar screens. The district court pitched the case, and the appeals court concurred.

Continue reading "The Scream"

Posted by Patent Hawk at 3:07 PM | Declaratory Judgment

May 28, 2008


TubeMaster makes custom catalyst reactors. Cat Tech asserted 6,905,660. Tubemaster counterclaimed for declaratory judgment (DJ). The district court granted summary judgment of non-infringement based upon claim construction, including DJ on non-accused configurations. Cat Tech appealed. A CAFC panel crafted crucial case law on declaratory judgment.

Continue reading "Reactor"

Posted by Patent Hawk at 9:18 PM | Declaratory Judgment

April 29, 2008

To Naught

Rambus, having participated in proceedings leading to the industry standard for dynamic memory chips, patented portions of it. As chronicled in the Patent Prospector, that bit of seeming unseemliness has not been altogether well received during Rambus' patent enforcement campaigns. In this episode, the court of appeals washes away Rambus' aborted assertion against pig-headed Samsung.

Continue reading "To Naught"

Posted by Patent Hawk at 3:26 PM | Declaratory Judgment

April 3, 2008

The Orange Playbook

Generic drug makers try to break into a patented drug market under the complex Hatch-Waxman Act game by filing an application (ANDA) to make a generic version, swearing that the applicable patent(s) are no good: either invalid or expired. If a patent is still in force, the patent holder sues, and the boxing match begins. In Caraco v. Forest, a 2-1 CAFC panel decision opens the flood gates for generic drug companies to attack patented drugs.

Continue reading "The Orange Playbook"

Posted by Patent Hawk at 1:48 AM | Declaratory Judgment

March 13, 2008

Guitar Hero

Gibson, the electric guitar maker, owns 5,990,405, claiming a system for simulating user participation in a pre-recorded musical performance, much like Activision's "Guitar Hero" game, a billion-dollar hit in North America alone, selling 16 million copies. Activision got a letter from Gibson in January, which had it hip-hop a DJ in LA. That's cool jive for filing a declaratory judgment motion in the Central District of California, seeking to invalidate the patent.

Continue reading "Guitar Hero"

Posted by Patent Hawk at 8:15 PM | Declaratory Judgment | Comments (1)

February 29, 2008

U Turn

Micron sought declaratory judgment in Northern California against memory-chip competitor MOSAID, the day before MOSAID filed in East Texas. Northern California district court pitched the DJ matter. Micron appealed. The appeal ruling is a textbook of current case law for declaratory judgment jurisdiction and district court discretion.

Continue reading "U Turn"

Posted by Patent Hawk at 2:41 PM | Declaratory Judgment

August 4, 2007


Guardian Media unleashed a rash of declaratory judgment suits related to its patents for parental content control for TV programs; from Sony, Mitsubishi, JVC, Matsushita, and Thomson. After consolidation, Guardian got the district court to dismiss for lack of controversy. The appeals court disagreed, finding all the ingredients for an adjudicatable dispute.

Continue reading "Drama?"

Posted by Patent Hawk at 4:36 PM | Declaratory Judgment

July 22, 2007

Controversy Controversy

Benitec Australia sued competitor Nucleonics for infringing 6,573,099, related to RNA-based disease therapy using gene silencing. Nucleonics moved to dismiss, as there was no present possibility of infringement: "Simply stated, Benitec has shot before there is even a target." The district court denied the motion. Then the landscape shifted, with discovery that '099 might be invalid because of unnamed inventors. Benitec sought dismissal of the case, with Nucleonics wanting it to go forward on declaratory judgment counterclaim, aiming to lay '099 down to the big sleep. The district court dismissed the case, and Nucleonics appealed. (CAFC 06-1122)

Continue reading "Controversy Controversy"

Posted by Patent Hawk at 10:42 PM | Declaratory Judgment

March 30, 2007

Actual Controversy

Generic drug maker Teva took on Novartis for its Famvir® herpes drug by filing an ANDA with the FDA. Teva figured facing five patents, but Novartis only sued for infringing one. So Teva sought declaratory judgment "to obtain patent certainty" on the other four. The district court dismissed, but, in light of the Supreme Court MedImmune ruling last November, and the CAFC's Sandisk ruling a few days ago, the CAFC (06-1181) remanded, telling the district court to take the case. Any "actual controversy" now lays the tarmac for takeoff of a declaratory judgment filing.

Continue reading "Actual Controversy"

Posted by Patent Hawk at 11:50 AM | Declaratory Judgment

March 27, 2007

Declaratory Judgment Threat

In its Sandisk ruling yesterday, the appeals court lowered the bar for seeking declaratory judgment (DJ) in patent cases, rebuking its own precedent in light of the Supreme Court's recent MedImmune v. Genentech ruling. While not defining "the outer boundaries of declaratory judgment jurisdiction," having had infringement asserted is now reason enough to seek declaratory judgment; a company need not "bet the farm," waiting for a lawsuit, while pursuing its business. Fear or internal knowledge of infringement is not enough; the patentee must take some "some affirmative act." Could a simple invitation to license trigger a DJ reaction? - It certainly seems so.

Continue reading "Declaratory Judgment Threat"

Posted by Patent Hawk at 11:55 AM | Declaratory Judgment

January 10, 2007

MedImmune: The Practical Implications

A summary of the MedImmune ruling, and some considerations of its implications, by Lynn E. Eccelston of McGuireWoods.

Continue reading "MedImmune: The Practical Implications"

Posted by Patent Hawk at 12:27 PM | Declaratory Judgment

January 9, 2007

Having It Both Ways

MedImmune took a patent license from Genentech to make and sell its cash cow drug Synagis, used to prevent a respiratory tract disease in the very young. When faced with the perceived prospect of having to pay more royalties for a follow-on Genetech patent, MedImmune bolted - stopped paying fees, and sued for declaratory judgment of invalidity. The case headed north, to the Supreme Court, as the lower courts wouldn't touch it, because, the lower courts ruled, a licensee can't wiggle out by acting scared. In a narrow 8-1 holding, the Supreme Court ruled that a licensee may seek declaratory judgment of patent invalidity without breaching its licensing obligations.

Continue reading "Having It Both Ways"

Posted by Patent Hawk at 1:59 PM | Declaratory Judgment | Comments (1)

March 15, 2006

Declaratory Judgment

Microchip makes garage door opener (GDO) microprocessors and associated firmware. Chamberlain makes garage door openers. The two had tangled in the past over Chamberlain's patents, but settled into "patent peace". Then Microchip got paranoid and sought a declaratory judgment against Chamberlain.

Continue reading "Declaratory Judgment"

Posted by Patent Hawk at 3:00 PM | Declaratory Judgment