April 5, 2010
Scared
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.
Posted by Patent Hawk at 8:29 AM | Declaratory Judgment | Comments (0)
December 5, 2009
Barred
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.
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
Lacking
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.
Posted by Patent Hawk at 2:32 PM | Declaratory Judgment | Comments (0)
February 26, 2009
Unthreatened
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 | Comments (0)
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 | Comments (0)
January 11, 2009
Sucker
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.
Posted by Patent Hawk at 11:16 PM | Declaratory Judgment | Comments (0)
December 16, 2008
Jurisdiction
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 | Comments (0)
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.
Posted by Patent Hawk at 3:07 PM | Declaratory Judgment | Comments (0)
May 28, 2008
Reactor
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.
Posted by Patent Hawk at 9:18 PM | Declaratory Judgment | Comments (0)
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.
Posted by Patent Hawk at 3:26 PM | Declaratory Judgment | Comments (0)
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 | Comments (0)
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.
Posted by Patent Hawk at 2:41 PM | Declaratory Judgment | Comments (0)
August 4, 2007
Drama?
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.
Posted by Patent Hawk at 4:36 PM | Declaratory Judgment | Comments (0)
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 | Comments (0)
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 | Comments (0)
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 | Comments (0)
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 | Comments (0)
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 | Comments (0)
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