Posts Tagged: "declaratory judgment action"

The Supreme Court on November 5, 2013, heard oral argument on whether the burden of proof in an action for a declaratory judgment of non-infringement falls on the plaintiff licensee or on the defendant patentee. The debate centered around whether a patentee/defendant sued for a declaratory judgment of non-infringement is required to prove a case of infringement that was neither alleged nor arguably possible where the DJ plaintiff is a licensee. The Petitioner argued that the burden that would be on the patentee as infringement plaintiff does not change when it is a DJ defendant. The Respondent argued that, because the patentee cannot assert an infringement counterclaim against its licensee in good standing, the normal default rule places the burden on the party that initiates the action.

In order to fabricate a case or controversy where clearly none existed, the farmers — AFTER filing the declaratory judgment action — sent Monsanto a letter, which asked Monsanto to expressly waive any claim for patent infringement they may ever have against the farmers and memorialize that waiver by providing a written covenant not to sue. The farmers explained that without such a covenant, they would at risk. With such a disingenuous attempt to fabricate declaratory judgment jurisdiction you really need to ask yourself exactly who the evil party is here! To ask for such a ridiculously broad covenant not to sue was nothing more than grandstanding. Thus, Monsanto understandably refused to provide a blanket covenant not to sue for any and all actions both known and unknown that maybe undertaken by the farmers.

The Supreme Court on May 20, 2013, agreed to review a Federal Circuit decision that a patent licensee bears the burden of proof in its action for a declaratory judgment of noninfringement where the license remains in effect to preclude the defendant patentee’s infringement counterclaim. The question presented is whether, in such a declaratory judgment action brought by a licensee under MedImmune, the licensee has the burden to prove that its products do not infringe the patent, or whether (as is the case in all other patent litigation, including other declaratory judgment actions), the patentee must prove infringement.

What Motorola should do is file a motion to dismiss with prejudice. These types of complaints are an embarrassment and must be stopped. They should simultaneously file a Declaratory Judgment Action seeking a determination of noninfringement and invalidity in a federal district court of their choosing, perhaps in Chicago, which is close to their headquarters. They will lose the motion to dismiss with prejudice in Seattle, and likely have the DJ action kicked out in Chicago, but they will have preserved the matter for appeal to the Federal Circuit. It is high time that the Federal Circuit weigh in on what is undoubtedly the biggest problem facing patent litigation defendants, which is bogus, crappy, non-informing complaints that clearly violated the Rules of Civil Procedure.