Posts Tagged: "declaratory judgment"

The United States Court of Appeals for the Federal Circuit recently ruled on an appeal regarding a Pennsylvania district court’s decision to decline jurisdiction over a first filed declaratory judgment filed by Communications Test Design, Inc. (“CTDI”) in favor of a patent infringement suit filed six days later in a New York district court by Contec LLC (“Contec”). The Federal Circuit concluded that the Pennsylvania district court did not abuse its broad discretion under the Declaratory Judgment Act to departure from the typical first-to-file rule given the presence of equitable considerations.

In Zup v. Nash Manufacturing, ZUP filed suit, alleging contributory infringement and induced infringement of the patent-at-issue, trade secret misappropriation under Virginia law, and breach of contract.  Nash counterclaimed, seeking declaratory judgment as to non-infringement and invalidity… Prior art references aiming to overcome problems similar to those addressed by a patent can support a motivation to combine invalidating references, and for evidence of a long-felt but unresolved need to be considered, the need must be solved by an invention that is more than minimally different from the prior art… Judge Newman dissented, finding that the majority applied an incorrect analysis of the obviousness factors. In her view, the prior art provides no suggestion to make the specific modifications made by the patent-at-issue, and the only source of those modifications is judicial hindsight.

A resounding en garde was declared by California craft beer brand Stone to MillerCoors, the second largest beer company in the United States, over the alleged taking of their brand recognition. On February 12, 2018 Stone Brewing filed a federal complaint alleging trademark infringement, false designation of origin, trademark dilution, and California unfair competition. The complaint requests preliminary and permanent injunction, declaratory relief, and both actual and treble damages on the basis of willful trademark infringement by MillerCoors… A particularly interesting factor in this case is likelihood of irreparable harm. MillerCoors may find room for defensive maneuvers due to recent shifts in the standard for proving irreparable harm.

The Federal circuit heard the case on AbbVie Inc. v. MedImmune Ltd. AbbVie and MedImmune entered a development and licensing agreement in 1995. The agreement stemmed from a research collaboration between the parties, resulting in the antibody adalimumab, the active ingredient in Humira… In general, parties may not seek a declaratory judgment to litigate one issue in a dispute that must await adjudication of other issues for complete resolution of the dispute. In limited circumstances, courts may permit this type of action where litigation is pending that would resolve the remaining questions.

With venue for patent infringement actions under § 1400(b) narrowed after TC Heartland and In re Cray, patent owners could use declaratory judgment (DJ) actions to secure their desired venue because venue in DJ actions is governed by § 1391. The Declaratory Judgment Act provides federal courts with the authority to “declare the rights and other legal relations of any interested party” where an “actual controversy” exists. 28 U.S.C. §§ 2201–02… The ITC offers patent owners yet another venue option outside of § 1400(b).

Without laches, accused infringers might more frequently invoke declaratory judgment to clear their products and services upfront rather than tolerate a looming threat of suit for years…. The Supreme Court’s recent decision in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC (Mar. 21, 2017) eliminated the equitable defense of laches in patent cases.  While time will reveal the impact of the SCA decision, elimination of laches, an equitable defense against “unreasonable, prejudicial delay in commencing suit,” Id. at 3 (citing Petrella v. Metro-Goldwyn-Mayer, Inc.(2014), provides greater security to patent owners who assert claims several years after discovering potential infringement.  Conversely, the decision removes one shield—albeit a relatively modest shield—from the accused infringer’s armament of potential defenses. 

Tensions between Costco Wholesale Corporation (“Costco”) and Acushnet Holdings Corp. (“Acushnet”), maker of the Titleist golf ball, have risen since Costco escalated matters last Friday by filing suit seeking a declaratory judgment in an ongoing dispute between the corporate heavyweights. The most recent in the series of intensifying clashes is over Acushnet’s claims that Costco’s Kirkland Signature (“KS”) golf ball infringes on some eleven (11) Acushnet patents, and that Costco is engaged in false advertising holding the KS golf ball against the Titleist.

Non-practicing entities are especially likely to be subject to personal jurisdiction because the nature of their business involves asserting and litigating patent rights in foreign courts. This is especially true if the non-practicing entity has had other litigations in the state… Papst is a non-practicing entity engaged in the business of acquiring and asserting patent rights incorporated under the laws of Germany and having its principal place of business there. In October 2012, Papst acquired the patents-in-suit and investigated Xilinx, a Delaware corporation with headquarters in San Jose, California. Papst sent two patent-infringement notice letters to Xilinx in 2014 encouraging Xilinx to take a patent license. Three representatives from Papst traveled to California in October 2014 to meet with Xilinx to discuss Papst’s infringement allegations and Xilinx’s potential licensing.

Once the Federal Reserve Bank of Atlanta declined to take a license, Bozeman informed them that he believed they were infringing on his two patents… The complaint sets forth two claims for relief: one for declaratory judgment of non-infringement of the 6,754,640 patent, and the other for declaratory judgment of non-infringement of the 8,768,840. The complaint alleges that the Federal Reserve Banks do not infringe multiple elements of independent claims set forth in both patents and seeks a judicial declaration indicating as much, along with costs, expenses, and attorney’s fees.

A copyright infringement battle of intergalactic proportions between Plaintiffs CBS and Paramount Pictures, and the company (along with its principal Alec Peters) looking to produce the crowdfunded Star Trek fan film Axanar (“Defendants”) is heating up. The parties have filed numerous motions in the past month, and the Court’s recent ruling on the parties’ motions for summary judgment means the case is inching closer and closer to its January 31 trial date… The Court then concluded that the “Axanar Works have objective substantial similarity to the Star Trek Copyrighted Works,” and therefore it “leaves the question of subjective substantial similarity to the jury.”

The PTAB has seen more than triple the number of inter partes review (IPR) petitions—now the preferred way for a company accused of infringement in court to challenge a patent’s validity—than it projected when the challenge first became available in 2012. But the fact that proceedings can run simultaneously presents challenges.