Declaratory judgment plaintiffs and counterclaimants in patent cases have long been accustomed to filing boilerplate claims that either do not identify an accused technology, or that do so in a cursory manner. Noninfringement...more
The Supreme Court has unanimously ruled that a patent owner always has the burden of proving infringement, even if the case is brought by a licensee asking for a declaration that the licensed patents were not invalid. ...more
In Medtronic, Inc. v. Mirowski Family Ventures, LLC, a unanimous Supreme Court held that the patent holder bears the burden of proving infringement, even in a declaratory judgment action brought by a licensee. In reaching its...more
CASES TO WATCH -
Petrella v. Metro-Goldwyn-Mayer Inc.
Copyright: Status: cert. granted
Issue: Is the equitable defense of laches available in a copyright claim filed within the Copyright Act’s three-year...more
The Supreme Court will hear oral arguments in Medtronic Inc. v. Boston Scientific Corp. on Tuesday, November 5, 2013. The sole issue to be determined is whether the burden of proof shifts in a declaratory judgment action...more
Myriad is facing yet another challenge to its remaining BRCA gene testing franchise, this time from Quest Diagnostics joined by its R&D arm, Nichols Institute. Quest is "the world's leading provider of diagnostic information...more
In 2007, the US Supreme Court set a new test for declaratory judgment actions in MedImmune. Its decision continues to have a profound impact on trade mark cases, explain Bobby Ghajar and Carolyn Toto.
Whether relying on Carl von Clausewitz or Jack Dempsey for the sentiment, Counsyl, Inc., a genetic diagnostic testing company has decided that the best defense against Myriad Genetics is a good offense and, accordingly, has...more
Last Thursday, R&B star Robin Thicke, along with fellow artists Pharrell Williams and Clifford "T.I." Harris, filed a suit for declaratory judgment in the U.S. District Court for the Central District of California against...more
On June 10, 2013, the U.S. Court of Appeals for the Federal Circuit held that Monsanto’s representation that it would not pursue farmers and seed sellers for patent infringement if they inadvertently use Monsanto’s patented...more
On January 9, 2013, the Supreme Court issued its opinion in Already, LLC v. Nike, Inc., holding that a broad covenant not to enforce a trademark against certain products of a competitor moots the competitor’s action to...more
Ever wondered if you would infringe a patent but wanted to know before any infringement occurred?
Honeywell International, Inc. and Arkema Inc. are competitors in the field of automotive air-conditioning systems....more
In This Issue:
• State Courts Should Handle Patent Malpractice Cases
• “A” and “An” in Claims Mean “One or More”
• No Direct Infringer Needs to be Identified in Declaratory Judgment Jurisdiction Over Indirect...more
In a recent judgment, a District Court in the Netherlands (the DCA) handed down a judgment in what is the first substantive damages judgment in the Netherlands for a breach of competition law. In issuing the declaration of...more
"[Neither the Declaratory Judgment Act nor Federal Circuit jurisprudence creates] a federal cause of action for assignor estoppel."
On February 11, 2013, in Semiconductor Energy Lab. Co. v. Nagata, the U.S. Court of...more
The Delaware District Court dismissed a declaratory judgment action in favor of a later-filed patent infringement suit on the same patent. The ruling provides a roadmap for patent owners to pursue a settlement without the...more
In This Issue:
• Prior Litigation Precludes Lawsuit
• Disclosure of Broad Genus Does Not Disclose Species
• Preamble Limits Claims
- Excerpt from Prior Litigation Precludes Lawsuit:
Last week, in Already, LLC v. Nike, Inc. (opinion attached), the Supreme Court unanimously decided that the voluntary cessation doctrine, most often used when a defendant claims its voluntary compliance moots a case where it...more
In 2007, the Supreme Court in MedImmune v. Genentech broadened the scope of declaratory judgment jurisdiction, making it easier for parties fearing IP claims to bring defensive lawsuits. Last week, the Court made it easier...more
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