News & Analysis as of

Declaratory Judgment Claimants: Which Products Are You Saying Don’t Infringe?

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

Supreme Court Finds Patent Owner Have Burden of Proving Infringement in a Declaratory Judgment Case

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

Supreme Court Lays Burden of Proof on Patentee, Even in Declaratory Judgment Action

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

Supreme Court Corner: Q4 2013

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

Amicus Curiae Briefs in Medtronic v. Boston Scientific – Legal Scholars Support Medtronic; Tessera Supports Vacatur and Remand

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

Diagnostics Giant Quest Files Declaratory Judgment Action against Myriad Genetics

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

How Trade Mark Defendants are Winning from MedImmune

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. One-Minute Read...more

Bay Area Genetic Diagnostics Company Files Declaratory Judgment Action against Myriad Genetics

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

R&B Star Claims "Blurred Lines" is Not Substantially Similar to Marvin Gaye or Funkadelic Songs

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

Monsanto Averts Declaratory Judgment Suit

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

Invalidity Counterclaims in IP Litigation: Supreme Court Rules on Effect of Covenants Not to Sue

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

Use of Declaratory Judgment before Patent Infringement

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

Federal Circuit Review - Volume 3 | Issue 3 March 2013

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

A Dutch Court Hands Down the First Substantive Damages Judgment in the Netherlands for an Infringement of Competition Law

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

Patent Watch: Semiconductor Energy Lab. Co. v. Nagata

"[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

Delaware Court Dismisses “Anticipatory” First-Filed Declaratory Judgment Action

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

Federal Circuit Review - Volume 3 | Issue 1 - January 2013

In This Issue: • Prior Litigation Precludes Lawsuit • Disclosure of Broad Genus Does Not Disclose Species • Preamble Limits Claims - Excerpt from Prior Litigation Precludes Lawsuit: In...more

A Covenant Not to Sue May Avoid Invalidity Claims

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

Just Moot It: Supreme Court in Already v. Nike Clarifies When a Covenant Not to Sue Can Kill a Declaratory Judgment Case

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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