Patents, Patent Infringement, Indemnification

Did They Want to Infringe? – Federal Circuit Denies Declaratory Judgment When Party at No Risk of Lawsuit

Knobbe Martens on 7/3/2025

[MITEK SYSTEMS, INC., v. UNITED SERVICES AUTOMOBILE ASSOCIATION [OPINION]] - Before Taranto, Schall, and Chen. Appeal from the United States District Court for the Eastern District of Texas. The plaintiff could not seek...more

No Blank Check: Vendor Can’t Claim Declaratory Judgment From Customer Lawsuits Alone

McDermott Will & Emery on 6/19/2025

The US Court of Appeals for the Federal Circuit affirmed a district court’s dismissal of a declaratory judgment action, explaining that declaratory judgment jurisdiction does not “arise merely on the basis that a party learns...more

Patent Infringement Suit Against Indemnitee Forecloses IPR Petition by Indemnitor

Akin Gump Strauss Hauer & Feld LLP on 5/31/2024

The Patent Trial and Appeal Board denied institution of a petition for inter partes review under 35 U.S.C. § 315(b) because the petition was filed more than one year after patent owner had served a complaint for patent...more

Defense Counsel Narrowly Avoids Sanctions for Re-Litigating Decided Issues

McDermott Will & Emery on 3/8/2018

The US Court of Appeals for the First Circuit “reluctantly” declined to impose sanctions in a “very close case” against defense counsel in a six-year litigation involving indemnification for patent infringement claims....more

Sued Customers Insufficient to Prove a Supplier’s Actual Case or Controversy Against Patentee

Mintz - Intellectual Property Viewpoints on 1/30/2018

In an interesting order issued recently in BroadSign International, LLC v. T-Rex Property AB, Judge Swain of the Federal District Court for the Southern District of New York dismissed the Plaintiff’s declaratory judgment of...more

Declaratory Judgment Action Is Dismissed For Lack Of Subject Matter Jurisdiction

Morris James LLP on 2/25/2016

Robinson, J. Defendant’s motion to dismiss for lack of subject matter jurisdiction is granted. This is a declaratory judgment action. Defendant has asserted infringement against various customers of plaintiff on their...more

The Duty to Indemnify Does Not Create Privity

McDermott Will & Emery on 7/10/2014

Apple Inc. v. Achates Reference Publishing, Inc. - In the final written decisions of two related inter partes reviews (IPRs) concerning patents in the same family, the U.S. Patent and Trademark Office’s Patent Trial...more

IP Newsflash - June 2014 #2

Akin Gump Strauss Hauer & Feld LLP on 6/16/2014

FEDERAL CIRCUIT CASES - FRCP 19(a) Cannot Be Used to Involuntarily Join an Unwilling Patent Co-Owner to Infringement Litigation: On June 6, 2014, the Federal Circuit affirmed a decision by the District of New...more

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