IP Blog
Declaratory Judgments
Shure Infringement Claims Against ClearOne Survive Motion to Dismiss Based on Civil Procedure Rules
In the latest development in extensive litigation between Shure and ClearOne over audio and conferencing equipment, the District of Delaware rejected a motion to dismiss Shure’s claims over multiple civil procedure grounds, including as compulsory counterclaims to an earlier suit and as failing to be the first to file. The conflict between Shure and ClearOne began not in the District...
Customer Suits Alone Do Not Confer Declaratory Judgment Jurisdiction
DataTern, Inc. sued Microsoft’s and SAP’s customers alleging infringement of U.S. Patent Nos. 5,937,402 and 6,101,502. Microsoft and SAP then brought actions against DataTern seeking declaratory judgments of non-infringement. The Federal Circuit affirmed the district court’s finding that it had jurisdiction over all claims except Microsoft’s claims against the ‘402 patent, because DataTern’s claim charts for Microsoft products under the...
Pleading Implied License as an Affirmative Defense to Patent Infringement
An implied license is an affirmative defense to patent infringement. Because the defense is, by definition, highly fact-specific, it is not always clear what allegations are required to adequately plead the implied license defense. However, requirements for pleading the defense, e.g., under an estoppel theory, are not unduly onerous. The court’s denial of a motion to dismiss the defense in...
When Can a Patent Owner Sue for a Declaratory Judgment?
Does jurisdiction exist over a declaratory judgment action (i.e., is there a case or controversy) where the plaintiff alleges that a party’s possible future use of software would infringe patent claims? The court in Auburn University v. International Business Machines Corp., No. 3:09-cv-694 (M.D. Ala. April 23, 2012), held that there was no justiciable controversy where (1) IBM “made sufficient...