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 of Delaware but in the Northern District of Illinois. In 2017, Shure filed a declaratory judgment of noninfringement of ClearOne’s U.S. Patent No. 9,635,186, and ClearOne responded with counterclaims for infringement of the ’186 patent and of U.S. Patent No. 9,813,806. Both patents relate to beamforming microphones in ceiling arrays, an area in which the parties compete. ClearOne got a preliminary injunction for the ’806 patent (but not the ’186 patent), specifically against Shure’s MXA910 product “in its drop-ceiling mounting configuration.” In 2019, ClearOne filed a second infringement suit against Shure in the Northern District of Illinois over U.S. Patent No. 9,264,553, also related to beamforming microphones. Shure got an inter partes review instituted by the Patent Trial and Appeal Board against the ’553 patent, but the PTAB ended up upholding the challenged patent claims. In this District of Delaware… Read More »Shure Infringement Claims Against ClearOne Survive Motion to Dismiss Based on Civil Procedure Rules

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 ‘402 patent were based solely on third party, and not Microsoft, materials.  Microsoft Corp. v. DataTern, Inc., No, 2013-1185 (Fed. Cir. April 4, 2014). DataTern had sent Microsoft and SAP customer claim charts “alleging infringement based on the customers’ use of Microsoft’s ADO.NET and SAP’s BusinessObjects software.”  The claim charts used SAP and Microsoft documentation, except that “the ’402 patent claim charts cite only to third-party-provided (i.e., not Microsoft-provided) ADO.NET documentation for several claim limitations.”  In denying DataTern’s motion to dismiss after Microsoft and SAP brought suit, the district court found that the following facts weighed in favor of jurisdiction over the declaratory judgment actions: (1) the claim charts in the customer lawsuits; (2) the indemnification demands from Appellees’ customers; (3) DataTern’s conditional counterclaims; (4) DataTern’s reference to Appellees’ “infringement” in its proposed scheduling order; and (5) DataTern’s refusal to… Read More »Customer Suits Alone Do Not Confer Declaratory Judgment Jurisdiction

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 Integrated Global Concepts, Inc. v. J2 Global, Inc., No. C-12-03434-RMW (N.D. Cal. June 28, 2013), is illustrative. A complicated procedural history, including other litigation, underlies this declaratory judgment action. For present purposes, the essentials of the pleadings are that J2 brought counterclaims seeking a declaratory judgment of infringement of four patents in response to IGC’s declaratory judgment action, and IGC in turn responded to J2’s counterclaims with its own counterclaim for a declaratory judgment of implied license, among other things. The facts underlying these pleadings are also a little complicated, but necessary for understanding the basis of the implied license defense raised by IGC. The facts (which you can skim and skip below to the gist of the court’s analysis) as pled by IGC were that: In 1997 and 1998, J2 filed patent applications that subsequently issued as U.S. Patent… Read More »Pleading Implied License as an Affirmative Defense to Patent Infringement

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 representations to eliminate any reasonable apprehension of infringement,” (2) there was “no current infringement, and (3) no harm appears immediately threatened.” The question of declaratory judgment jurisdiction in this case was different from the usual scenario in which a party that does not own the patent at issue seeks to clear up questions of infringement.  Typical questions of declaratory judgment jurisdiction in patent cases can be resolved with a covenant not to sue from the patent owner.  In cases where a patent owner brings a declaratory judgment action, in contrast, “the non-holder may eliminate a justiciable controversy by representing to the Court that the non-holder has abandoned all potentially infringing conduct and that it has no plans to resume these activities in the future.”  However, evaluating such representations can be much more difficult than the determination of whether a patent… Read More »When Can a Patent Owner Sue for a Declaratory Judgment?