More Patently-O TidBits

  • Trademark Dilution Act: The law has changed. TTABlog; INFO Law.
  • Delaware IP Law Blog (new) notes an interesting DJ decision where the patent holder sent an ameliorative letter after the action was filed. The judge found that the letter did not mitigate the would-be infringer’s apprehension of suit. (The letter apparently did not rise to the level level of a promise not to sue).
  • Intellectual Property Research Canons: As part of a research canons project, several law professors are looking for the “books and articles that are essential to a new academic in the field” of intellectual property. Add your comment here. You may remember that last year, Patently-O won some award as “best blog.”  Based on the comments here, Patently-O has now become both canonical and scholarly.

3 thoughts on “More Patently-O TidBits

  1. “‘This might have worked: The defendant “will not litigate its referenced patents against Positec for the next 12 months from the date of this letter.'”

    Why should this work?

    The DJ statute states that “[i]n a case of actual controversy within its jurisdiction… any court of the United States, upon the filing of an appropriate pleading, may declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought.”

    The patent owner has already alleged that the DJ plaintiff is infringing the patent. The time at which that the patent owner chooses to litigate that infringement is almost irrelevant to whether there is an actual controversy. See Volkswagen of America v. Engelhard Minerals & Chemicals Corp., 401 F. Supp. 1210 (S.D.N.Y. 1975) (“a justiciable controversy has been found to exist where a patentee has ‘charged’ a company with infringement, either directly or indirectly…”).

    The proposed statement does nothing to resolve the question of whether the DJ plaintiff is infringing the patent, but instead is a naked attempt to claw back the ability to litigate the case as a plaintiff, in a preferred venue and at a preferred time of the patent owner’s choosing. It also does nothing to resolve the fact that when the DJ suit was filed, the statement did not exist. Permitting a DJ defendant to “voluntarily dismiss” an action while preserving its ability to litigate similar or identical claims in the future would gut the purposes of the DJ statute.

  2. “at this time” may have meant at the time of writing the letter. Also, using “intention” is wishy-washy. This might have worked: The defendant “will not litigate its referenced patents against Positec for the next 12 months from the date of this letter.”

  3. You raise a good point about covenants not to sue and whether the CAFC’s Apotex decision should have come into play in the Delaware decision. Indeed, the district court noted that the letter stated that the defendant “has no intention of litigating its referenced patents against Positec . . . at this time.” Ultimately, it seems that the judge remained unconvinced by the “explanatory” nature of the letter – and the open-ended language as well.

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