Microsoft Denied Declaratory Judgment Jurisdiction a Second Time

Microsoft was unable to sustain a declaratory action brought against WebXchange to invalidate three patents covering network services.  The patents-in-suit are U.S. Patent Numbers 5,778,178; 6,212,556; and 7,340,506. According to IP 360, the USPTO has agreed to re-examine the '178 and '556 patents and has canceled the claims of the '506 patent.

On Friday U.S. District Judge Farnan sitting in Delaware, ruled that Microsoft lacked subject matter jurisdiction to bring the declaratory action, reasoning that Microsoft could not prove that the suits WebXchange filed against Microsoft customers over Microsoft's Virtual Earth Web Services and MapPoint Web Services software established an actual "case or controversy" with the software's maker.

Apparently this is the second time Microsoft has been unable to make allegations of declaratory judgment jurisdiction stick.  Back in April, the U.S. District Court for the Northern District of California in April dismissed a similar suit Microsoft filed against WebXchange.

Fluke Files Declaratory Judgment Action Against Competitor

Local manufacturer of electronic test tools (among other products in the largely "wired" electronics space reminiscent of last century), Fluke Products, filed suit seeking a declaratory judgment that certain Modular Telephone Plugs do not infringe U.S. Patent No. 5,562,475, allegedly owned by Aines Manufacturing Corp. of Ronkonkoma, NY. Fluke also alleges that the '475 patent is invalid.

As basis for asserting DJ jurisdiction, the complaint asserts that the president of Aines, Joseph Kern, Jr., sent a letter to Fluke in April 2009, threatening infringement and saying that he "will do whatever is necessary to protect the Aines Patent and recover damages." The complaint, filed by Ryan McBrayer at Perkins Coie, is attached below.

FlukeAinesDJComplaint.pdf

Subject Matter Jurisdiction After MedImmune

Yesterday, Judge Jones issued a decision that required the Court to "traverse uncharted territory between the Supreme Court’s decision in MedImmune, Inc. v. Genentech, Inc., 127 S.Ct. 764 (2007), and the Federal Circuit’s decision in Monsanto Co. v. Bayer Bioscience N.V., 514 F.3d 1229 (Fed. Cir. 2008)."

Because I'm personally involved in this case on behalf of National Products, Inc., I'll limit my commentary to simply state that the ruling is important, timely, and useful for patent litigators attempting to navigate the jurisdictional coral reef left by the Supreme Court's decision in MedImmune. It involves a situation where a patentee filed suit for infringement and was later provided information by the defendant claiming to have sold the accused device more than one year before the filing date. Once this evidence was evaluated, the patentee provided a covenant not to sue and sought dismissal of the case, including DJ counterclaims for noninfringement and invalidity. This case reaffirms settled law that a covenant not to sue divests the court of DJ jurisdiction over counterclaims for invalidity and noninfringement. However, the court may in some case retain jurisdiction to hear requests for fees under 35 U.S.C. section 285.


Doc%20037%20-%20ORDER%20Granting%20%20%20Denying%20%28in%20prt%29%20Mtn%20to%20Dismiss%20%2880170672%29.PDF