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 […]
Archive | Declaratory Judgments
Pleading Implied License as an Affirmative Defense to Patent Infringement
By Charles Bieneman on July 17, 2013 in Civil Procedure, Declaratory Judgments, Implied Licenses, Licensing, Patent Exhaustion, Patent Licenses
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 […]
When Can a Patent Owner Sue for a Declaratory Judgment?
By Charles Bieneman on May 2, 2012 in Civil Procedure, Declaratory Judgments, Litigation, Software Patents
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 […]