Wednesday, January 13, 2010

Microsoft Ordered to "Explain the Need" for Counterclaims Seeking Declarations of Noninfringement and Invalidity

Where defendant asserted counterclaims for declarations of noninfringement and invalidity, the court sua sponte ordered defendant "to either explain the need for the present counterclaim or to file an amended pleading to take its place." "[T]his Court has consistently been bemused over the years by the penchant of patent lawyers to advance counterclaims that do nothing more than mirror the allegations of patent infringement complaints. Here (as always in such cases) [defendant] is charged with patent infringement, something that necessarily depends on the existence of a valid patent. After all, both infringement and validity must be proved by [plaintiff] to justify its recovery under the Complaint. Hence it is difficult to understand just what (other than extra paper) is added to the case by a counterclaim that seeks declarations of non-infringement and invalidity of the patent in issue."

Performance Proxy Research LLC v. Microsoft Corporation, 1-09-cv-06884 (ILND January 11, 2010, Memorandum Order) (Shadur, J.)


Dan Ballard said...

Why counterclaim for declarations of non-infringement and invalidity?

Because the court could agree to dismiss plaintiff's infringement claim, if so requested, which would then wholly preclude [absent a declaratory relief counterclaim] the defendant from litigating whether the asserted patent is valid and/or infringed.

Because the defendant can assert facts in the counterclaim that plaintiff must admit or deny -- which could identify additional topics for discovery and could be used to tee up a motion to dismiss or motion for summary judgment.

Anonymous said...

"validity must be proved by [plaintiff]..."

Ummm... is there no presumption of validity in ND IL?