Tuesday, April 6, 2010

Asserting Infringement in Counterclaim Does Not Excuse Patentee's Obligation to Conduct Pre-Filing Investigation

In granting plaintiff's motion to declare the case exceptional warranting an award of attorneys' fees, the court rejected defendant's argument that its "shortcomings in its pre-filing investigation may be attributed to the fact that [plaintiff] filed this declaratory-judgment action and, therefore, [defendant] was forced to respond. . . . [I]t would not be unfair to suggest that a patentee have a reasonable basis for believing a potential target has infringed before it makes its first demand that the target purchase a license to use the invention or face the probability of an expensive infringement suit."

Highmark, Inc v. Allcare Health Management System, Inc., 4-03-cv-01384 (TXND April 1, 2010, Opinion & Order) (Means, J.)

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