Thursday, May 6, 2010

Inequitable Conduct Counterclaim Does Not Vest Court With Subject Matter Jurisdiction Over Unasserted Patent Claims

In granting plaintiff's motion to dismiss defendant's counterclaims concerning unasserted patent claims for lack of subject matter jurisdiction, the court rejected defendant's argument that "because it has asserted an inequitable conduct claim, each and every claim of the [patent-in-suit] is subject to the Court’s jurisdiction. While a court’s determination of inequitable conduct in relation to one or more claims of a patent renders the entire patent unenforceable, [defendant] has not demonstrated to the Court that an actual controversy exists with respect to the unasserted claims. . . . [Defendant] makes passing reference to one phrase contained in the [patent-in-suit] which it asserts demonstrates that a feature of the invention is necessarily 'covered by all of the claims,' but again provides no supporting analysis for this contention."

Sloan Valve Company v. Zurn Industries, Inc. et al., 1-10-cv-00204 (ILND May 4, 2010, Memorandum Opinion & Order) (St. Eve, J.)

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