Thursday, May 16, 2013

Prior Litigation and Reexamination of Related Patent Create Substantial Controversy Supporting Declaratory Judgment Claim

The court denied defendant's motion to dismiss plaintiff's declaratory relief action for lack of subject matter jurisdiction. "[Defendant] has already initiated a patent infringement action against [plaintiff] in the Northern District of Ohio based on [plaintiff's] alleged infringement of [a similar] Patent [and] after the Ohio Litigation was stayed as a result of a reexamination of [that] Patent, [defendant] stated publically on at least two occasions that it intends to resume its vigorous prosecution against [plaintiff] when that stay is lifted. . . . [T]he [similar patent] and [the patent-in-suit] share the same specification, pertain to the same subject matter and technology, and are otherwise 'very closely related.'. . . [B]ased on the totality of the circumstances, [plaintiff] has established the existence of an actual case or controversy. . . .”

Medidata Solutions, Inc. v. DATATRAK International, Inc., 2-12-cv-04748 (NJD May 13, 2013, Order) (Martini, J.).

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