Counterclaim for Declaratory Judgment of No Presumption of Validity Dismissed

The court granted plaintiff's motion to dismiss defendant's counterclaim for a declaration that the presumption of validity did not apply because the PTO failed to properly discharge its duties. "[Defendant] asserts that, where there is evidence that the [PTO] did not properly discharge its duties, the application of this presumption violates constitutional due process guarantees. . . . [D]eclaratory relief is inappropriate 'where the substantive suit would resolve the issues raised by the declaratory judgment action.' . . . [I]t is apparent that . . . [defendant's] counterclaim is not an appropriate request for declaratory relief. The relief it seeks has no relevance outside of the context of this lawsuit. Rather, [defendant] asks the Court to make a preemptive legal determination for purposes of this suit only. . . . But even if [defendant's] request were a proper claim for declaratory judgment, there is an independent reason for rejecting it. . . . [I]n the civil law context, a presumption will be upheld against a due process challenge unless it is arbitrary . . . . [T]he presumption of validity is not arbitrary, but rather is substantiated by a number of rational policy justifications. Some of these support the application of the presumption even where there are reasons to question the integrity of the PTO’s determinations."

Lippert Components Manufacturing, Inc. v. MOR/ryde International Inc. et al, 3-14-cv-01999 (INND May 20, 2016, Order) (DeGuilio, J.)