The opinion of the court was delivered by: JAMES MORAN, Senior District Judge
MEMORANDUM OPINION AND ORDER
Plaintiff brought this action which, among other things, sought
in Count I a declaration of non-infringement of a published
patent application for lids for industrial waste containers or
dumpsters. Defendant moved to dismiss Count I because no patent
has yet issued. Plaintiff now seeks to amend Count I so as to
expressly rely upon 35 U.S.C. § 154(d) and, consequently, to
oppose the motion to dismiss.
The Federal Circuit in GAF Building Materials Corp. v. Elk
Corp. of Dallas, 90 F.3d 479 (1996), was emphatic that threats
of a suit when and if a patent issued did not present an Article
III case or controversy if the patent had not yet issued
although a patent was, in all likelihood, going to issue. Does
the later-enacted 35 U.S.C. § 154(d) change that determination?
We think not.
35 U.S.C. § 154(d) permits a patent holder, once a patent
issues, to recover a reasonable royalty for the period between
publication of the application and the issue date, if the alleged
infringer had actual notice of the application and the invention
as claimed is substantially identical to the invention claimed in
the application. That provision somewhat rachets up the risk to the threatened party, but only somewhat, as the remedy is
confined to a reasonable royalty. As the section indicates,
moreover, it is a "provisional" right. It does not mature until a
patent issues and the claims in the patent are substantially
identical to the claims in the application. The Federal Circuit
recognized that the threatened party in GAF had a reasonable
apprehension that it would be sued if a patent issued (and thus
ran the risk of being enjoined from continuing to market an
established product), but there was no certainty that a patent
would issue and, if one issued, what rights it would confer. Nor
was there a basis for specific relief, a declaration that a
patent was invalid or not infringed because there was as yet no
patent. Those uncertainties are present here as well, and
35 U.S.C. § 154(d) does not impact them. Accordingly, we deny the
motion to amend as the amendment does not rescue Count I, and we
dismiss Count I.
Defendant seeks also to dismiss Counts II, III and IV,
contending they are moot if Count I is dismissed. But that
contention is first advanced in its reply brief and is not part
of its motion. Accordingly, we do not consider it.
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