• April 27, 2010

When you have intense commercial competition and intellectual property rights, there are times when the question is not WHETHER there will be IP litigation but when and where (Apple vs. Android is as good an example as any.)

In the business of “reactive targets,”  shooting targets with layered paper and inks to make “hits” more visible from a distance, clearly there is such a rivalry and the question before U.S. District Court Chief Judge Michael J. Davis (D. Minn.) was whether the arguably accused infringer, Birchwood Laboratories, jumped the gun when it filed suit against a competitor.

Literally the day Battenfeld Technologies received a patent (12/15/09) on a reactive target with two colors of ink, its competitor, Birchwood, brought a declaratory judgment action seeking judgment of non-infringement, patent invalidity, and/or patent unenforceability.

Too soon?

Not as far as U.S. District Court Chief Judge Michael J. Davis (D. Minn.) was concerned.  Davis rejected the declaratory judgment defendant’s motion to dismiss based on a claim of lack of standing (i.e., no “case or controversy”).  Focusing on the U.S. Supreme Court’s decision in Medimmune v. Genentech and Federal Circuit decisions following it (for example, Prasco), Judge Davis found:

Birchwood was the only company, other than Battenfeld, that produced a Reactive Target having at least two different colors of ink, a characteristic described in all claims in the ‘877 Patent.  Therefore, Birchwood was necessarily the party referred to by Battenfeld.  Battenfeld provides no evidence to counter Birchwood’s proof that Birchwood must be the unnamed party in the Petition to Make Special.  Nor does Battenfeld assert that there is another, named or unnamed, competitor to which the Petition to Make Special refers.  It follows that, in the Petition to Make Special, Battenfeld publicly averred that Birchwood was infringing its patent. Such a public accusation of infringement is sufficient to create a case or controversy.

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