Declaratory judgment
The examples and perspective in this article deal primarily with the United States and do not represent a worldwide view of the subject. (November 2013) |
Judicial remedies |
---|
Legal remedies (Damages) |
Equitable remedies |
Related issues |
A declaratory judgment, also called a declaration, is the
A declaratory judgment is generally distinguished from an
A declaratory judgment is typically requested when a party is threatened with a
Declaratory judgments are authorized by statute in most common-law jurisdictions. In the United States, the federal government and most states enacted statutes in the 1920s and 1930s authorizing their courts to issue declaratory judgments.[5]
Cease and desist
The filing of a declaratory judgment lawsuit can follow the sending by one party of a cease-and-desist letter to another party.[6] A party contemplating sending such a letter risks that the recipient, or a party related to the recipient (i.e. such as a customer or supplier), may file for a declaratory judgment in their own jurisdiction, or sue for minor damages in the law of unjustified threats.[7][8][9] This may require the sender to appear in a distant court, at their own expense. So sending a cease-and-desist letter presents a dilemma to the sender, as it would be desirable to be able to address the issues at hand in a candid manner without the need for litigation. Upon receiving a cease-and-desist letter, the recipient may seek a tactical advantage by instituting declaratory-judgment litigation in a more favorable jurisdiction.[7][8]
Sometimes the parties agree in advance of discussions that no declaratory-judgment lawsuit will be filed while the negotiations are continuing. Sometimes a lawsuit is filed, but not served, before sending such a notice, to preserve a jurisdiction advantage without engaging the judicial process fully. Some parties send cease-and-desist letters that make "an oblique suggestion of possible infringement" to lower the risk of the recipient filing a declaratory-judgment lawsuit.[10]
Declaratory judgment actions in patent litigation
Declaratory judgments are common in
Common claims for declaratory judgment in patent cases are non-infringement, patent invalidity, and un-enforceability. To bring a claim for declaratory judgment in a situation where a patent dispute may exist or develop, the claimant must establish that an
Usually the claimant is actually making, using, selling, offering to sell, or importing, or is prepared to actually make, use or sell, offer to sell or import an allegedly infringing device or method, and usually the patent owner has claimed that such activities by claimant will result in patent infringement.[17] An express threat of litigation is not needed, nor is it a guarantee that jurisdiction will be granted.[18] Some factors courts have considered in this analysis are whether a patent owner has asserted its rights against an alleged infringer in a royalty dispute, whether the owner has sued a customer of an alleged infringer, or whether an owner has made statements regarding its patents in trade magazines.
If a patent owner does suggest that there is patent coverage of what an alleged infringer is doing or planning to do, the alleged infringer may bring suit.[7][8] The alleged infringer, as the plaintiff in the suit, can choose the venue subject to constitutional restrictions and the state long-arm statute of the forum in question. The suit can be brought in any forum if the local federal district court can properly obtain personal jurisdiction over the alleged infringer.
Defendants in infringement cases can ask for declaratory judgment as a counterclaim.
A counterclaim of infringement is a
See also
References
- ^ 28 U.S.C.S. § 2201 (“Any such declaration shall have the force and effect of a final judgment or decree and shall be reviewable as such.”)
- ^ Gulfstream Aerospace Corp. v. Mayacamas Corp., 485 U.S. 271, 284 (1988) (“Actions for declaratory judgments are neither legal nor equitable . . . .”).
- ^ Samuels v. Mackell, 401 U.S. 66, 70 (1971) (“Although the declaratory judgment sought by the plaintiffs was a statutory remedy rather than a traditional form of equitable relief, the Court made clear that a suit for declaratory judgment was nevertheless ‘essentially an equitable cause of action,’ and was ‘analogous to the equity jurisdiction in suits quia timet or for a decree quieting title.’”) (citations omitted)
- ^ Green v. Mansour, 474 U.S. 64, 72 (1985) (“The propriety of issuing a declaratory judgment may depend upon equitable considerations”).
- ^ See Declaratory Judgment Act, 28 U.S.C.S. § 2201
- ^ https://web.archive.org/web/20080515150138/http://home.comcast.net/~jlw28129/05Harvey-Appel.pdf. Archived from the original (PDF) on May 15, 2008.
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(help) - ^ a b c "Cease and Desist Letter". Archived from the original on August 20, 2011. Retrieved October 21, 2011.
- ^ a b c "Cease and Desist letter". Patent Attorney | Orange County | OC Patent Lawyer. January 6, 2010.
- ^ "Legaltech News". Legaltech News.
- ^ "Patent Law: "Reasonable Apprehension" After Receipt of Cease-and-Desist Letter Grounds for Declaratory Judgment Action". Library.findlaw.com. Retrieved June 13, 2012.
- ^ But see 35 U.S.C. 286 (imposing a six-year time limitation on damages).
- ^ "Patent Marking Requirements: Patented Articles Must be Marked as Patented in Order For Patentee to Recover Damages Due to Patent Infringement". Findlaw.
- ^ MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 126–27 (2007).
- ^ MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007).
- ^ "Cease and Desist Letter". Houstoninternetlaw.com. September 23, 2008. Archived from the original on August 20, 2011. Retrieved June 13, 2012.
- ^ Grand T. W. R. Co. v. Consolidated Rail Corp., 746 F.2d 323, 325 (6th Cir. 1984) (“Title 28 of the United States Code § 2201 provides that in ‘a case of actual controversy within its jurisdiction’ a federal court ‘may’ give a declaratory judgment, a power permissive, not mandatory. Although it is well settled that the granting of a declaratory judgment rests in the "sound discretion" of the court”).
- ^ 35 U.S.C. 271.
- ^ Grand T. W. R. Co. v. Consolidated Rail Corp. Archived August 20, 2011, at the Wayback Machine, 746 F.2d 323, 325 (6th Cir. 1984).
- ^ Vivid Techs., Inc. v. Am. Sci. & Eng'g Inc., 200 F.3d 795, 802 (Fed. Cir. 1999)
External links
- 28 U.S.C. 2201-2 – Declaratory judgment
- Federal Rules of Civil Procedure, Rule 57
- Uniform Declaratory Judgment Act at the Wayback Machine (archived April 3, 2005)
- Bray, Samuel L. (2010). "Preventive Adjudication". University of Chicago Law Review. 77: 1275. SSRN 1483859.