Delaware Patent Litigation Report : Delaware Intellectual Property Lawyer & Attorney : Morris James Law Firm : Delaware Patent Litigation Report

On September 19, 2008 the Court issued its claims construction order and memorandum orders granting plaintiffs’ motion for summary judgment for non-infringement and granting in part and denying in part defendants’ motion for partial dismissal.  As a result of those orders, the only claims awaiting resolution in this matter are plaintiffs’ validity challenges to seven claims of the ‘516 patent and plaintiffs’ challenges to the enforceability of that patent.  This is the Magistrate’s decision on defendants’ motion to dismiss or for judgment pursuant to Fed.R.Civ.P. 54(b).  Defendants contend that as a result of the court’s September 19, 20098 orders, there is no live controversy between the parties with respect to the ‘516 patent.  Therefore defendants maintain that the Court has lost subject matter jurisdiction over plaintiffs’ declaratory judgment complaint and defendants’ reply to defendants’ counterclaims.  Defendants’ argument is that any present controversy between the parties with respect to the ‘516 patent is moot and will remain so unless the claim constructions are modified by the Court of Appeals.  Because the threat of future litigation is still very much at issue as Defendants actively seek review of the Court’s claim construction and non-infringement determinations, the Magistrate is unwilling to agree that the subject matter jurisdiction has been eliminated.  However, the Magistrate determines that considerations of judicial economy and reduction of litigation expenses are better served by permitting defendants to seek review of the Court’s claim construction and non-infringement orders at this time.  Therefore, the Magistrate grants defendants’ motion for judgment pursuant to Rule 54(b) and agrees to stay plaintiffs’ invalidity and unenforceability claims and defenses pending disposition of the appeal.