No controversy exists where plaintiff disclaims interest in patent
3V, Inc. v. CIBA Specialty Chemicals Corp., C. A. No. 06-593-JJF, 06-629-JJF, 06-672-JJF, November 20, 2008.
Farnan J. Court grants plaintiff’s motion to dismiss for lack of subject matter jurisdiction and denies defendant’s motion for leave of court to serve limited discovery relating to plaintiff’s disclaimer of its patent claims
Court grants motion to dismiss for lack of subject matter jurisdiction and denies motion for leave of Court to serve limited discovery. This action follows an adverse decision by the Board of Appeal and Interferences wherein the Board considered which party was the first to invent the invention claimed in two competing patents. Defendant counterclaimed and initiated two separate actions stemming from the Board’s decision. After settlement negotiations failed, plaintiff filed a statutory disclaimer pursuant to U.S.C. § 253 disclaiming all claims of the patent-in-suit and dedicating to the public its entire right, title and interest to the public. Thereafter it filed its motion to dismiss contending that there was no longer any controversy since it no longer held any interest to the patent. Defendant contends that still before the Court is the issue of whether plaintiff’s patent constitutes prior art affecting defendant’s application. The Court concludes that, based on plaintiff’s disclaimer, a genuine case or controversy no longer exists for any of the three actions and any dispute over priority has been mooted, removing federal court jurisdiction. Moreover, no facts exist to justify an investigation into defendant’s claim that plaintiff was intentionally running up defendant’s costs.
