In Current Lighting Solutions, LLC v. Signify Holding B.V., No. 1:23-cv-11398, Judge O'Toole declined to exercise jurisdiction under the Declaratory Judgement Act and thus granted the Defendants' Motion to Dismiss.
Prior to the filing of Current's declaratory judgment complaint, the Parties were engaged in serious cross-licensing negotiations. As a licensing meeting approached, Current first pushed the meeting back a week and then cancelled it less than thirty minutes before the rescheduled start time, informing Signify of its declaratory judgment suit and noting that it "will hold off on formally serving the Complaint in order to leave open a transition period, should [Signify] wish to present a more realistic licensing offer." Subsequently, Signify filed three patent infringement actions against Current – two in the District of Delaware and one at the International Trade Commission – with some overlap of patents at issue in the action in the District of Massachusetts. Signify moved to dismiss the declaratory judgment Complaint.
With respect to Signify's Motion, the Court observed that it has broad discretion to decline declaratory judgment jurisdiction and may consider any negotiations between the Parties in making that determination. The Court considered Signify's delay, cancelation, and then notification of the declaratory judgment suit, finding that "[t]he record strongly indicates that Current's motivation for this declaratory judgment action was a tactical attempt to gain litigation and negotiation advantages."
In view of the Delaware actions, the Court also considered the first-to-file rule, noting that where two actions have overlapping subject matter, the first-filed action need not prevail where (as the Court found here) it does not satisfactorily comport with the objectives of the Declaratory Judgment Act.
Based on its finding that "Current's initiation of this action had a tactical motivation that does not serve the proper objectives of the Declaratory Judgment Act," the Court declined declaratory judgment jurisdiction and granted Signify's Motion to Dismiss without prejudice.
In Chr. Hansen HMO GmbH v. Glycosyn LLC, No. 1:22-cv-11090, Judge Gorton ruled on the construction of two disputed claim terms.
This case is the latest phase of litigation concerning a patent directed to the manufacture of human milk sugar for infant formulas. The Parties previously litigated the same patent at the International Trade Commission ("ITC"), and the ITC construed disputed claim terms. On appeal of the ITC action, the Federal Circuit affirmed the ITC ruling and left the claim construction unchanged.
Here, for the first term, "exogenous functional β-galactosidase gene," the two sides disputed the meaning of the word "gene," with Glycosyn ultimately conceding that the prior ITC construction would be acceptable. Both sides relied on extrinsic evidence in seeking to add modifiers to the construction received at the ITC, which the Court determined did not "provide[] a compelling reason to depart from the ITC construction." The Court did, however, deviate from the ITC construction to incorporate the parties' agreed construction of "exogenous," which had not been construed in the ITC action and to reflect the parties' agreement that a "functional β-galactosidase gene" must encode a working β-galactosidase enzyme.
With respect to the second claim term, "the level of β-galactosidase activity comprises between 0.05 and 200 units," the Court noted that both parties recognized that the Court would address indefiniteness at the summary judgment stage. The Court found that both sides implicitly acknowledged that the ITC's prior construction was correct while arguing that it should be further modified. Glycosyn sought a construction that would require a specific methodology for measuring activity, which the Court rejected as inappropriately directed to infringement rather than claim construction. Similarly, Chr. Hansen and Abbott argued to narrow the prior construction, but Judge Gorton reasoned that a narrowing construction would be contrary to the use of "comprising" in the same claim term. The Court concluded that "the plain meaning of the ITC construction will do" and adopted that construction without alteration.
Of note in the Court's analysis is the express statement that it "beg[an] with the careful consideration of the construction adopted by the ITC" and "it may afford [the ITC construction] whatever persuasive value and deference it deems appropriate." While the parties raised different arguments than those at the ITC and on appeal, the Court focused on the claim constructions made by the Administrative Law Judge at the ITC. The Court supplemented the ITC's constructions when the parties agreed, as in the case of the first claim term.
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