Intellectual Property Law

Judge Joseph J. Farnan, Jr.: Subtle reminder to parties ? give the Court the power to find in your favor

By Karen E. Keller, Andrew A. Lundgren et al.

In a recent case, Defendant Tivo, Inc. (?Tivo?), moved the Court to dismiss Plaintiffs? (collectively, ?Echostar?) case pursuant to the Court?s power under the Declaratory Judgment Act. Dish Network Corp. v. Tivo, Inc., C.A. No. 08-327-JJF, Memorandum Opinion (D. Del. Mar. 31, 2009).

The backstory ? Tivo successfully sued Echostar for patent infringement before Judge Folsom in the Eastern District of Texas. Echostar redesigned its products and alleged that its redesigned products no longer infringed Tivo?s patents. Tivo disagreed and pursued a contempt action before Judge Folsom in Texas. Id. at 2. Meanwhile, Echostar brings this action in the District of Delaware to ?remove the ?cloud? of uncertainty? surrounding its products.

The conflict begins ? Judge Farnan begins his analysis of Tivo?s motion to dismiss with a hint of foreshadowing. Judge Farnan points out that Tivo ?only? argues the Court should ?exercise its discretion to decline jurisdiction over the instant declaratory judgment suit.? Id. at 6. Nevertheless, the Court is ?unpersuaded? by Tivo?s arguments for dismissal stating that the only issue is whether there is enough of a difference between Echostar?s redesigned products and the original infringing products so that the proper forum for adjudication is the contempt proceedings before Judge Folsom in Texas. Id. at 7-8.

The plot thickens ? Judge Farnan denies Tivo?s motion because whether Tivo can show a ?colorable difference? between the products is a decision best made by Judge Folsom but not an ?adequate basis? upon which the case can be dismissed. Id. at 9. The story climaxes when Judge Farnan, sua sponte, raises the idea to transfer the case to the Eastern District of Texas, reminding Tivo that the idea of ?an alternative motion to transfer? should have been raised by them ?with the instant [m]otion.? Id. at 10.

Moral of the story ? never forget to give the Court the basis to find in your favor.

Dish Network Corp. v. Tivo, Inc., C.A. No. 08-327-JJF, Memorandum Opinion (D. Del. Mar. 31, 2009).

Full post as published by Delaware IP Law Blog on April 15, 2009 (boomark / email).