Federal Judiciary

Motion to Strike Patent Plaintiff's Declaratory Action Counterclaims Granted

By Michael C. Smith

Catalina Marketing Corporation v. LDM Group, LLC, (2-07-cv-00477) TXED
Judge: T. John Ward
Holding: Motion to Strike Claims GRANTED
The rest of the legal media is treating this case as the third is a trio of orders granting motions to transfer patent cases, but on reading it I realized it's actually significantly different due to the procedural history - there was no transfer, nor even a motion, and the patent case remains pending before Judge Ward.
This is a patent infringement case filed by the plaintiff.  A year after it was filed, the defendant filed a set of nonpatent claims (unfair competition - that sort of thing) against the plaintiff in Missouri.  Two months later plaintiff sought to add these nonpatent claims to their Marshall patent case via declaratory judgment claims, claiming the Marshall case was first-filed.
Judge Ward disagreed, noting that the Marshall case was limited to the patent claim - there was no substantial overlap with the Missouri unfair competition claims.  As a result, he granted the defendant's motion to strike the nonpatent dec action claims.  Significantly, there's no citation to any venue cases such as VW II or TS Tech, only to Judge Hall's exceeding well-reasoned opinion in TI v. Micron, 815 F.Supp. 994, 997 (E.D. Tex. 1993) which discussed the first to file rule, and a Western District of Texas case.  While TI was a venue motion, the heart of the holding was Judge Hall's decision not to proceed with a patent case in Marshall because there was a prior-filed action in Idaho - the same holding Judge Ward made in this case.

Full post as published by Eastern District of Texas Federal Court Practice on February 03, 2009 (boomark / email).