Blawgletter wrote No More Mr. Nice Patent-Infringer Guy about five years ago. It told about how the Supreme Court and Federal Circuit had lately cleared the way for people to pre-empt a lawsuit for patent infringement by suing for a declaratory judgment first. And just last week we pointed out that someone who avails herself of the pre-emptive strike option doesn't shift the burden of proof.
But please don't think playing the d.j. card involves no risk. The court might conclude that you and your client jumped the gun and dismiss your case. And in the meantime the patent holder very well could sue your client for infringement. That a real dispute now exists won't much matter. It had to have erupted as of the time you sued. Matthews Int'l Corp. v. Biosafe Eng'g, LLC, No. 12-1044, slip op. at 14 (Fed. Cir. Sept. 25, 2012).
The case turned, by the way, on the fact that a device for dissolving human remains could but might not infringe the patents at issue. The panel said:
[T]here is no indication that Matthews' customers have settled upon a fixed protocol for using the Bio CremationTM equipment. Because Matthews' technology is "fluid and indeterminate" rather than "substantially fixed," its dispute with Biosafe lacks the requisite reality to support the exercise of declaratory judgment jurisdiction.
Id. at 12 (citation omitted).
Ghastly stuff. And did they really have to say "fluid and indeterminate" when talking about a gizmo that turns bodies into "a quantity of green-brown tinted liquid . . . and soft, porous white bone remains". Eeeww.