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Provisional rights, 35 USC 154(d)

By Lawrence B. Ebert, Esq.

In passing, note that the issue of pre-grant damages (provisional rights) was addressed in Pandora Jewelry, LLC v. Chamilia, LLC (D. Md. 2008). Patentee did not get them.

See also
Pandora Jewelry, LLC v. Chamilla LLC, No. 03-07587 (S.D.N.Y. Nov. 26, 2003) and later SDNY case-->

?The existence of an actual controversy is an absolute predicate for declaratory judgment
jurisdiction.? GAF Bldg. Materials Corp. v. Elk Corp., 90 F.3d 479, 481 (Fed. Cir. 1996)
(internal quotation omitted). The standard inquiry for the existence of a controversy in a
declaratory judgment regarding patent infringement looks to: (1) whether the defendant in the
action has engaged in conduct that created in the plaintiff a reasonable apprehension that it will
face an infringement suit; and (2) that the plaintiff must have actually produced or prepared to
produce the allegedly infringing device. Id. Where, as here, the Complaint alleges a dispute
over the validity or infringement of ?a possible future patent not then in existence,? the district
court cannot ?know with certainty whether a patent would issue or, if so, what legal rights it
would confer? and should therefore avoid issuing ?an impermissible advisory opinion.?

(...)

Although Defendant has since been issued a patent on its products,
justiciability is evaluated at the time the complaint is filed, and ?[t]he fact that the patent . . .
would have been granted before the court reached the merits of the case is of no moment.? GAF
Building, 90 F.3d at 482; see also Eldridge v. Springs Indus., 882 F. Supp. 356, 357 (E.D.N.Y.
1995) (?It is well settled that a patent cannot be infringed until after that patent has been
issued.?). Plaintiff argues that, as it also seeks injunctive relief, there is no requirement that the
patent have issued. It cites for authority one sentence of Blank stating that a Lanham Act
claimant need not ?hold a competing patent or even be engaged in the same industry.? Blank,
916 F. Supp. at 173. That case, however, states the law relating to the Lanham Act and is
irrelevant to Plaintiff?s request for declaratory relief regarding patent infringement from a patent
not yet in existence. Plaintiff has cited no authority for the proposition that this Court has, let
alone should exercise, the power to enjoin future patent infringement proceedings when no
patent had issued at the time the complaint was filed.

Full post as published by IPBiz on September 02, 2009 (boomark / email).