Intellectual Property Law

Magistrate Judge Mary Pat Thynge: Pending Equitable Defenses Preclude Final-Judgment Certification

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

Magistrate Judge Mary Pat Thynge recently resolved a thorny question of finality for purposes of appeal. Faced with a situation in which a jury had returned verdicts of noninfringement and "non-invalidity," but equitable defenses remained outstanding, the Court denied the underlying request for Rule 54(b) certification:

"[I]n both of those cases [cited to support certification], the courts had already decided infringement, validity, and enforceability. This court has not ruled on Amazon's equitable defenses, so Amazon's declaratory judgment claims of noninfringement and invalidity will not be considered 'final.' " (emphasis in original)

Just in case there was any doubt, the Court emphasized that "[e]ven assuming arguendo that Amazon can gin up an argument that its claims are indeed 'final,' its pending equitable defenses, at a minimum, give this court just reason to delay" certification. As a result, the outstanding enforceability issues precluded, as a matter of law, immediate Rule 54(b) relief.

Cordance Corp. v. Amazon.com Inc., C.A. No. 06-491-MPT (D. Del. March 19, 2010) (Thynge, M.J.).

Full post as published by Delaware IP Law Blog on March 26, 2010 (boomark / email).