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Judge Robinson grants motion to dismiss declaratory judgment inequitable conduct claims

Judge Sue L. Robinson recently granted Defendant Carrier Corp.’s motion to dismiss Plaintiff Goodman Mfg. Co.’s complaint seeking declaratory judgment of inequitable conduct relating to Carrier Corp.’s U.S. Patent Nos. 7,243,004 and 7,775,452.  Goodman Mfg. Co. v. Carrier Corp., C.A. No. 13-2014-SLR (D. Del. Sept. 23, 2014).  This declaratory judgment action was filed after Carrier sued Goodman for infringing the same patents, and on the same day Goodman sought leave to amend its answers to assert inequitable conduct in Carrier’s patent infringement action.  Id. at ¶ 2.  The court subsequently denied Goodman’s motion to amend its answers.  Id.

Judge Robinson found that Goodman’s declaratory judgment claim of inequitable conduct is a compulsory counterclaim because it “arises out of the transaction or occurrence that is the subject matter of the opposing party’s claim and does not require for its adjudication the presence of third parties of whom the court cannot acquire jurisdiction.”  Id. at ¶¶  3-5.  The Court noted that Goodman made the same arguments in this case that it made to the Court in the Carrier case in support of its motion to amend its answer to add inequitable conduct claims.  Id. at ¶ 5.  “Goodman may not circumvent the court’s denial of its motion for leave to amend by filing a separate action for the same claims.”  Id.  Judge Robinson also found that the court did not have subject matter jurisdiction over Goodman’s declaratory judgment counterclaim as to the ‘452 patent because the parties previously stipulated to dismiss their infringement and invalidity claims as to that patent.  “Without a corresponding infringement case, under a ‘totality of the circumstances’ review, there are insufficient facts to show the existence of an actual controversy between the parties as to the ‘452 patent.”  Id.  at ¶ 9.

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