Judge Joseph J. Farnan, Jr.: No Jurisdiction Over Section 291 or 146 Claims Where Patentee Files Disclaimer

Once a patentee files a disclaimer, any cause of action related to an interference proceeding is mooted and therefore the federal court lacks jurisdiction to hear a declaratory judgment dispute. 3V, Inc. v. CIBA Specialty Chemicals Corp., C.A. Nos. 06-593-JJF, 06-629-JJF, 06-672-JJF, Opinion, at 10 (D. Del. Nov. 19, 2008). If a party wishes to continue to address the priority date of the claims or whether a disclaimed patent constitutes prior art, they can assert those claims in any future litigation surrounding potential infringement, but it is not appropriate for the court to address them in the context of an appeal from the Board of Patent Appeals and Interferences once one of the patents involved in the underlying interference has been disclaimed. A priority dispute must exist to establish federal jurisdiction over a Section 291 or Section 146 action and interfering patents are a prerequisite to any priority dispute. Id. at 12.

The court also denied defendant’s motion for leave to discover documents related to the plaintiff’s disclaimer and decision to file the disclaimer. Id. at 14. Defendant sought such documents because, they argued, the plaintiff purposefully withheld their intent to file a disclaimer from the defendant in order to drive up litigation costs and therefore defendant should be entitled to exceptional case damages. Id. at 5. The court found such information to likely constitute work-product or be subject to the attorney-client privilege. Id. at 14-15. Furthermore, the fact that defendant spent money and time engaging in discovery was not sufficient to justify the burden of additional discovery. Id. at 15.

3V, Inc. v. CIBA Specialty Chemicals Corp., C.A. Nos. 06-593-JJF, 06-629-JJF, 06-672-JJF, Opinion (D. Del. Nov. 19, 2008).

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