Court Denies Declaratory Judgment Defendant's Request to Re-Align Parties as Realignment Would Frustrate the Purpose of the Declaratory Judgment Act

September 24, 2014

Plaintiffs filed the declaratory judgment complaint in this patent case after receiving a letter from defendants alleging that Plaintiffs' products infringe two of defendants' patents. Plaintiffs sough declaratory judgment that Defendants' patents, U.S. Patent Nos. 6,830,014 (filed Aug. 5, 2003) ("the '014 Patent") and 7,267,082 (filed Dec. 30, 2005) ("the '082 Patent"), were invalid and/or that Plaintiffs' products do not infringe the patents. Defendants asserted counterclaims of infringement. The remaining issues for trial involved the scope and validity of the '082 Patent and whether Plaintiffs' product design infringed the '082 Patent.

The individual defendant filed a motion to re-align the parties to allow himself to present his case first because he had the burden of proof on the "most important issue" remaining for trial. Plaintiffs opposed the motion on the grounds that they bore the burden of proof on the declaratory judgment claim of invalidity and because they initiated the lawsuit.

In their motion, Defendant argued that even though he is formally named as the defendant in the above-captioned matter, he should present his case first at trial because he bears the burden of proof on the infringement claim. The district court disagreed. "While Defendant is correct that it is he who bears the burden of proof on this claim, his argument neglects an important element of this case. Defendant fails to acknowledge that plaintiffs bear the burden of proof on their invalidity claim under the Declaratory Judgment Act. Without providing any supporting authority or explanation, Defendant argues that his claim of infringement is the most important issue remaining for trial, and that reason alone warrants realigning the parties and altering the order of proof. Id. at 2. However, where both parties bear the burden of proof on at least one claim in a declaratory judgment case, courts typically do not alter the traditional order of proof. E.g. Anheuser-Busch, Inc. v. John Labatt Ltd., 89 F.3d 1339, 1344 (8th Cir. 1996); Fresenius Med. Care Holdings, Inc. v. Baxter Int'l, Inc., Case No. C 03-01431 SBA (EDL), 2006 WL 1646110, at *2 (N.D. Cal. June 12, 2006). In the absence of any legitimate reason, the Court is not inclined to change the traditional order of proof in this case."

In addition, the district court stated that "permitting Defendant to proceed first at trial in this case would frustrate the goals of the Declaratory Judgment Act in the context of patent litigation. "The purpose of the Declaratory Judgment Act . . . in patent cases is to provide the allegedly infringing party relief from uncertainty and delay regarding its legal rights." Creative Compounds, LLC v. Starmark Labs., 651 F.3d 1303, 1316 (Fed. Cir. 2011) (internal quotation marks omitted). Plaintiffs took the initiative and filed this action to resolve the uncertainty created by Defendants' informal allegations of infringement. Granting Defendant's motion would punish plaintiffs for seeking prompt clarification of the parties' legal rights."

Accordingly, the district court denied the motion to re-align the parties.

Radio Systems Corp. v. Tom Lalor, Case No. C10-828RSL (W.D. Wash. Sept. 12, 2014)

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.