Dormant Infringement Accusation Creates Declaratory Jurisdiction

Posted on October 1, 2008 by R. David Donoghue

Tuthill Corp. v. ArvinMeritor, Inc., No. 07 C 2758, 2008 WL 4200888 (N.D. Ill. Sep. 5, 2008) (Gottschall, J.)

Judge Gottschall denied declaratory judgment (“DJ”) defendant ArvinMeritor’s Fed. R. Civ. P. 12(b)(1) motion to dismiss for lack of subject matter jurisdiction. ArvinMeritor sent DJ plaintiff Tuthill Corp. a letter alleging that Tuthill infringed a group of patents to recreational vehicle suspension systems (the “RV patents”). Tuthill responded that its product did not infringe, that the patents were invalid, and that the accused products were not in production yet. Tuthill alleged that the parties had continuing discussions regarding the RV patents. ArvinMeritor claimed that the discussions went dormant as to the RV patents after it received Tuthill’s letter. Tuthill filed this suit after its accused products were put on the market. The Court held that regardless of whether the discussions went dormant, Tuthill’s claim met the Supreme Court’s MedImmune standard, as defined in the Federal Circuit’s SanDisk opinion. And ArvinMeritor never dissolved the controversy by providing Tuthill a covenant not to sue.

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Commercially Available Products are Discoverable

Posted on July 14, 2008 by R. David Donoghue
Boler Co. v. ArvinMeritor, Inc., No. 03 C 489, Slip Op. (N.D. Ill. Jul. 2, 2008) (Cole, Mag. J.).

Judge Cole decided various discovery and protective order issues in this patent infringement dispute.  Of particular note, the Court denied defendant's motion to preclude inspection of items that were commercially available.  The Court held that commercially available items were discoverable and that because the items were commercially available there were no protective order implications.

The Court also refused to consider certain oral motions, likely those that the parties could have filed before the hearing, because the Court's standing order required that motions be briefed.  Always make sure to read the Court's standing order, as well as the Local Rules.
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