In a recent IAM article, Thompson Coburn partner Nathan Fonda discussed key considerations for patent challengers pursuing declaratory judgments. In a recent U.S. federal court ruling, the court dismissed Samsung Electronics Co.’s declaratory judgment action against Oura Health Oy, citing the lack of evidence that Oura had directed any litigation threats specifically at Samsung.
Samsung had sought a declaratory judgment stating that its Galaxy Ring doesn’t infringe Oura U.S. smart ring patents, citing the suits Oura filed against other parties as justification. In discussing the issues of the case, Nathan emphasized the critical role of specific facts in declaratory judgment claims.
“The court put a lot of weight behind the fact that nothing Oura did was specifically directed at Samsung,” he said. “That’s an important reminder that you have to look at the facts and how the patent owner has acted towards a party or product to determine whether a DJ claim can be filed.”
Public statements, particularly directed toward a potential infringer, claiming infringement would be sufficient. “There are limited circumstances where the accused product or the prospective infringer don’t have to specifically be named, but pattern of enforcement might be sufficient to file a DJ action,” Nathan said.
“It’s difficult to prove and to some extent, it should be. Patent owners should not be seen as inviting the world to challenge their patent at any time,” he said.
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