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Copyright 2014 Banner & Witcoff, ltd.“When a patent licensee paying royalties into an escrow account under a patent
licensing agreement seeks a declaratory judgment that some of its products are not
covered by or do not infringe the patent... the burden of persuasion is with the
patentee, just as it would be had the patentee brought an infringement action.”
- Severing/Staying Infringement Suits Against Customers
In re Nintendo of America, Inc., 756 F.3d 1363 (Fed. Cir. 2014). The Federal Circuit
granted Nintendo’s petition for a writ of mandamus, and directed that the Eastern
District of Texas transfer a patent infringement claim against Nintendo to the
Western District of Washington, where most of its evidence resided, and to stay the
remaining case against Nintendo’s retailer customers. “When a patent owner files an
infringement suit against a manufacturer’s customer and the manufacturer then files
an action of noninfringement or patent invalidity, the suit by the manufacturer
generally takes precedence.”