One recurring question in patent cases is whether to bring non-infringement and invalidity counterclaims.
For a while (over the last decade), it seemed like parties were backing off on counterclaims a bit, for a couple of reasons:
- While counterclaims are generally low-cost, they are not free and still involve some work.
- They increase the risk that the defendant, who is now a counterclaim-plaintiff, will have to bring some subset of its witnesses to Delaware for deposition.
- They may have little impact on how the case progresses.
These days, however, the pendulum seems to be swinging back to some extent, with parties filing non-infringement/invalidity counterclaims a bit more often. These counterclaims are usually low-cost, and people have figured out that, more often than not, a counterclaim-plaintiff only has to bring a small subset of its witnesses to Delaware, if any.
Plus, it seems (anecdotally) that there have been more cases lately where counterclaims—or lack thereof—have had an impact.
We got another example of that this week in Roku, Inc. v. AlmondNet, Inc., C.A. No. 21-1035-MN (D. Del.). There, the parties disputed what would happen after the plaintiff dropped 38 asserted claims, and simply never asserted 129 other claims. Defendant alleged that the claims should be considered dismissed with prejudice, (D.I. 130 at 1-3), while the plaintiff alleged that the voluntary withdrawal of the claims effectively resulted in a dismissal without prejudice (D.I. 127 at 3-4).
Defendant relied on its non-infringement and invalidity counterclaims in support of its position that plaintiff cannot unilaterally drop the claims without prejudice. They also argued that the plaintiff has a "history" of dropping patents or claims only to re-file later.
The Court didn't resolve the question, but suggested addressing the dispute at the summary judgment stage:
ORAL ORDER . . . Having reviewed the Joint Claim Construction Chart and the parties' letters regarding case narrowing, IT IS HEREBY ORDERED that the claim construction briefing and hearing will address the claim construction disputes in Exhibit 1 of the Joint Claim Construction Chart that remain at the time of the hearing. As to the DJ and recently dropped claims, there is no dispute that they are not part of this case. There is, however, no agreement as to how to dispose of those claims. Nor is there any motion before the Court regarding disposal of those claims. Thus, the parties may address those claims during summary judgment proceedings. ORDERED by Judge Maryellen Noreika on 4/13/2023. (dlw) (Entered: 04/13/2023)
Id., D.I. 129.
Absent the counterclaims, the question of whether the claims were dismissed with prejudice could be left unresolved (at best). The counterclaims permit the defendant to take care this issue on summary judgment—and prevent an alleged repeat filer plaintiff from trying to bring them back in a later case.
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