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ARTICLE · 03 MAY 2017

Willfulness Can Be Predicated On Brief Between Declaratory Judgment Filing And Counterclaim

This cause of action did not exist at the time of the previous litigation and therefore was not precluded.

United StatesIntellectual Property

In a complex 42-page decision, the US Court of Appeals for the Federal Circuit addressed issues of assignor estoppel, claim indefiniteness, subject matter eligibility, claim preclusion, willfulness and lost profits damages (apportionment). Mentor Graphics Corp. v. EVE USA, Inc., Case Nos. 15-1470; -1554; -1556 (Moore, J). 

Synopsys purchased EVE, a company founded by the inventors of Mentor's patents on debugging software. EVE had previously acquired a license to the Mentor patents through a settlement of litigation between EVE and Mentor. Mentor informed Synopsys that EVE's license to the patents would terminate upon the purchase. Upon closing the purchase of EVE, Synopsys filed for a declaratory judgment for non-infringement and invalidity of Mentor's patents and infringement of Synopsys's patents by Mentor. Mentor counterclaimed for infringement of the previously licensed patent.

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