July 23, 2009
Declaratory Judgment Plaintiff Realigned as Infringement Defendant
In an unusual move, a district court decided to restyle the Plaintiff and Defendant in a patent infringement case. In Gemtron Corp. v. Saint Gobain Corp., Saint-Gobain filed suit against Gemtron, seeking a declaratory judgment of noninfringement and invalidity of two patents. Gemtron then counterclaimed for infringement, and the district court “realigned the parties” to make Gemtron the plaintiff.
While thinking of the patentee as the plaintiff and the alleged infringer as the defendant might be a little easier, this change bestows significant tactical advantages on the plaintiff for the remainder of the case. Initially, the very fact that it easier to think of the parties in terms of the party who was wronged and seeking to vindicate its rights against the party who allegedly harmed the first party may provide an advantage for the plaintiff in the mind of a jury. And while the now-defendant presumably acted in good faith by taking proactive and costly measures to make sure it was not infringing the now-plaintiff’s patents, some of that good will may be ameliorated by virtue of its new status as the defendant. The new-plaintiff gets to reap rewards that it never fully earned simply based on being the plaintiff.
Not surprisingly, the new-plaintiff won in the district court and on appeal.