Judge Robinson Stays Antitrust Counterclaims Pending Patent Infringement Case

January 5, 2016

Publication| Intellectual Property

In Intellectual Ventures I, LLC, et al. v. Toshiba Corporation, C.A. No. 13-453-SLR-SRF (D. Del. Dec. 9, 2015), Judge Robinson ordered that a stay of defendant’s antitrust counterclaims must remain in place until plaintiffs’ patent infringement claims were resolved. Judge Robinson found that defendant’s antitrust counterclaims hinged on the allegation that plaintiffs’ patent portfolio was of “poor quality” in that the portfolio “combin[ed] many invalid and not-infringed semiconductor patents into a portfolio . . . creat[ing] monopoly power that would not otherwise exist.” Judge Robinson stated that because the antitrust counterclaims rest on the “quality” of the patents in the portfolio rather than the way the patent portfolio is asserted, a determination of the patent portfolio’s validity and/or infringement must come to a “final resolution.” Indeed, Judge Robinson found that defendant’s antitrust claims would be less compelling if they had asserted the claims based on anything other than the quality of the patent portfolio, “given the fact that patents are legal monopolies until such time, if ever, that they are proven to be invalid and/or not infringed.”

Analysis: While antitrust counterclaims are typically not asserted in recent patent cases, the Court will entertain stays of such claims.

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