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Judgment Day

It was a battle STMicroelectronics tried hard to avoid.

Although the Geneva-based company believed a competitor was infringing 14 of its patents on flash-memory storage products, it was determined to resolve the matter amicably.

This decision goes beyond what the Supreme Court had held.

"In MedImmune, the Supreme Court said, 'We don't agree with the Federal Circuit's reasonable-apprehension-of-suit test,' but the Court didn't say what the new test should be," says Barbara Mullin, a Philadelphia-based patent attorney at Woodcock Washburn. "In SanDisk, the Federal Circuit said what the new test for declaratory judgment jurisdiction should be."

"The parties are in a much more adversarial relationship than if no lawsuit were filed," Carlin says. Still, he says this approach can be worthwhile if the patent owner thinks a potential licensee is likely to sue for declaratory judgment in an unfavorable forum.

According to some experts, the end result of SanDisk will be a big boost in patent litigation as both patentees and potential licensees rush to court. And this will make it harder to negotiate patent licenses.


Steven Seidenberg

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