Reasonable Apprehension of Suit for DJ Action Existed Where Patentee Had Sued Before on Related Patents

Case: Plumtree Software, Inc. v. Datamize, LLC, No. 06-1017 (Fed. Cir. 12/18/06)


The One Sentence Summary: Declaratory judgment jurisdiction was proper, but a contract for providing a software system did not establish the presence of an on-sale bar where the contract did not clearly require use of the patented method.


What They Were Fighting About: This declaratory judgment action involved patents for methods of combining computer applications under a common interface. The district court held that it had jurisdiction, and granted summary judgment on the on-sale bar due to the sale of a ski kiosk using the software.

Federal Circuit Holdings:

• Declaratory judgment jurisdiction was proper. The plaintiff had a reasonable apprehension of being sued for patent infringement where it had already been sued for infringement of one of three related patents, and the patentee had shown a willingness to protect its technology.
• Issues of fact prevented summary judgment on the on-sale bar defense of 35 U.S.C. § 102(b) under the test in Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998).
• The panel first considered whether there was a commercial offer to perform the patented method before the critical date. Here, questions of fact existed because the contract was unclear as to whether it bound patentee to perform the contract using the patented software method.
• Questions of fact existed as to whether all of the steps of the patented method were used for a commercial purpose before the critical date.