In the Western District of Washington, the judge entered judgment as a matter of law of non-infringement for the defendant’s counterclaim of non-infringement for 30 claims from five patents that the plaintiff dropped before the jury trial. The judge found that although the plaintiff dropped the patents and claims, the defendant did not amend its counterclaim of non-infringement, entitling it to judgment as a matter of law (JMOL) of non-infringement.

The plaintiff, Eagle Harbor Holdings, originally sued Ford Motor Company for patent infringement of 117 claims of 11 different patents. After two years of litigation, the court ordered Eagle Harbor to reduce the number of asserted claims to 35. In the joint pre-trial statement, Eagle Harbor further reduced the asserted claims to 26 claims over the 9 patents. Finally, on the weekend before trial, Eagle Harbor informed Ford that it would only present five claims for four patents to the jury—dropping the other five patents.

In entering the JMOL, the court noted that other district courts are split on how to handle the issue of counterclaims of non-infringement for patents and claims that are dropped over the course of litigation (citing an E.D. Tex. and a Delaware decision). Ultimately, the court found that Ford was entitled to JMOL because, although Eagle Harbor dropped most of the claims before trial, Ford did not drop its counterclaims. The court found that because it had ordered Eagle Harbor to reduce its claims to 35, “it would be fundamentally unfair and plain error” to enter judgment against all of the 117 originally asserted claims, but instead would limit JMOL to the reduced 35 claims. 

The court’s decision will likely attach res judicata to all claims of the five patents dropped on the eve of trial, even though they were not presented to the jury—meaning the plaintiff will not be able to assert those patents in a separate lawsuit against Ford. Eagle Harbor may also be barred from asserting those five patents against Ford’s customers and suppliers. Thus, the court’s decision warrants special attention to both plaintiffs and defendants as cases are narrowed throughout the course of litigation. Both parties should be aware whether dropping claims will have preclusive effects, especially if related pleadings are not amended.

Eagle Harbor Holdings, LLC, v Ford Motor Company, C.A. No. 3:11-cv-5503 (W.D. Wash.).