Inline Plastics Corp. v. EasyPak, LLC, C.A. No. 11-1147- TSH, 2014 WL 297224 (D. Mass. Jan. 24, 2014) (Hillman, D.J.) [Declaratory Judgment Counterclaims].

Plaintiff Inline Plastics Corp. (“Inline”) filed suit against EasyPak, LLC (“EasyPak”), alleging infringement of two patents. EasyPak answered the complaint and asserted declaratory judgment counterclaims of invalidity. After the Markman order issued, the parties agreed that, under the Court’s present claim constructions, EasyPak does not infringe either patent. Inline granted EasyPak, its customers, and distributors, a covenant not to sue with respect to U.S. Patent No. 7,073,680. As a result of that covenant, it asked the Court to dismiss EasyPak’s counterclaim with respect to that patent. It also requested that the Court immediately enter judgment of noninfringement in favor of EasyPak with respect to U.S. Patent No. 7,118,003. There, too, it asked the Court to dismiss EasyPak’s invalidity counterclaim so that it could immediately seek review of the Markman order at the Federal Circuit. In both instances, the Court agreed and dismissed EasyPak’s counterclaims.

With respect to the ‘003 patent, EasyPak argued that the Court should proceed on its invalidity counterclaim despite Inline’s request for judgment of non-infringement. The Court rejected this argument. It found that because the invalidity of the ‘003 patent was not “plainly evident,” it is best and most efficient to have the Federal Circuit hear Inline’s appeal of the claim construction order before questions of invalidity are reviewed.

The Court also dismissed EasyPak’s invalidity counterclaim concerning the ‘680 patent, finding that no case or controversy existed after the entry of the covenant not to sue. Judge Hillman distinguished the present facts from that in Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 556 F.3d 1294 (Fed. Cir. 2009). In particular, the Court noted that the covenant is so broad as to protect EasyPak from both past and future actions for any infringement of the ’680 patent. Accordingly, subject matter jurisdiction no longer exists for the declaratory judgment counterclaim.