Opinion
ORDER DISMISSING COUNTERCLAIM TO THE EXTENT IT SEEKS A DECLARATION THAT THE PATENT-IN-SUIT IS INVALID, VOID AND/OR UNENFORCEABLE
PATRICIA TRUMBULL, Magistrate Judge.
On October 12, 2004, the court granted the motion for summary judgment of non-infringement filed by Defendants and Crounter-Claimants ("Steeler M s"). Plaintiff ("Sliptrack") has filed a proposed form of judgment. However, before the court may enter judgment in this case, it must dispose of Steeler M s' counterclaim for declaratory relief based on its contention that the patent-in-suit is invalid, void and/or unenforceable. See Pandrol USA, LP v. Airboss Ry. Prods., Inc. , 320 F.3d 1354, 1362 (Fed.Cir. 2003) (a "judgment that does not dispose of pending counterclaims is not a final judgment"). Based on the file herein,
The holding of this court is limited to the facts and the particular circumstances underlying the present motion.
IT IS HEREBY ORDERED that, to the extent Defendants' counterclaims seek a declaration that the patent-in-suit is invalid, void and/or unenforceable, the counterclaim is MOOT, and is thus DISMISSED without prejudice.
Although the Supreme Court has expressed a preference that trial courts address any questions regarding the validity of patent along with the issue of non-infringement ( see Sinclair & Carroll Co. v. Interchemical Corp. , 325 U.S. 327, 330 (1945)), the Court has also held that once a trial court rules there has been no infringement it may not adjudicate the validity issue ( see Deposit Guaranty National Bank v. Roper , 445 U.S. 326, 335 n.7 (1980), citing Electrical Fittings Corp. v. Thomas & Betts Co. , 307 U.S. 241 (1939)).
The Federal Circuit (and the Court of Claims before it) has also repeatedly held that a trial court may dismiss invalidity claims as moot once it finds there is no infringement. See, e.g., Nystrom v. TREX Co. , 339 F.3d 1347, 1351 (Fed.Cir. 2003) (court faced with an invalidity counterclaim challenging a patent that it concludes was not infringed may either hear the claim or dismiss it without prejudice); and Phonometrics, Inc. v. Northern Telecom, Inc. , 133 F.3d 1459, 1468 (Fed.Cir. 1998) (district court has discretion to dismiss invalidity counterclaim as moot where it finds no infringement); see also Leesona Corp. v. United States, 208 Ct.Cl. 871, 530 F.2d 896, 906 n. 9 adopted as opinion of Court of Claims at 530 F.2d 896 (1976) ("While the better practice is to treat both the validity and infringement issues... it is not always necessary to do so. Where, as here, non-infringement is clear and invalidity is not plainly evident it is appropriate to treat only the infringement issue" (citations omitted)).