Niazi Licensing Corporation v. St. Jude Medical S.C., Inc.
- Elizabeth Cowan Wright
- 0:17-cv-05096
- U.S. District Court · District of Minnesota
- 4
In Niazi Licensing v. St. Jude, Judge Wright granted the joint motion and dismissed St. Jude’s patent-invalidity counterclaim without prejudice as moot.
Niazi Licensing Corporation and St. Jude Medical S.C., Inc.; the order dismissed St. Jude’s patent-invalidity counterclaim without prejudice as moot.
What happened
In Niazi Licensing Corporation v. St. Jude Medical S.C., Inc., the court had already ruled that St. Jude did not infringe the asserted patent claim. The only unresolved issue was St. Jude’s counterclaim arguing that the patent was invalid.
Both parties asked the court to dismiss that counterclaim without prejudice. They agreed that, after the non-infringement ruling, the counterclaim no longer presented a live dispute.
Judge Wilhelmina M. Wright granted the joint motion and dismissed St. Jude’s invalidity counterclaim without prejudice as moot. The order directed that judgment be entered.
The detailed version
- Niazi Licensing Corporation v. St. Jude Medical S.C., Inc. · No. 0:17-cv-05096
- Elizabeth Cowan Wright
- Dec. 16, 2021
Background
The court had previously granted St. Jude’s motion for summary judgment of non-infringement as to Claim 11 of Niazi Licensing Corporation’s United States Patent No. 6,638,268. Judgment was entered on March 24, 2021. St. Jude’s remaining invalidity counterclaim challenged the validity of that patent.
Niazi Licensing Corporation and St. Jude jointly moved to dismiss the invalidity counterclaim without prejudice. The court explained that, because it had found no infringement as to the sole remaining asserted patent claim, it had discretion to dismiss the invalidity counterclaim as moot rather than decide its validity issues. The court also noted that St. Jude could amend its answer to remove the counterclaim with Niazi Licensing Corporation’s consent, which had been provided.
Ruling
The court concluded that the invalidity counterclaim was moot because the parties no longer had a live controversy concerning it. Judge Wilhelmina M. Wright granted the parties’ joint motion to dismiss the counterclaim. The court ordered that St. Jude’s invalidity counterclaim be dismissed without prejudice as moot and directed that judgment be entered accordingly.
Read the full 4-page opinion on CourtListener, the free public archive maintained by the Free Law Project.