In one corner there is Plano, Texas-based Catalyst Corporate. In the other there is Dallas-based IP Navigation, a firm that specializes in “patent monetization.” There also was a letter, sent by IP Nav to Catalyst. And then Catalyst responded with a suit filed in the US District Court in the Eastern District of Texas.
There also is a John Doe in this match up, and he may hold patents that may be involved in Catalyst’s conduct of business.
What Catalyst is requesting is a declaratory judgment by the court that it is not infringing on any of Doe’s patents.
As the Catalyst filing put matters, “The true name and capacity of Doe is not presently known to Catalyst. Doe is known to Catalyst only by the acts of Doe’s agent and cohort, IP Nav. IP Nav sent a letter to Catalyst purportedly on behalf of IP Nav’s ‘client,’ an unnamed patent holder asserting that the unnamed client possesses patents purportedly covering products or services made, used or sold by Catalyst. ... Discovery from IP Nav will reveal the true identity of Doe, and Catalyst intends to seek the court’s aid in obtaining such necessary and appropriate discovery as soon as permitted.”
Erich Spangenberg, chairman of IP Nav, took a different point of view in a Credit Union Times interview.
“The letter we sent requested they enter into discussions. We are asking for information. They might not be practicing the patent. We don’t know if they are.”
Rather than enter into that discussion, Catalyst filed its suit, requesting that the court rule it is not infringing on patents in the IP Nav portfolio.
Catalyst, when asked for an interview to elaborate, declined comment.
There is a precedent for its action. Last December, Renaissance Learning, a Wisconsin Rapids, Wis., education technology company, went to court, citing similar facts to those brought forward by Catalyst. The Wisconsin judge came down in favor of Renaissance Learning.
Although he came up short in that Wisconsin matter, Spangenberg, for his part, said of the Catalyst filing, “We will seek dismissal.”
Troy, Mich., attorney Robert Siminski, not a party to this action but an expert in patents, said that seeking a declaratory judgment is normal. “That is what a company does when it feels it is under threat of a lawsuit.” He elaborated that, in many districts, “judges are getting fed up with patent filings that are clogging the system.”
Chicago patent lawyer David Donoghue with Holland & Knight agreed that seeking a declaratory judgment is a normal response in such cases. “Plenty of defendants file them,” said Donoghue, who authors a retail patent litigation blog.