In an interesting case of ancillary legal wrangling,
DuPont has filed a declaratory judgment (DJ) action asking an
Oregon federal court to declare that the company's press
release and customer letters about its patent infringement suit
against Heraeus Precious Metals (Heraeus) does not violate unfair competition
DJ complaint describes a dispute arising from a press release and
customer letters the company disseminated shortly after suing Heraeus for
infringement of U.S. Patent No. 8,158,504 ('504 Patent) in Portland,
Oregon in June 2012 (see the complaint here).
The '504 Patent is entitled "Conductive compositions and processes for use in
the manufacture of semiconductor devices - organic medium components."
DuPont also sued Heraeus back in September 2011 in
Delaware for infringement of U.S. Patent No. 7,767,254, entitled "Paste for solar
cell electrode and solar cell" (see the complaint here).
According to the DJ complaint, the press release at
issue, dated July 19, 2012, stated:
The company recently filed two lawsuits against PV
metallization paste supplier Heraeus and one against its customer Solar World,
for infringing on DuPont patents for DuPont Solamet PV metallization pastes.
The customer letters said that:
DuPont Microcircuit Materials has recently filed two
lawsuits in the U.S. against PV paste supplier Heraeus for infringing on its
patents for Solamet photovoltaic metallization pastes and one against its
customer SolarWorld for using "infringing" materials.
Both the press release and the letters editorialized as
Intellectual Property (IP) theft  is widespread and the
issue seems to be growing in the current climate of [this] industry. [IP
theft] has the potential to threaten the [PV] industry broadly at a critical
time in its development.
According to the DJ complaint, in the Oregon patent
infringement suit Heraeus filed a counterclaim against DuPont for unfair
competition, asserting that the statements in the press release and customer
letters were false and misleading.
The counterclaim was subsequently dismissed, but the
DJ complaint says that Heraeus's counsel recently told DuPont that Heraeus
intended to assert an unfair competition claim in the Delaware court.
This is not the first time ancillary litigation has
erupted over PR in connection with a green patent infringement suit.
Several years ago, Nichia sued its LED rival Seoul Semiconductor for false
advertising when Seoul disseminated press releases saying it had
"substantially prevailed" in its litigation with Nichia, when in fact, it was
found to have infringed four Nichia design patents.
View more from the Green Patent Blog.
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