Odetics, Inc. v. Storage Technology Corp.’s Empirical Analysis

Citation profile

1 district ·

Most-quoted passages

The sentences later courts lift from this opinion, ranked by how many decisions quote each — the parts of the opinion doing the work. These counts are smaller than the citation total above because most of the 13 citing decisions cite the case generally; a passage count includes only decisions quoting that exact language verbatim.

1. “If a patentee knows of the existence of a product or device that (i) embodies technology similar to that for which he holds a patent and (ii) uses that similar technology to accomplish a similar objective, he has a duty to examine the product or device more closely to ascertain whether it infringes his patent. If he shirks this duty, he does so on peril of triggering the laches period and perhaps ultimately losing his right to recover damages for the infringement.”

   2 later decisions quote this exact passage · from the majority
   e.g. Crown Packaging Technology, Inc. v. Rexam Beverage Can Co. · 915 F. Supp. 2d 736 - I/P Engine, Inc. v. AOL Inc.

2. “This argument ignores the indemnity arrangements Storagetek has with its customers, and the importance of this fact to the equitable purposes of laches. If the benefit of laches is not extended to Storagetek’s customers, Odetics would be able to recover indirectly from Storagetek for infringement for which it is barred by laches from recovering from Storagetek directly. More specifically, if the customer defendants cannot rely on laches, Odetics can recover infringement damages from them that they in turn can recover from Storagetek on the basis of the indemnity arrangements. This inequitable result effectively circumvents the laches ruling and thus defeats the doctrine’s equitable purposes. If Odetics’ delay warrants barring recovery from Storagetek, then because of the indemnity arrangements, Odetics should be barred from recovering the same damages from Storagetek’s customers. Accordingly, the customer defendants are entitled to benefit from Storagetek’s laches defense, and Odetics may recover no damages for the use of allegedly infringing ATLs the customer defendants purchased from Storagetek prior to the institution of this suit on June 29, 1995. Case law supports this result. See, e.g., Van Alen v. Aluminum Co. of America, 43 F.Supp. 833, 838 (S.D.N.Y.1942) (“As far as [the infringer’s customer] is concerned, since it is but a customer of defendant, it is covered by the protection which laches affords the latter.”); Boyle Leather Goods Co. v. Feldman, 30 F.Supp. 914, 91”

   1 later decision quote this exact passage · from the majority
   e.g. 915 F. Supp. 2d 736 - I/P Engine, Inc. v. AOL Inc.

3. “Thus, an ongoing litigation involving the patent at issue can excuse a delay in filing an infringement action against a putative infringer. In such cases, however, the patentee must give notice to the accused infringer, warning him that he might be subject to suit in the future, after resolution of the other litigation. Indeed, some form of notice to a putative infringer — some signal that the patentee considers his rights to be infringed and intends to respond to the infringement — is typically, though not invariably, required in connection with excusing a delay in initiating an infringement suit. For example, a patentee who gives notice of infringement to a suspected infringer may then delay suit until the extent of the infringement makes litigation financially feasible. A patentee may also excusably delay the onset of infringement litigation to negotiate with the accused infringer. Notice to an alleged infringer is the key to a finding of excusable delay, for notice allows the accused infringer to take steps to protect himself from liability-to change his product or his activities, for instance, or to institute a declaratory judgment suit himself against the patentee.”

   1 later decision quote this exact passage · from the majority
   e.g. 915 F. Supp. 2d 736 - I/P Engine, Inc. v. AOL Inc.