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 laws.
The DuPont 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.”
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 follows:
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.