Technology Licensing Corp. v. Technicolor USA, Inc.

MEMORANDUM AND ORDER RE: MOTION TO DISMISS

Plaintiff Technology Licensing Corporation (“TLC”) brought this action against defendant Technicolor USA, Inc. (“Technicolor”), for patent infringement. Technicolor then brought several counterclaims. TLC now moves to dismiss Technicolor’s counterclaims pursuant to Federal Rule of Civil Procedure 12(b)(1) on the ground that the court does not have subject matter jurisdiction.

I. Factual and Procedural Background

TLC owns U.S. Patent Nos. Re. 40,411 (the “'411 patent”) and Re. 40,412 (the “'412 patent”), which are July 1, 2008, reissues of U.S. Patent Nos. 5,754,250 and 5,486,869, respectively. (Third Am. Compl. (“TAC”) ¶¶ 4, 6-8, Exs. A-D (Docket No. 317).) The '411 patent comprises “a method and apparatus for identifying and separating the synchronizing signal component of video like signals by identifying or detecting the arrangement or sequence of the known occurances [sic] of events or patterns of the sync” and the '412 patent “provides a synchronizing signal separation.” (Id. Ex. A at 1, Ex. C at 1.)

On March 28, 2011, TLC filed a Notice of Acceptance of Technicolor’s Rule 68 Offer of Judgment, (Docket No. 326), and the Clerk…