Comcast Cable Communications Corp. v. Finisar Corp. (PDF) 2008 U.S. Dist. LEXIS 3661 Decided Jan. 17, 2008 Judge Alsup Comcast brought this declaratory judgment action after receiving three letters from Finisar. The first letter was “fairly innocuous” because it only indicated a willingness to negotiate a license for the ‘505 patent. The last letter included an “ominous statement” concerning a huge verdict Finisar recently won by asserting the ‘505 patent in a different action. The ‘505 patent issued in 1995. The lawsuit was filed in 2006. Comcast asserted the defense of laches. A presumption of laches kicks in six years after the patentee should have known about the infringement. The problem for Finisar is that it read the ‘505 patent so broad as to say that Comcast could not have offered any profitable form of digital television without infringing the ‘505 patent. Thus, unintentionally by its own admission, Finisar should have known of Comcast’s alleged infringement more than six years after this action was filed.

If Finisar’s own expert could not come up with a non-infringing alternative, at the minimum Finisar should have been aware of circumstances that might lead it to believe that Comcast’s system was infringing.

A presumption of laches is thus appropriate. Finisar offered several arguments in an attempt to rebut the presumption. Judge Alsup found none of them persuasive. The expansive reading of the patent given by Finisar’s damages expert again came back to bite them. Finisar argues “it was under no duty to investigate Comcast’s system because infringement was not apparent from the product itself.” Judge Alsup replied:

We must remember that Finisar’s own expansive view of the claims in suit necessarily meant that Comcast infringed simply based on the basics of the Comcast system as publicly known.

Finisar is barred from seeking damages that accrued prior to the filing date of its infringement claims. This is a great example of litigators having to think through all aspects of their case from the start.