In 84 Lumber Co. v. MRK Technologies, Ltd. (W.D.Pa. 2001) 145 F. Supp. 2d 675, the plaintiff bought laser-scanning equipment from the defendant manufacturers and a distributor for use in its bar code scanning system.
The plaintiff was later sued for patent infringement by a third party and settled that case.
Addressing its jurisdiction to consider the plaintiff's suit for breach of the implied warranty under the same Pennsylvania statute, the federal district court ruled that the claim belonged in federal court. The court noted the "rightful claim" language of the statute and rejected the plaintiff's suggestion that the phrase meant "a reasonable belief that the alleged infringement will be upheld." (Id. at p. 679.)
The court agreed with the statement in Cover that "a rightful claim does not require a finding of absolute patent liability." (Id. at p. 680.)
It declined to define the phrase, but it nonetheless held that the plaintiff's claims could not be addressed without some evaluation of the merit of the third party's infringement claim. The plaintiff's "subjective belief and representation that it thought the patent holder was likely to win" was insufficient to impose liability on the defendants. (Ibid.)
The 84 Lumber court did not address the effect of the settlement of the third party action.