Opinion
CIVIL NO. 1:03CV00080
September 30, 2003
MEMORANDUM OPINION
This is an action brought by Vesture Corporation ("Vesture") against Thermal Solutions, Inc. ("TSI") and Cooktek, Inc. (collectively "Defendants") for a declaratory judgment of non-infringement and invalidity of U.S. Patent No. 6,504,135 ("135 patent"). The case is now before the court on Defendants' motion to dismiss for lack of subject matter jurisdiction under Federal Rule of Civil Procedure 12(b)(1).
BACKGROUND
On November 2, 2001, Vesture brought a declaratory judgment action of non-infringement in this court regarding three of Defendants' patents: U.S. Patent Nos. 6,232,585, 6,444,961, and 6,274,856. During discovery in that case, TSI informed Vesture and this court that it also intended to sue Vesture for infringing the `135 patent. (See Berns Decl. in Supp. Pl.'s Mem. in Resp. to Defs.' Mot. to Dismiss, Exs. 1 and 4.) Accordingly, Vesture brought a declaratory action of non-infringement against Defendants over the `135 patent on January 23, 2003.
DISCUSSION
Defendants claim that their statement of non-infringement toward Vesture concerning the `135 patent contained in their motion to dismiss has divested this court of subject matter jurisdiction in this case under Federal Rule of Civil Procedure 12(b)(1). In their motion, filed February 28, 2003, Defendants made the following statement: "By this filing, TSI unconditionally agrees not to sue Vesture for infringement as to any claim of the `135 patent based upon the products previously or currently manufactured and sold by Vesture." (Defs.' Mot. to Dismiss Pursuant to FRCP 12(b)(1) and Mem. in Supp. at 1.) In light of this statement of non-infringement, Defendants claim that Vesture can have no reasonable apprehension of being sued under the `135 patent. Thus, Defendants claim that no case or controversy regarding the `135 patent exists and that this court is divested of subject matter jurisdiction under Super Sack Mfg. Corp. v. Chase Packaging Corp., 57 F.3d 1054 (Fed. Cir. 1995). Vesture distinguishes Super Sack and claims that concerns with judicial economy, public policy, and fairness require this court to exercise its discretion and maintain jurisdiction over this claim.
Under Article III of the United States Constitution and by the terms of the Declaratory Judgments Act ("DJA"), 28 U.S.C. § 2201, the existence of an actual controversy is a predicate to federal subject matter jurisdiction over a claim. Super Sack, 57 F.3d at 1058. Furthermore, the actual controversy must continue at all times throughout the lawsuit, not only at the time the action was commenced. See Presier v. Newkirk, 422 U.S. 395, 401 (1975). "The long established rule of law is that a declaratory judgment plaintiff must establish an actual controversy on the `totality of the circumstances.'" Spectronics Corp. v. H.B. Fuller Co., Inc., 940 F.2d 631, 634 (Fed. Cir. 1991) (quotingMaryland Cas. Co. v. Pacific Coal Oil Co., 312 U.S. 270, 272 (1941)). There are two requirements for jurisdiction to exist under the DJA, 28 U.S.C. § 2201:
There must be both (1) an explicit threat or other action by the patentee, which creates a reasonable apprehension on the part of the declaratory plaintiff that it will face an infringement suit, and (2) present activity which could constitute infringement or concrete steps taken with the intent to conduct such activity.BP Chems., Ltd, v. Union Carbide Corp., 4 F.3d 975, 978 (Fed. Cir. 1993).
In Spectronics, the Federal Circuit held that a "statement of non liability," which was filed with the court, operated to divest the district court of jurisdiction. 940 F.2d at 636. In Super Sack, the Federal Circuit upheld the district court's dismissal of the plaintiff's declaratory judgment claim of non-infringement and invalidity for lack of a reasonable apprehension of a future infringement suit after the defendant, Super Sack, withdrew its infringement allegations and promised not to sue the plaintiff for infringement as to any claim of the patents-in-suit. 57 F.3d at 1058. On appeal, the plaintiff contended that an actual controversy still existed because Super Sack's promise was not contained in a covenant filed with the court and did not cover any products made or sold by the plaintiff in the future. The Federal Circuit first held that it was not necessary to file a Spectronics-type covenant with the court. Id. at 1059. Second, the court held that Super Sack's promise not to sue on the patent for any past or present conduct was more than sufficient to defeat any reasonable apprehension on behalf of the plaintiff of a future infringement suit due to its past or present conduct. Id. at 1059-60.
Like Super Sack, Defendants in this case have unconditionally promised not to sue for infringement on the `135 patent for any of Vesture's past or present products. Vesture argues, however, that the facts in Super Sack are significantly distinguishable from the facts of this case. Vesture notes that the patent in Super Sack had already been found to be valid and that the dismissal of that claim rid the court of the entire case. In this case, Vesture contends that the validity of the `135 patent has yet to be determined and that dismissal of this case would not resolve completely the parties' dispute. Thus, dismissing all claims as to the `135 patent would not preserve judicial economy. Furthermore, Vesture alleges that the public interest is best served by addressing the validity of the `135 patent and Defendants' inequitable conduct, which Vesture claims has far-reaching social and economic consequences. Lastly, Vesture claims that dismissal would be a waste of resources due to the thousands of documents produced, numerous experts retained and depositions taken, and substantial expense incurred by Vesture in reference to this and other patent claims against Defendant. Accordingly, Vesture claims it would suffer significant prejudice if the court does not retain jurisdiction.
Although the facts may be somewhat different, the court finds Super Sack controlling. As a result of Defendants' unequivocal statement of non-infringement to Vesture, there is no actual case or controversy regarding the `135 patent. Though Vesture may still question the validity of the `135 patent and Defendants' alleged inequitable conduct, this is not enough to create a justiciable case or controversy. See id. at 1060. Vesture's claims about the motives behind Defendants' withdrawal and about the possibility that Defendants may bring claims against others under the `135 patent in the future are simply too speculative to create an actual case or controversy. "The residual possibility of a future infringement suit based on [a defendant's] future acts is simply too speculative a basis for jurisdiction over [a claim for declaratory judgment]." Super Sack, 57 F.3d at 1060. Thus, the court has no subject matter jurisdiction to render judgment regarding the `135 patent and must dismiss all claims accordingly.
CONCLUSION
For the foregoing reasons, the court will grant Defendants' motion to dismiss all claims concerning the `135 patent for lack of subject matter jurisdiction.
An order in accordance with this memorandum opinion shall be entered contemporaneously herewith.