Opinion
No. 04 C 0346.
November 17, 2004
MEMORANDUM OPINION AND ORDER
Plaintiff Wm. Wrigley Jr. Company ("Wrigley") is the dominant supplier of chewing gum products in the United States. Until recently, Wrigley's dominance of the chewing gum market was largely unchallenged. Wrigley is the owner of U.S. Patent No. 6,627,233 ("the '233 patent"), which issued in September 2003. The '233 patent is directed to chewing gums flavored with cooling agents. Defendant Cadbury Adams USA LLC ("Cadbury") has become, through a recent acquisition, the second largest manufacturer of chewing gum products in the United States. Both Wrigley and Cadbury manufacture and sell various chewing gum products containing cooling agents. On January 20, 2004, Wrigley sued Cadbury for infringement of a single claim, Claim 34, of the '233 patent. Claim 34 is directed to what Wrigley considers a novel chewing gum composition containing WS-23 and menthol. On June 14, 2004, Cadbury filed a second amended counterclaim for declaratory judgment of invalidity and noninfringement and asserted an affirmative defense of invalidity for all claims of the '233 patent.
Wrigley now moves to dismiss all of Cadbury's counterclaims and affirmative defenses that do not relate directly to Claim 34 for lack of subject matter jurisdiction. A party seeking declaratory judgment has the burden of establishing the existence of a case or controversy. Vardon Golf Co., Inc. v. Allied Golf Corp., No. 94 C 1332, 1995 U.S. Dist. LEXIS 16380 (N.D. Ill. Nov. 6, 1995). The Federal Circuit has established the following two-part test to determine whether a case or controversy exists over a declaratory judgment for patent invalidity and noninfringement: there must be (1) an explicit threat or other action by the patentee, which creates a reasonable apprehension that the declaratory plaintiff will face an infringement suit and (2) current activity that could constitute infringement or steps taken with the intent to conduct such activity. BP Chems. v. Union Carbide Corp., 4 F.3d 975, 978 (Fed. Cir. 1993). Since there is no dispute that Cadbury could, through the manufacture and sale of chewing gum products containing cooling agents, infringe the '233 patent, the parties' briefing has been almost exclusively directed at whether Cadbury has sufficiently established the existence of a reasonable apprehension of future litigation concerning the other claims of the '233 patent. Determining whether a case or controversy exists must be done on a claim-by-claim basis. Jervis B. Webb Co. v. S. Sys. Inc., 742 F.2d 1388, 1399 (Fed. Cir. 1984).
As the patentee, Wrigley has the right to determine what claims to litigate. Id. In this case, Wrigley limited its claims of infringement to Claim 34 of the '233 patent and argues that no reasonable apprehension of further claims of infringement exists. Cadbury, on the other hand, argues that Wrigley's claims of infringement concerning Claim 34 of the '233 patent creates an objective apprehension of further patent claims. Firstly, the cases cited by Cadbury to support this proposition are not applicable here because they deal almost exclusively with situations where the patentee originally asserted most, if not all, of the claims in the patent at issue. See Honeywell Int'l, Inc. v. Universal Avionics Sys. Corp., 288 F. Supp.2d 638, 645 (D. Del. 2003) (Honeywell asserted the whole patent and withdrew certain claims late in the litigation); Biacore, v. Thermo Bioanalysis Corp., 79 F. Supp. 2d 422 (D. Del. 1999) (Biacore asserted the whole patent and then limited to certain claims in the pretrial order); Kawneer Co. v. Pittsburgh Plate Glass Co., 103 F. Supp. 671 (D. Mich 1952) (Kawneer asserted the whole patent and then narrowed its suit to certain claims); May v. Carriage Inc., 688 F. Supp. 408, 410 (N.D. Ind. 1988) (patentee filed suit asserting the whole patent and later narrowed to certain reissue claims).
Although the one remaining case cited by Cadbury, Flakice Corp. v. Liquid Freeze Corp., 131 F. Supp. 599, 600 (D. Cal. 1955), did involve an assertion of less than all of the patent's claims, I agree with Wrigley that it is distinguishable on its facts. In Flakice, the court noted that the controversy revolved around the manufacture and sale of an ice machine as a whole, not just the part of the machine covered by a single claim in the plaintiff's patent. Id. Here, Wrigley is not disputing Cadbury's right to manufacture and sell gum in general but, instead, challenges only the manufacture and sale of gum that contains cooling agents purportedly falling within the scope of Claim 34 of the '233 patent. I do not think the claims here establish the type of over-arching controversy that was at the heart of the court's grant of declaratory judgment jurisdiction in Flakice.
Secondly, the current state of the law, as laid down by the Federal Circuit, weighs against the automatic extension of declaratory judgment jurisdiction to all claims in a patent when the original filing is limited in its scope. In Jervis, the Federal Circuit explained that where a complaint asserts infringement of less than all the claims of a patent, jurisdiction over the remaining claims will exist only where "the declaratory judgment plaintiff is able to meet both of the cases and controversy requirements for all of the claims." Jervis, 742 F.2d 1388 at 1399. In other words, the Jervis court refused to assume that a case or controversy existed for claims that were not part of the original suit. Instead, it required the declaratory judgment plaintiff to independently prove the existence of a case or controversy for each claim. Underlying this reluctance to extend a reasonable apprehension beyond the claims asserted in the original suit is likely to be the issue of collateral estoppel, as the adjudication of a single claim brought by the patentee may prevent that patentee from later charging the infringer with the non-asserted claims. Id. Accordingly, I find that Cadbury must do more than point to the current suit to establish the existence of a case or controversy for the entire '233 patent.
In Carroll Touch, Inc. v. Electro Mechanical Sys., 15 F.3d 1573, 1581 n. 8 (Fed. Cir. 1993), the Federal Circuit applied its decision in Jervis and overturned the district court's grant of jurisdiction because it found there was an absence of a live case or controversy for claims that were not asserted in the original action.
Since I find that the establishment of a case or controversy is not automatic, I also find that there is no need for Wrigley to make a formal abandonment of any future claims before declaratory judgment jurisdiction is established.
Cadbury also argues that even if the originally filed suit is not enough to create declaratory judgment jurisdiction, the overall circumstances surrounding this litigation are, in fact, sufficient to create a case or controversy for the non-asserted claims. Specifically, Cadbury argues that the competitive relationship of the parties and the existence of other pending and prior litigation created a reasonable apprehension of future litigation concerning the remaining claims of the '233 patent. However, being competitors and engaging in prior litigation, without more, does not establish the existence of a case or controversy. See Int'l Harvester Co. v. Deere Co., 623 F.2d 1207, 1212 (7th Cir. 1980) (noting that the previous suit cannot be viewed as anything more than a general indication that the plaintiff considered litigation to be a viable alternative once it had determined that a competitor was producing a potentially infringing product); see also Solo Cup Co. v. Fort James Corp., No. 99 C 4724, 1999 U.S. Dist. LEXIS 18586 (N.D. Ill. Nov. 29, 1999) (previous suits against other competitors are not evidence of an intent to sue sufficient to confer declaratory judgment jurisdiction).
In several cases cited by Cadbury, there was, in addition to a competitive relationship or prior litigation, an explicit or an implied threat of infringement of the claims. See Owens-Illinois Inc. v. B H Mfg., Inc., 13 U.S.P.Q.2d 2061, 2063 (E.D. Cal. Nov. 20, 1989); Research Inst. for Med. Chem., Inc. v. Wis. Alumni Research Found., Inc., 647 F. Supp. 761, 772-3 (W.D. Wis. 1986); Nalco Allied Chemical Co. v. Allied Colloids, Ltd., 222 U.S.P.Q. (BNA) 969 (D.D.C. 1983); Akzona Inc. v. E.I. Du Pont de Nemours Co., 662 F. Supp. 603, 611 (D. Del. 1987); Electro Med. Sys. S.A. v. Cooper Lasersonics, Inc., 617 F. Supp. 1036, 1038 (N.D. Ill. 1985); Cryomedics, Inc. v. Spembly, Ltd., 397 F. Supp 287, 292 (D. Conn. 1975). Since Cadbury has not alleged a direct or indirect threat of infringement on claims other than Claim 34, such as was present in the above listed cases, I find that this case lacks the "something more" required to create a case or controversy. This is especially true because Wrigley has stated to this court that it does not have any intention of pursuing additional claims of infringement.
In the remaining cases cited by Cadbury, there was litigation or conduct that was related to the claims or subject matter at issue. See Premo Pharm. Labs. v. Pfizer, Inc., No. 80 C 4850, 1981 U.S. Dist. LEXIS 17358 at *5 (S.D.N.Y. Jan. 23, 1981) (the court found reasonable apprehension based on litigation related to the current dispute); Goodyear Tire Rubber Co. v. Releasomers, Inc., 824 F.2d 953 (Fed. Cir. 1987) (state court action involved the relevant technology embodied in the patents); Muller v. Olin Mathieson Chem. Corp., 404 F.2d 501, 504 (2d Cir. 1968) (the court found that interference proceedings related to the technology at issue, statements by the defendant to the plaintiff's licensees, and other facts collectively led to apprehension of a suit). In this case, the prior litigation between Cadbury and Wrigley is, at best, only loosely related. It has consisted of an unrelated patent suit in Australia, a suit alleging theft of trade secrets, and an unrelated patent suit against a third party. None of these suits is sufficiently related to the current suit to create a reasonable apprehension of litigation on the remaining claims of the '233 patent. Therefore, I find that Cadbury has failed to establish the existence of a case or controversy for claims other than Claim 34.
For the reasons stated herein, Wrigley's Motion to Dismiss for Lack of Subject Matter Jurisdiction is GRANTED.