DJ Doesn’t Stick Without Patentee Threats

Posted on | July 7, 2008 | 3 Comments

2008-1444 PanaVise v. National Products
CD/CA 8-cv-1300
Judge Audrey Collins

DJ plaintiff PanaVise Products appeals from the order of Judge Audrey Collins granting National’s 12(b)(1) motion for lack of an actual case or controversy.  The case involves National’s 6,666,420 patent and the parties’ products: competing suction cup mounting systems such as those used in automobiles for mobile phone holder, GPS units and the like. 

The court accepted National’s argument that its pre-suit activity did not rise to the level to create a declaratory judgment controversy under MedImmune and its progeny.

PanaVise, fearing that its new Model 811 suction cup would infringe the ‘420 patent, filed a declaratory judgment action for noninfringement and invalidity.  Although National had made no direct statements or threats against it, PanaVise argued that there was an actual controversy based on National’s (1) prior statements that the ‘420 is essential to all turn dial suction cup mounts for vehicles, and (2) history of vigorous enforcement of the ‘420 (at least 6 cases and 12 entities).

Uncontested, however, was the fact that National had not made any specific statements about the 811 model–indeed, it had taken no action whatsoever with respect to the 811 and did not even know about the 811 model until the DJ action was filed.  The court wrote:

Plaintiff proffers no facts or evidence disputing Defendant’s averment that
there have been no pre-suit communications between the parties, that Defendant did not know of Plaintiff’s 811 series device before this suit was filed, and still has never even seen Plaintiff’s device, let alone examine it to determine whether it potentially infringes Defendant’s ‘420 patent.

After reviewing MedImmune and Sandisk, the court found that National’s lack of action specifically directed to the 811 model dispositive and the other activity insufficient to support jurisdiction:

Having reviewed the case law, it is clear that no case or controversy can exist in a patent action for declaratory relief in the absence of an act by the defendant. For example, in Sandisk, the court stated that “declaratory judgment jurisdiction generally will not arise merely on the basis that a party learns of the existence of a patent owned by another or even perceives such a patent to pose a risk of infringement, without some affirmative act by the patentee.” Sandisk, 480 F.3d at 1380-1381 (emphasis added). That is exactly the situation here: Plaintiff merely learned that Defendant owns a patent and is concerned that its own device may infringe Defendant’s patent, but Defendant has taken no affirmative act in relation to Plaintiff’s device; indeed, Defendant did not know of Plaintiff’s device and has yet to see it. Sandisk further states that “Article III jurisdiction may be met where the patentee takes a position that puts the declaratory judgment plaintiff in a position of either pursuing arguably illegal behavior or abandoning that which he claims a right to do,” id. (emphasis added), thereby reinforcing the notion that no case or controversy can exist where the defendant has taken no position. It is undisputed that Defendant has taken no position with respect to Plaintiff and/or the 811 series device.

That Defendant has sued other unrelated persons for infringement of the ‘420 patent does not constitute action toward this plaintiff and the 811 series device, and therefore does not contribute to the existence of a case or controversy between these parties Without Defendant even knowing about Plaintiff’s device, it is not apparent that the parties have “adverse legal interest[s]” and that the dispute is “definite and concrete.” Rather, Plaintiff is seeking what MedImmune forbids: “an opinion advising what the law would be upon a hypothetical state of facts.” MedImmune, 127 S.Ct. at 77. Indeed, the cases Plaintiff cites in support of its position all involve a defendant communicating with the plaintiff about plaintiff’s device. Plaintiff has directed the Court to no case in which a case or controversy was found in the absence of any act by the defendant directed toward the plaintiff and/or plaintiff’s device.

The absence of any communication or conduct by Defendant towards Plaintiff about the 811 series device is dispositive of the jurisdictional question: there is no actual case or controversy upon which the Court’s subject matter jurisdiction may rest.

Notes:  The allegations are similar to those in 2008-1373 Impax Labs v. Medicis Pharmaceutical, where a DJ was attempted based on the patentee’s history of public threats and litigation, although not specifically or explicitly directed at the DJ plaintiff.  At least to me, the case for jurisdiction seems stronger in Impax where the history of threats more readily implicate the DJ plaintiff and its product.

More reading:

Order

National’s Motion

PanaVise Opposition

Counsel:

PanaVise: The Walker Law Firm, Newport Beach (Joseph Walker, Allan Grant ,Jason Matthew Lamb).

National Products: Darby & Darby, Seattle (David K. Tellekson, Mark P. Walters) and Pfeiffer, Thigpen & FitzGibbon, Santa Monica (Thomas N. FitzGibbon)

Comments