In a recent opinion, Chief Judge Simandle of the District of New Jersey, sitting by designation pursuant to 28 U.S.C. § 292(b), held in connection with a motion to dismiss a declaratory judgment action for lack of subject matter jurisdiction that discovery requests in a case between the parties in another forum created an actual controversy. W.L. Gore & Assocs., Inc. v. AGA Medical Corp., C.A. No. 11-539 (JBS-KMW) (D. Del. Mar. 13, 2012). AGA filed suit against Gore in the District of Minnesota alleging that Gore’s occluder device for treating heart defects infringed the ‘738 patent. In that action, AGA sought discovery relating to a new Gore occluder device that was not accused in the Minnesota action. Id. at 5. Gore responded by filing a declaratory judgment action in the District of Delaware seeking a declaration that its new occluder device did not infringe the ‘738 patent, or the related ‘552 patent. Id. at 6. The Court found, with respect to the ‘738 patent, that “a substantial controversy existed at the time the action was commenced” because AGA served a discovery request in the Minnesota action relating to Gore’s new device and expressly told the Minnesota court that the discovery was justified because AGA might need to amend its complaint to include a claim based on the new device. Id. at 16. However, the Court held it lacked subject matter jurisdiction with respect to the ‘552 patent because it was not at issue in the Minnesota action and was not the subject of AGA’s discovery requests there. Id. at 15-16. Finally, the Court found it could not exercise personal jurisdiction over AGA because its Delaware sales amounted to less than 0.5% of its total sales, and it otherwise lacked continuous contacts with Delaware. Id. at 22. The Court rejected Gore’s argument that AGA was subject to specific personal jurisdiction in Delaware because it filed suit against Gore, a Delaware corporation, in Minnesota. The Court distinguished the situation before it from others where, for example, the patentee sends cease and desist letters into the forum state satisfying the forum’s long-arm statute. Here, in contrast, AGA did nothing to enforce its patent against Gore “in Delaware.” Id. at 24. As an alternative to dismissal under Rule 12(b)(2), the Court transferred the case to the District of Minnesota, AGA’s home state where the parties were litigating over the same patent. Id. at 25.
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