Chief Judge Gregory M. Sleet recently granted plaintiff’s motion for leave to file a first amended complaint, which seeks a “declaratory judgment that eight of . . . defendants’ patents are invalid.” Comba Telecom, Inc. v. Andrew L.L.C. et al., C.A. No. 12-311-GMS, at 1 (D. Del. Mar. 7, 2013). In its motion, plaintiff requested that it be granted leave to include in its amended complaint “additional facts to strength[en] its declaratory judgment jurisdiction claim, such as addressing the preparatory steps it has taken to introduce products in the United States and the defendants’ statements and suits against it in other jurisdictions.” Id. at 1-2. Finding that defendants would not be prejudiced by the amendments nor would the amendments be futile, Judge Sleet granted plaintiff’s motion for leave. Id. at 3.
First, Judge Sleet found that plaintiff’s proposed amendments would not prejudice defendants because the litigation is in its early stages, and defendants would therefore have an opportunity to file motions or to conduct discovery on the issues raised in the amended complaint. Id. at 2-3 n.5. Judge Sleet further noted that plaintiff’s proposed amendments “do not contradict its prior pleadings,” and that defendants may challenge plaintiff’s allegations. Id. at 3 n.5. Turning to futility, Judge Sleet noted that “futility of amendment occurs when the complaint, as amended, does not state a claim upon which relief can be granted, as judged by the Rule 12(b) standard.” Id. In the declaratory judgment context, as Judge Sleet explained, a plaintiff may “demonstrate satisfaction” of the “case or controversy” requirement by showing that “there has been meaningful preparatory conduct that could lead to potentially infringing activity,” and by showing that the “claim is real and has an element of immediacy.” Id. n.5. Judge Sleet found that the proposed amendments included allegations related to “preparatory conduct,” specifically, that plaintiff had “the capacity to produce inventory to sell in the United States,” and was actively “participating in trade shows and soliciting Request for Proposals.” Id. n.5. The proposed amendments also addressed the “real” nature of the claim, as they included the identification of “defendants’ suits against [plaintiff] in China and Brazil as well as the defendants’ June 16, 2011 press release stating that they will protect their patent rights.” Id. n.5. Judge Sleet concluded that “taking the factual allegations in the proposed amended complaint as true, [plaintiff’s] Amended Complaint is not decidedly futile.” Id. n.5.
In view of granting plaintiff’s motion, Judge Sleet denied defendants’ motion to dismiss for lack of jurisdiction as moot. Id. at 3. However, in a subsequent order, Judge Sleet found that “factual issues exist regarding the alleged controversy between the parties” and granted defendants’ motion to authorize jurisdictional discovery. Comba Telecom, Inc. v. Andrew L.L.C. et al., C.A. No. 12-311-GMS, at 1 nn.1-2 (D. Del. Mar. 11, 2013). Judge Sleet denied, however, the expansive scope of jurisdictional discovery defendants requested, which included “two depositions, fifteen interrogatories, and twenty-two requests for production.” Id. n.1. The permissible scope of jurisdictional discovery would be determined at the scheduling teleconference. Id.
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