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Judge Sleet grants Rule 12(b)(1) motion to dismiss declaratory judgment action following jurisdictional discovery.

After allowing additional discovery and further briefing, Judge Gregory M. Sleet recently granted a Rule 12(b)(1) motion to dismiss a declaratory judgment action seeking to invalidate the defendants’ patents.  Comba Telecom, Inc. v. Andrew LLC, et al., C.A. No. 12-311-GMS (D. Del. July 15, 2015).  The plaintiff argued that the defendants’ patents “present a barrier to [the plaintiff’s] entering the US market” and that the defendants “have taken steps to legally enforce U.S. patents in foreign litigation and by way of public and private threats.” The plaintiff highlighted to examples of such threats: (1) a 2011 press release stating that the defendants would defend their patents from infringement, including specific reference to infringement by the plaintiff; and (2) a letter to a third party manufacturer that, the plaintiff argued, was a “veiled threat” targeting the plaintiff.  The defendants argued that the press release referred to disputes in Brazil and China, not the United States, and denied that the letter to the third party manufacturer was intended as a threat to the plaintiff.  The Court found that the plaintiff’s arguments did not support declaratory judgment jurisdiction, explaining, “[i]mplied threats such as the type alleged by Comba cannot be considered a substantial step toward legal action for patent infringement.”  The Court added that, in any event, the plaintiff had not yet “taken meaningful steps to conduct patent-infringing activity” in the United States, further undercutting the plaintiff’s argument that an actual controversy existed to support declaratory judgment jurisdiction.

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