In Draeger Medical Systems, Inc. v. My Health, Inc., C.A. No. 15-248-SLR (D. Del. Mar. 3, 2016), Judge Sue L. Robinson denied Defendant’s motion to dismiss for lack of subject matter jurisdiction, in a declaratory judgment action for non-infringement and invalidity. Defendant, through a third party, had contacted Plaintiff regarding alleged infringement of its patent, and in that communication had informed Plaintiff of Defendant’s efforts to enforce its patent through other litigations, included a claim chart detailing how Plaintiff infringed the Defendant’s patent, and reserved Defendant’s rights to sue and seek damages. Plaintiff had not responded to the letter before filing this action. Defendant argued that there was no subject matter jurisdiction because the foregoing was insufficient to establish an actual case or controversy.
The Court disagreed, holding that the foregoing facts were sufficient based on “the Federal Circuit’s seminal case on this issue [Sandisk, where the Federal Circuit found] jurisdiction where defendant provided a ‘thorough infringement analysis’ prepared by legal experts, stated that plaintiff’s conduct infringed its patents, and claimed that plaintiff would need to pay a royalty for its infringing product.” Id. at 5. The fact that Defendant had informed Plaintiff of prior enforcement of its IP rights also supported a finding of jurisdiction. It was not enough that Defendant’s letter had indicated it was interested in resolution “without litigation.” Id. at 5-6. And, here, “[u]nder the totality of these circumstances, it does not weigh against jurisdiction that [Plaintiff] did not engage in licensing negotiations before initiating a lawsuit or [Defendant] remains interested in a negotiated resolution.” Id. at 6.
Accordingly, the Court denied the motion to dismiss.