version(s) of the E-Z Dip cartons are potentially implicated by the Shlesinger letter. Somerville maintains that it was solely directed to Version 1, since that was the only version of which Somerville was aware at the time Shlesinger sent the letter. In addition, Somerville asserts that Versions 1 and 2 are significantly different, such that any fear of suit with respect to Version 1 could not automatically result in fear of suit with respect to Version 2. For its part, Field acknowledges that Version 2 was never "tested," so the letter's reference to a carton that was being "presently tested" clearly precludes reference to Version 2. Indeed, Field later admitted that it was aware that the letter was, in fact, directed solely toward Version 1.
However, Field asserts that Versions 1 and 2 are similar enough that the letter clearly could apply to both versions, and, indeed, to any E-Z Dip carton that resembled those manufactured by Somerville. In essence, Field argues that it had a reasonable apprehension that Somerville would claim that the entire E-Z Dip "program" infringed its patents, and it refers to Somerville's characterizations of the differences between the versions as "twiddledum and twiddledee" arguments.
However, like the Cheshire cat, Field's arguments, though superficially appealing, ultimately lack substance. Contrary to Field's assertions, the evidence adduced by the parties indicates that the differences
between the two versions are substantial, at least from an engineering standpoint. Perhaps the greatest support for this conclusion comes from Field's own design engineer, Donald Stonehouse. In his deposition, Stonehouse discussed the differences between the two versions, and concluded that at least one of the changes made was "significant."
For Field to now claim that these differences are "insignificant," in direct controversion of Stonehouse's deposition testimony, is at a minimum disingenuous. We reiterate that Field bears the burden of demonstrating an actual controversy, and conclude that the evidence simply does not support Field's assertions regarding the similarity, or lack thereof, between Versions 1 and 2. We are therefore unwilling to apply the transitive property and convert any "reasonable apprehension of suit" with respect to Version 1 to a "reasonable apprehension of suit" with respect to Version 2. As a result, we conclude that our consideration here is appropriately limited to Version 1.
At this point, we would typically consider whether the letter in fact created a reasonable apprehension of suit with respect to Version 1. We note initially that most cases in which courts find a reasonable apprehension demonstrate far more extensive and damaging activities by the defendant than present here.
The limited interaction between these parties thus strongly suggests against a finding of reasonable apprehension of suit. We need not actually decide this issue, however, because it is readily apparent that Field cannot satisfy the second element of the "actual controversy" test with respect to Version 1.
B. Production or Ability and Intent to Produce
While a declaratory judgment plaintiff need not have engaged in actual manufacture and sale of a potentially infringing product to obtain declaratory relief, it is well-established in the Seventh Circuit that, at a minimum, there must exist a "definite intention of the plaintiff to take immediate action with respect to the potentially infringing product . . . ." International Harvester, 623 F.2d at 1215 (quotations omitted).
In International Harvester, the plaintiff sought a declaration that its model CX-41 corn head did not infringe a patent held by defendant Deere. At the time the suit was filed, International Harvester had developed a model of the CX-41, and had conducted both laboratory and field tests. However, International Harvester had not begun to solicit orders for the CX-41, in large part because it anticipated further testing and refinement of the CX-41 which could have resulted in design changes to the product. In finding that the second prong of the actual controversy requirement had not been met,
the court stated:
Our concern is not that the CX-41 will never be produced, but rather that because of the relatively early stage of its development, the design which is before us now may not be the design which is ultimately produced and marketed. For a decision in a case such as this to be anything other than an advisory opinion, the plaintiff must establish that the product presented to the court is the same product which will be produced if a declaration of noninfringement is obtained.
International Harvester, 623 F.2d at 1216.
The concerns expressed by the Seventh Circuit are equally applicable here. Although Field strenuously denies that it has "abandoned" Version 1, it nowhere states that it actually intends to produce and market that version of its E-Z Dip carton. On the contrary, there exists every indication that Field has chosen to go forward solely with Version 2. The only "purchase" of Version 1 was paid for by Field itself, and was made for the purpose of testing and qualification runs. Indeed, the changes subsequently made were, according to Stonehouse, a product of Field's dissatisfaction with certain elements of Version 1.
Since those tests, the only carton for which orders have been solicited, and the only carton which has been displayed for potential customers, is Version 2.
The evidence clearly demonstrates that Version 1 was a predecessor of, rather than a companion to, Version 2. It is therefore disingenuous for Field to suggest that because it can produce Version 1, it has demonstrated an actual controversy. For Field to prevail, it must establish that it will produce Version 1, and this it has not done. Because Field has failed to carry its burden of demonstrating an actual controversy, this action is dismissed.
For the reasons set forth above, defendant Somerville Packaging Corporation's motion to dismiss is granted. It is so ordered.
MARVIN E. ASPEN
United States District Judge