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January 19, 1994

FIELD CONTAINER CO., L. P., Plaintiff,

The opinion of the court was delivered by: MARVIN E. ASPEN

 MARVIN E. ASPEN, District Judge:

 Plaintiff Field Container Co., L.P. brings this declaratory judgment action seeking a declaration of invalidity, unenforceability, and non-infringement as to U.S. Patent Nos. 4,756,470; 4,832,432; and 4,757,902. Presently before this court is defendant Somerville Packaging Corporation's motion to dismiss. For the reasons set forth below, Somerville's motion is granted.

 I. Background

 Plaintiff Field Container Co., L.P. is an Illinois limited partnership with its principal place of business in Elk Grove Village, Illinois. It is the largest privately held manufacturer of paper cartons in the nation. In 1991, Field began to contemplate manufacturing reclosable one-half gallon ice cream cartons. According to Field, this subsection of the paper carton industry is essentially limited to five competing corporations, including defendant Somerville Packaging Corporation. Over the following two years, the technical design of the cartons involved in Field's "E-Z Dip" ice cream carton program changed and developed several times. At issue in the present action are essentially two versions of the E-Z Dip carton. The first was originally conceived of and committed to paper on August 6 or 7, 1992, and is labeled Field Spec. No. 4291 (hereinafter "Version 1"). The only apparent order of Version 1 was by Field itself, for the purpose of testing and qualification runs on a prospective customer's machines in January, 1993. Although Field remains able to manufacture Version 1, it has apparently neither solicited nor accepted any orders for Version 1, and it is not currently producing or exhibiting that carton. The second version at issue was initially drafted on June 7, 1993, and is labeled Field Spec. No. 7223 (hereinafter "Version 2"). Orders for Version 2 were solicited prior to filing the lawsuit, and have presently reached close to one million cartons. In addition, Field exhibited Version 2 at a dairy supplier trade show held in October, 1993. Field has submitted working samples of each version with its materials in opposing the present motion. *fn1"

 According to Field, the genesis for the current lawsuit was a letter sent to Field on June 15, 1993 by B. Edward Shlesinger, intellectual property counsel to Somerville Packaging Corporation. The text of the letter read as follows:

We are intellectual property counsel to Somerville Packaging Corporation. Our client has an expansive patent portfolio relating to tamper evident, reclosable half-gallon ice cream cartons. Our client's patent portfolio includes U.S. Patent Nos. 4,752,902 ('902 patent); 4,838,432 ('432 patent); and 4,756,470 ('470 patent). A copy of each of these patents is enclosed for your review.
It is our understanding that your company is presently testing a tamper evident, reclosable half-gallon ice cream carton very similar to our client's Tuck Tite(R) #2 and Tuck Tite(R) #3 cartons. It is our further understanding that your test samples are covered by the '470, '902 and '432 patents.
We ask that you refrain from commercially exploiting ice cream cartons (i.e. manufacturing, selling or using) covered by our client's patents. Please advise us of your intentions to respect our client's patent rights at your earliest possible convenience.
You should also be aware that our client has successfully enforced several of its patents directed to tamper evident, reclosable ice cream cartons and blanks. In this regard, we note that the '470 patent has been found valid, enforceable and infringed by cartons very similar in design to those of your test samples.

 Somerville asserts that the letter was intended to refer solely to Version 1, as that was the only version of Field's carton that was being tested when the letter was sent, and the only version of which Somerville was aware. Indeed, Field has acknowledged that it was not testing Version 2 at the time it received the letter, and that it subsequently understood the letter to be referring only to Version 1. There was no further contact between the parties until June 23, 1993, less than one week after Field received Shlesinger's letter, when Field filed the current action. Somerville has moved to dismiss, asserting that this court lacks subject matter jurisdiction.

 II. Discussion

 Under the Declaratory Judgment Act, 28 U.S.C. § 2201, a federal court may issue a declaratory judgment only if an "actual controversy" exists at the time the complaint is filed. *fn2" As a general rule, the complaint may simply allege facts sufficient to satisfy this prerequisite. However, when a defendant challenges the court's jurisdiction under the Act, the plaintiff has the burden of supporting the allegations with competent proof, and demonstrating by a preponderance of the evidence the existence of an actual controversy. *fn3" See International Harvester Co. v. Deere & Co., 623 F.2d 1207, 1210 (7th Cir. 1980); Shell Oil Co. v. Amoco Corp., 970 F.2d 885, 887 (Fed. Cir. 1992).

 In declaratory judgment actions involving patents, two factors are necessary for a finding of "actual controversy." First, the plaintiff must demonstrate that, due to the defendant's actions, the plaintiff had a reasonable apprehension that it would be sued for infringement if it continued its activities. International Harvester, 623 F.2d at 1210. Second, the plaintiff must have actually produced or prepared to produce the item at issue, "such that 'but for a finding that the product infringes or for extraordinary and unforeseen contingencies, the plaintiff would and could begin production immediately.'" International Harvester, 623 F.2d at 1210-11 (quoting ...

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