See Id. at 741 (dismissing declaratory judgment action filed when the parties "realized that litigation was imminent, since there appeared to be no hope of settling the matter outside of court").
FPC's "suit for declaratory judgment [was] aimed solely at wresting the choice of forum" from Uniplast and, as such, may be dismissed. NUCOR Corp., 28 F.3d at 577 (quotation omitted). The most telling facts are that the declaratory judgment complaint was filed on November 27, 1996, the day by which Uniplast sought a response as to whether or not FPC would oppose the amendment of the Minnesota complaint, Budget Rent A Car Corp. v. Miljack, Inc., 760 F. Supp. 135, 136 (N.D. Ill. 1991) (finding it more than coincidence that declaratory judgment action was filed the day before actual suit was anticipated), and that although FPC informed Uniplast that there would be no settlement of the false advertising claim and that it would oppose the amendment, FPC did not reveal its intention to file a declaratory judgment complaint on the very same day.
FPC argues that its declaratory judgment complaint was not filed in anticipation of Uniplast's false advertising suit, see Tempco Elec. Heater Corp., 819 F.2d at 749, because it believed that Uniplast would not file suit, but hold the threat of it over FPC to force it to settle the pending patent infringement litigation. Whatever FPC's belief, the reality was that, within a month of discovering that it had another claim against FPC, Uniplast drafted an amended complaint, sought FPC's consent to the amendment pursuant to Fed. R. Civ. P. 15, and having failed to obtain the consent, filed suit in the Northern District of Texas. Even if initially Uniplast was bluffing and using the threat of new litigation to gain concessions in the ongoing one, when FPC called its bluff, Uniplast immediately moved forward with the false advertising claim. These circumstances do not warrant a declaratory judgment action. The suit pending in the Northern District of Texas will accomplish the purpose of Count III, i.e., "clarify and settle the disputed legal relationships and afford [FPC the] relief from the uncertainty and controversy that created the issues." NUCOR Corp., 28 F.3d at 578. The declaratory judgment claim would serve no useful purpose. Tempco Elec. Heater Corp., 819 F.2d at 749.
Relying on Roadmaster Corp. v. Nordictrack, Inc., 1993 U.S. Dist. LEXIS 13090, Civ. A. No. 93 C 1260, 1993 WL 625537 (N.D. Ill. Sept. 20, 1993), and K & F Mfg. Co. v. Western Litho Plate & Supply Co., 831 F. Supp. 661, 663 (N.D. Ind. 1993), FPC argues that the Federal Circuit law, specifically, Genentech, Inc. v. Eli Lilly & Co., 998 F.2d 931, 937 (Fed. Cir. 1993) (in deciding whether to hear declaratory judgment action, district court should favor forum of first-filed case), controls my decision whether to dismiss Count III. Roadmaster Corp. and K & F Mfg. Co. applied Genentech and accordingly refused to dismiss a first-filed declaratory judgment action. 831 F. Supp. at 663-64; 1993 WL 625537, at *2-3.
Although the Federal Circuit would have exclusive appellate jurisdiction over the dismissal of the instant amended complaint
because of the additional count in the amended complaint charging a violation of federal patent law, Federal Circuit law would not automatically control the disposition of all claims. U.S. Philips Corp. v. Windmere Corp., 861 F.2d 695, 702 (Fed. Cir. 1988). When the claim does not implicate patent law, the Federal Circuit "defer[s] to the discernable law of the regional circuit in which the district court sits." Mars Inc. v. Kabushiki-Kaisha Nippon Conlux, 24 F.3d 1368, 1371 (Fed. Cir. 1994). Specifically, in deciding claims involving Lanham Act violations, the Federal Circuit will look to regional case law. Braun Inc. v. Dynamics Corp. of America, 975 F.2d 815, 819 (Fed. Cir. 1992). Thus, the Federal Circuit would apply its law to Count I, the patent false marking claim, and the Seventh Circuit's law to Count II and III, the Lanham Act violations. I must do likewise. See Zip Dee, Inc. v. Dometic Corp., 931 F. Supp. 602, 610 n.13 (N.D. Ill. 1996); Miller Pipeline Corp. v. British Gas plc, 901 F. Supp. 1416, 1421 n.3 (S.D. Ind. 1995). Thus, Roadmaster Corp. and K & F Mfg. Co., whose declaratory judgment actions involved patent interpretation, are inapposite. 1993 U.S. Dist. LEXIS 13090, 1993 WL 625537, at *2; 831 F. Supp. at 663. Here, a Lanham Act violation underlies FPC's declaratory judgment claim.
Count III is therefore dismissed.
Uniplast argues that Count I and II should be dismissed because they were improperly added under Fed. R. Civ. P. 15(c). However, Rule 15(a) governs the present situation, permitting FPC to amend its complaint "once as a matter of course at any time before a responsive pleading is served." Fed. R. Civ. P. 15(a). Uniplast's motion to dismiss is not a responsive pleading. Car Carriers, Inc. v. Ford Motor Co., 745 F.2d 1101, 1111 (7th Cir. 1984). Therefore, FPC's complaint was properly amended.
Uniplast also argues that I should dismiss Counts I and II because FPC filed its patent false marking and false advertising claims as counterclaims to Uniplast's false advertising claim in the Northern District of Texas. Although I have discretion to defer to another federal proceeding to avoid duplicative litigation, Trippe Mfg. Co. v. American Power Conversion Corp., 46 F.3d 624, 629 (7th Cir. 1995), I decline to exercise it here. FPC amended its complaint in this court prior to filing the counterclaims in Texas. FPC contends that it filed the counterclaims only because it anticipated that Uniplast would move to dismiss the amended complaint in this court. There appears to be no factual overlap between Uniplast's claim and FPC's counterclaims; therefore, pursuing them in separate forums will not result in the waste of judicial resources. See Calvert Fire Ins. Co. v. American Mut. Reins. Co., 600 F.2d 1228, 1233-34 (7th Cir. 1979) (in deciding whether to defer to another federal court, court may take into account "desirability of avoiding piecemeal litigation"). Since Uniplast offers no reasons that the Northern District of Illinois is an inconvenient or an inappropriate forum, FPC is entitled to maintain Counts I and II here.
See Serlin v. Arthur Andersen & Co., 3 F.3d 221, 223 (7th Cir. 1993) (favoring forum of first-filed suit).
Uniplast's motion to dismiss is granted, in part, and denied, in part. Count III is dismissed, while Counts I and II survive.
Elaine E. Bucklo
United States District Judge
Dated: May 16, 1997