United States District Court, N.D. Illinois, Eastern Division
November 17, 2004.
WM. WRIGLEY JR. COMPANY, Plaintiff,
CADBURY ADAMS USA LLC, Defendant.
The opinion of the court was delivered by: JAMES ZAGEL, District Judge
MEMORANDUM OPINION AND ORDER
Plaintiff Wm. Wrigley Jr. Company ("Wrigley") is the dominant
supplier of chewing gum products in the United States. Until
recently, Wrigley's dominance of the chewing gum market was
largely unchallenged. Wrigley is the owner of U.S. Patent No.
6,627,233 ("the '233 patent"), which issued in September 2003.
The '233 patent is directed to chewing gums flavored with cooling
agents. Defendant Cadbury Adams USA LLC ("Cadbury") has become,
through a recent acquisition, the second largest manufacturer of
chewing gum products in the United States. Both Wrigley and
Cadbury manufacture and sell various chewing gum products
containing cooling agents. On January 20, 2004, Wrigley sued
Cadbury for infringement of a single claim, Claim 34, of the '233
patent. Claim 34 is directed to what Wrigley considers a novel
chewing gum composition containing WS-23 and menthol. On June 14,
2004, Cadbury filed a second amended counterclaim for declaratory
judgment of invalidity and noninfringement and asserted an
affirmative defense of invalidity for all claims of the '233
Wrigley now moves to dismiss all of Cadbury's counterclaims and
affirmative defenses that do not relate directly to Claim 34 for
lack of subject matter jurisdiction. A party seeking declaratory
judgment has the burden of establishing the existence of a case
or controversy. Vardon Golf Co., Inc. v. Allied Golf Corp., No. 94 C 1332, 1995
U.S. Dist. LEXIS 16380 (N.D. Ill. Nov. 6, 1995). The Federal
Circuit has established the following two-part test to determine
whether a case or controversy exists over a declaratory judgment
for patent invalidity and noninfringement: there must be (1) an
explicit threat or other action by the patentee, which creates a
reasonable apprehension that the declaratory plaintiff will face
an infringement suit and (2) current activity that could
constitute infringement or steps taken with the intent to conduct
such activity. BP Chems. v. Union Carbide Corp., 4 F.3d 975,
978 (Fed. Cir. 1993). Since there is no dispute that Cadbury
could, through the manufacture and sale of chewing gum products
containing cooling agents, infringe the '233 patent, the parties'
briefing has been almost exclusively directed at whether Cadbury
has sufficiently established the existence of a reasonable
apprehension of future litigation concerning the other claims of
the '233 patent. Determining whether a case or controversy exists
must be done on a claim-by-claim basis. Jervis B. Webb Co. v. S.
Sys. Inc., 742 F.2d 1388, 1399 (Fed. Cir. 1984).
As the patentee, Wrigley has the right to determine what claims
to litigate. Id. In this case, Wrigley limited its claims of
infringement to Claim 34 of the '233 patent and argues that no
reasonable apprehension of further claims of infringement exists.
Cadbury, on the other hand, argues that Wrigley's claims of
infringement concerning Claim 34 of the '233 patent creates an
objective apprehension of further patent claims. Firstly, the
cases cited by Cadbury to support this proposition are not
applicable here because they deal almost exclusively with
situations where the patentee originally asserted most, if not
all, of the claims in the patent at issue. See Honeywell Int'l,
Inc. v. Universal Avionics Sys. Corp., 288 F. Supp.2d 638, 645
(D. Del. 2003) (Honeywell asserted the whole patent and withdrew
certain claims late in the litigation); Biacore, v. Thermo Bioanalysis Corp., 79 F. Supp. 2d 422 (D. Del. 1999)
(Biacore asserted the whole patent and then limited to certain
claims in the pretrial order); Kawneer Co. v. Pittsburgh Plate
Glass Co., 103 F. Supp. 671 (D. Mich 1952) (Kawneer asserted the
whole patent and then narrowed its suit to certain claims); May
v. Carriage Inc., 688 F. Supp. 408, 410 (N.D. Ind. 1988)
(patentee filed suit asserting the whole patent and later
narrowed to certain reissue claims).*fn1
Secondly, the current state of the law, as laid down by the
Federal Circuit, weighs against the automatic extension of
declaratory judgment jurisdiction to all claims in a patent when
the original filing is limited in its scope. In Jervis, the
Federal Circuit explained that where a complaint asserts
infringement of less than all the claims of a patent,
jurisdiction over the remaining claims will exist only where "the
declaratory judgment plaintiff is able to meet both of the cases
and controversy requirements for all of the claims." Jervis,
F.2d 1388 at 1399. In other words, the Jervis court refused to
assume that a case or controversy existed for claims that were
not part of the original suit. Instead, it required the
declaratory judgment plaintiff to independently prove the
existence of a case or controversy for each claim.*fn2
Underlying this reluctance to extend a reasonable apprehension beyond the claims
asserted in the original suit is likely to be the issue of
collateral estoppel, as the adjudication of a single claim
brought by the patentee may prevent that patentee from later
charging the infringer with the non-asserted claims. Id.
Accordingly, I find that Cadbury must do more than point to the
current suit to establish the existence of a case or controversy
for the entire '233 patent.*fn3
Cadbury also argues that even if the originally filed suit is
not enough to create declaratory judgment jurisdiction, the
overall circumstances surrounding this litigation are, in fact,
sufficient to create a case or controversy for the non-asserted
claims. Specifically, Cadbury argues that the competitive
relationship of the parties and the existence of other pending
and prior litigation created a reasonable apprehension of future
litigation concerning the remaining claims of the '233 patent.
However, being competitors and engaging in prior litigation,
without more, does not establish the existence of a case or
controversy. See Int'l Harvester Co. v. Deere & Co.,
623 F.2d 1207, 1212 (7th Cir. 1980) (noting that the previous suit
cannot be viewed as anything more than a general indication that
the plaintiff considered litigation to be a viable alternative
once it had determined that a competitor was producing a
potentially infringing product); see also Solo Cup Co. v. Fort
James Corp., No. 99 C 4724, 1999 U.S. Dist. LEXIS 18586 (N.D.
Ill. Nov. 29, 1999) (previous suits against other competitors are
not evidence of an intent to sue sufficient to confer declaratory
judgment jurisdiction). In several cases cited by Cadbury, there was, in addition to a
competitive relationship or prior litigation, an explicit or an
implied threat of infringement of the claims. See Owens-Illinois
Inc. v. B & H Mfg., Inc., 13 U.S.P.Q.2d 2061, 2063 (E.D. Cal.
Nov. 20, 1989); Research Inst. for Med. & Chem., Inc. v. Wis.
Alumni Research Found., Inc., 647 F. Supp. 761, 772-3 (W.D. Wis.
1986); Nalco Allied Chemical Co. v. Allied Colloids, Ltd., 222
U.S.P.Q. (BNA) 969 (D.D.C. 1983); Akzona Inc. v. E.I. Du Pont de
Nemours & Co., 662 F. Supp. 603, 611 (D. Del. 1987); Electro
Med. Sys. S.A. v. Cooper Lasersonics, Inc., 617 F. Supp. 1036,
1038 (N.D. Ill. 1985); Cryomedics, Inc. v. Spembly, Ltd.,
397 F. Supp 287, 292 (D. Conn. 1975). Since Cadbury has not alleged a
direct or indirect threat of infringement on claims other than
Claim 34, such as was present in the above listed cases, I find
that this case lacks the "something more" required to create a
case or controversy. This is especially true because Wrigley has
stated to this court that it does not have any intention of
pursuing additional claims of infringement.
In the remaining cases cited by Cadbury, there was litigation
or conduct that was related to the claims or subject matter at
issue. See Premo Pharm. Labs. v. Pfizer, Inc., No. 80 C 4850,
1981 U.S. Dist. LEXIS 17358 at *5 (S.D.N.Y. Jan. 23, 1981) (the
court found reasonable apprehension based on litigation related
to the current dispute); Goodyear Tire & Rubber Co. v.
Releasomers, Inc., 824 F.2d 953 (Fed. Cir. 1987) (state court
action involved the relevant technology embodied in the patents);
Muller v. Olin Mathieson Chem. Corp., 404 F.2d 501, 504 (2d
Cir. 1968) (the court found that interference proceedings related
to the technology at issue, statements by the defendant to the
plaintiff's licensees, and other facts collectively led to
apprehension of a suit). In this case, the prior litigation
between Cadbury and Wrigley is, at best, only loosely related. It
has consisted of an unrelated patent suit in Australia, a suit
alleging theft of trade secrets, and an unrelated patent suit against a third
party. None of these suits is sufficiently related to the current
suit to create a reasonable apprehension of litigation on the
remaining claims of the '233 patent. Therefore, I find that
Cadbury has failed to establish the existence of a case or
controversy for claims other than Claim 34.
For the reasons stated herein, Wrigley's Motion to Dismiss for
Lack of Subject Matter Jurisdiction is GRANTED.