The opinion of the court was delivered by: SAMUEL DER-YEGHIAYAN, District Judge
This matter is before the court on Defendant Sandia Corporation's
("Sandia") and Defendant Peter Van Blarigan's ("Blarigan") motion to dismiss
and on Defendant United States Patent and Trademark Office's ("PTO") motion
to dismiss. For the reasons stated below, we grant both motions to dismiss
in their entirety.
Plaintiff Anatoly Rosenblat ("Rosenblat") brought the instant
action and seeks one form of relief. Rosenblat seeks a
declaration by the court that U.S. Patent 6,199,519 ("`519 Patent"), which he contends is owned by Sandia
and Blarigan, is invalid. Sandia and Blarigan have moved to
dismiss the claims brought against them based upon a lack of
subject matter jurisdiction and lack of personal jurisdiction.
PTO has moved to dismiss the claims brought against it based upon
a lack of subject matter jurisdiction.
Federal Rule of Civil Procedure 12(b)(1) directs a court to
dismiss a claim for lack of subject matter jurisdiction.
Fed.R.Civ.P. 12(b)(1). Pursuant to 28 U.S.C. § 1338(a) a federal
district court has "original jurisdiction of any civil action
arising under any Act of Congress relating to patents, plant
variety protection, copyrights and trademarks. . . ."
28 U.S.C. § 1338(a). See also Kroll v. Finnerty, 242 F.3d 1359, 1363 (Fed.
Cir. 2001) (stating that the Supreme Court has interpreted
28 U.S.C. § 1338(a) "to confer jurisdiction upon district courts
when `a well-pleaded complaint establishes either that federal
patent law creates the cause of action or that the plaintiff's
right to relief necessarily depends on resolution of a
substantial question of federal patent law, in that patent law is
a necessary element of one of the well-pleaded claims.'")
(quoting Christianson v. Colt Indus. Operating Corp.,
486 U.S. 800, 808-09 (1988)).
Federal Rule of Civil Procedure 12(b)(2) ("Rule 12(b)(2)")
directs a court to dismiss a claim for lack of personal
jurisdiction. Fed.R.Civ.P. 12(b)(2). If there has not been discovery on the issue of personal jurisdiction the
plaintiff is required to make a "prima facie showing" that the
court has personal jurisdiction over a defendant. Trintec
Industries, Inc. v. Pedre Promotional Products, Inc,
395 F.3d 1275, 1282-83 (Fed. Cir. 2005). In ruling on a Rule 12(b)(2)
motion to dismiss "the district court must construe all pleadings
and affidavits in the light most favorable to the plaintiff." Id.
I. Sandia and Blarigan Motion to Dismiss
Sandia and Blarigan (collectively referred to as "Sandia
Defendants") argue that this court lacks subject matter
jurisdiction over Rosenblat's claim for a declaratory judgment. A
federal court may issue a declaratory judgment addressing "the
rights of an interested party to an `actual controversy.'" West
Interactive Corp. v. First Data Resources, Inc., 972 F.2d 1295,
1297 (Fed. Cir. 1992) (citing 28 U.S.C. § 2201). In the patent
context, in order for there to be an actual controversy for the
purposes of a declaratory judgment, "the defendant's conduct must
have created on the part of the plaintiff a reasonable
apprehension that the defendant will initiate suit if the
plaintiff continues the allegedly infringing activity," and "the
plaintiff must actually have either produced the device or have
prepared to produce that device." Id. The burden of
establishing that there is an actual controversy rests with the
plaintiff. Id. In the instant action, Rosenblat has not alleged that the Sandia
Defendants made any threat to Rosenblat that they might bring a patent
infringement suit against him. There is not any allegation in the complaint
of any communications between Rosenblat and the Sandia Defendants. Rosenblat
has not alleged that he is engaged in any activity that could be deemed
infringement of the '519 Patent. Neither has Rosenblat alleged that he
intends to pursue the necessary measures in order to engage in such
activity. Therefore, we grant the Sandia Defendants' motion to dismiss for
lack of subject matter jurisdiction.
We also note that even if we had subject matter jurisdiction,
we would grant the Sandia Defendants' motion to dismiss because
this court lacks personal jurisdiction over the Sandia
Defendants. Rosenblat does not dispute the contentions of the
Sandia Defendants that they have no direct contact with Illinois
and do not have the "continuous and systematic" contacts with
Illinois required for general personal jurisdiction. Trintec
Industries, Inc. v. Pedre Promotional Products, Inc,
395 F.3d 1275, 1279 (Fed. Cir. 2005); Steel Warehouse of Wisconsin, Inc.
v. Leach, 154 F.3d 712, 714 (7th Cir. 1998). Neither has
Rosenblat shown that either of the Sandia Defendants have
connections with Illinois that would fall within the scope of the
Illinois Long Arm Statute, 735 ILCS 5/2-209, or have sufficient
minimum contacts to support a finding of personal jurisdiction
within the limits provided by the United States Constitution.
Central States, Southeast and Southwest Areas Pension Fund v.
Reimer Express World Corp., 230 F.3d 934, 942-43 (7th Cir.
2000). Rosenblat does not in his answer to the motion to dismiss dispute
any of the material facts asserted by the Sandia Defendants
regarding personal jurisdiction. Rosenblat's only argument in
regards to personal jurisdiction is that the Sandia Defendants
appeared in this court in another action previously filed by
Rosenblat. However, the fact that the Sandia Defendants appeared
as Defendants in another action in the Northern District of
Illinois does not mean that they waived all personal jurisdiction
requirements for future actions. See e.g. Mallinckrodt Medical,
Inc. v. Sonus Pharmaceuticals, Inc., 989 F.Supp. 265, 271 (D.C.
Cir. 1998). Therefore, based on all of the above analysis, we
grant the Sandia Defendants' motion to dismiss.
II. United States Patent and Trademark Office Motion to
PTO argues that the claims against it should be dismissed for
lack of subject matter jurisdiction. PTO argues that it is
protected from suits such as the instant suit by the doctrine of
sovereign immunity. The doctrine of "sovereign immunity shields
the Federal Government and its agencies from suit" unless there
is a waiver of immunity. F.D.I.C. v. Meyer, 510 U.S. 471, 475
(1994). Rosenblat has not pointed to any statute that indicates
that Congress intended to waive sovereign immunity to allow suits
such as the instant action against the PTO. In addition, as
explained above, Rosenblat's claim for a declaratory judgment is
not sufficient in and of itself to provide a basis for subject
matter jurisdiction since Rosenblat has not alleged an actual
controversy in this action. PTO also points out that Rosenblat
has an administrative remedy available and Rosenblat has not ...