Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

BLACK & DECKER INC. v. ROBERT BOSCH TOOL CORPORATION

June 9, 2005.

BLACK & DECKER INC. and BLACK & DECKER (U.S.) INC., Plaintiffs,
v.
ROBERT BOSCH TOOL CORPORATION, Defendant.



The opinion of the court was delivered by: AMY J. ST. EVE, District Judge

MEMORANDUM OPINION AND ORDER

Plaintiffs Black & Decker Inc. and Black & Decker (U.S.) Inc. (collectively "Black & Decker) sued Defendant Robert Bosch Tool Corporation ("Bosch") for patent infringement. Bosch filed counterclaims. Black & Decker moves to dismiss Counts I through III of Bosch's counterclaims pursuant to Federal Rule of Civil Procedure 12(b)(1) and 28 U.S.C. § 2201. For the reasons discussed below, the Court grants Black & Decker's motion.

LEGAL STANDARD

  In deciding Rule 12(b)(1) motions to dismiss for lack of subject matter jurisdiction, the Court "must accept the complaint's well-pleaded factual allegations as true and draw reasonable inferences from those allegations in the plaintiff's favor." Transit Express, Inc. v. Ettinger, 246 F.3d 1018, 1023 (7th Cir. 2001). See Sprint Spectrum L.P. v. City of Carmel, Indiana, 361 F.3d 998, 1001 (7th Cir. 2004). The Court may look beyond the pleadings. See Long v. Shorebank Dev. Corp., 182 F.3d 548, 554 (7th Cir. 1999). The Court must "presume that federal courts lack jurisdiction `unless the contrary appears affirmatively from the record.'" Id., quoting Renne v. Geary, 501 U.S. 312, 316, 111 S.Ct. 2331, 115 L.Ed.2d 288 (1991). The party asserting jurisdiction bears the burden of proof on a Rule 12(b)(1) motion. United Phosphorus Ltd. v. Angus Chem. Co., 322 F.3d 942, 945-46 (7th Cir. 2003).

  BACKGROUND

  I. Black & Decker's Complaint

  Black & Decker's Complaint asserts that Bosch has infringed Black & Decker's United States Patents No. 6,308,059 ("the `059 patent") and No. 6,788,925 ("the `925 patent"). (R. 1-1; Compl. ¶ 2.) These patents generally relate to portable jobsite radios. (Id. ¶ 3.) Black & Decker accuses Bosch's "Power Box" jobsite radio of infringing "at least one claim" of each of the patents-in-suit. (Id. ¶¶ 9, 11.)

  II. Bosch's Counterclaims

  In response, Bosch asserts various counterclaims against Black & Decker. Count I of Bosch's counterclaims alleges that Black & Decker's U.S. Patent No. 6,427,070 ("the `070 patent") is invalid under 35 U.S.C. § 102(e) and unenforceable due to inequitable conduct. (R. 12-1; Countercl. ¶¶ 28-30.) Count II alleges that Black & Decker's `070 patent and its United States Patent Application No. 10/758,492 ("the `492 application") are unenforceable because of inequitable conduct. (Id. ¶¶ 31-33.) Count III alleges that the `059 and `92 patents and the `492 application are unenforceable under the doctrine of unclean hands. (Id. ¶¶ 34-39.)

  III. Black & Decker's Cease And Desist Letter To Bosch

  Black & Decker's patent counsel wrote Bosch's patent counsel on November 1, 2004 ("Black & Decker's cease and desist letter"). (R. 31-1; Def.'s Opp. Br., Ex. E.) The letter generally described the inventions of the `059 and `925 patents and set forth sample claims from both of those patents as well as the pending `492 application. Black & Decker then stated, "[w]e believe that the Bosch Power Box products infringe one or more claims of the `059 and `925 patents, specifically, the Bosch BP10-CD Power Box and similar products that may be sold under different product designations." (Id. at 2-3.) Black & Decker further stated that "the pending claims are also infringed." (Id. at 3.) The letter included claim charts providing element-by-element comparisons of the claims of the `059 and `925 patents to the accused products. (Id.) Black & Decker requested that Bosch "immediately discontinue any manufacture, sale, promotion, advertisement or offer for sale of the Bosch PB10-CD Power Box radio charger." (Id. at 4.)

  ANALYSIS

  Black & Decker first argues that the Court does not have subject matter jurisdiction over Count I of Bosch's counterclaim because Black & Decker has never asserted that Bosch infringes the `070 patent and therefore, no actual controversy exists supporting Bosch's declaratory judgment claim with respect to that patent. Next, Black & Decker argues that the Court does not have subject matter jurisdiction over Count II of Bosch's counterclaim for the same reason as Count I, and also because no actual controversy can exist with respect to a pending patent application, such as the `492 application. Regarding Count III of Bosch's counterclaim, Black & Decker argues that the Court does not have subject matter jurisdiction because that claim also involves the `492 application and therefore no actual controversy exists until that ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.