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.
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).
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.)
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 ...