The opinion of the court was delivered by: Joan B. Gottschall United States District Judge
Magistrate Judge Arlander Keys
MEMORANDUM OPINION AND ORDER
Plaintiff Tuthill Corporation ("Tuthill") has filed suit against defendants ArvinMeritor, Inc., ArvinMeritor Technology, LLC, Meritor Heavy Vehicle Systems, LLC, and Rockwell Heavy Vehicle Suspension Systems, Inc., (collectively "ArvinMeritor") seeking a declaratory judgment that its accused vehicle suspension systems do not infringe the patents-in-suit owned by ArvinMeritor and, further, that the patents-in-suit are invalid. Presently before the court is ArvinMeritor's motion to dismiss portions of the complaint for lack of subject matter jurisdiction pursuant to Federal Rule of Civil Procedure 12(b)(1). Specifically, ArvinMeritor seeks to have dismissed Tuthill's claims for declaratory judgment of noninfringement and invalidity of ArvinMeritor's U.S. Patents Nos. 6,733,020 (the "'020 patent"), 6,866,840 (the "'840 patent"), and 6,871,864 (the "'864 patent") (collectively the "RV patents") on the grounds that there is no substantial case or controversy of sufficient immediacy and reality to support Tuthill's action with regard to the RV patents. For the reasons set forth below, ArvinMeritor's motion to dismiss Tuthill's suit with respect to the RV patents is denied.
ArvinMeritor's three RV patents relate to various elements of a vehicle suspension system suitable for use in recreational vehicles. Tuthill also manufactures a suspension system suitable for use in recreational vehicles, known as the RD2300 RV Suspension (the "RD2300"). According to ArvinMeritor, Tuthill became aware of ArvinMeritor's RV patents during the course of discussions of another of Tuthill's suspension systems that allegedly fell within the scope of a different suspension system patent held by ArvinMeritor.*fn1 ArvinMeritor brought the possible infringement of the RV patents by the RD2300 to Tuthill's attention in a September 23, 2005 letter (the "September 23rd letter") to George Pappas ("Pappas"), Tuthill's patent attorney. ArvinMeritor's Memo. in Supp. Ex A. In its letter, ArvinMeritor expressed the hope that the matter could be resolved amicably, but also noted that it was otherwise prepared to take legal action. Id. Pappas responded to ArvinMeritor via a letter dated December 19, 2005 (the "December 19th letter"), stating that the RD2300 suspension was still in the design phase, and had not yet been placed into production. ArvinMeritor's Memo. in Supp. Ex B. Furthermore, Pappas opined, in his preliminary judgment, the RD2300 suspension was not covered by the RV patents and/or the RV patents were invalid and unenforceable. Id. According to ArvinMeritor, there was no further discussion of Tuthill's RD2300 with respect to the RV patents until Tuthill filed its suit seeking a declaratory judgment on May 16, 2007.*fn2 However, a letter from ArvinMeritor to Tuthill, dated February 21, 2006 (the "February 21st letter"), stated that Robert Zirlin ("Zirlin") of Meritor "is writing to Mr. Greg Rocque of Tuthill." Tuthill's Brief in Opp. Ex. A-2.
Tuthill disputes ArvinMeritor's assertion that communications concerning the alleged infringement of the RV patents by the RD2300 ended with the December 19th letter. Tuthill adduces the affidavit of Gregory Rocque ("Rocque"), president of the Tuthill Transportation Technologies division of Tuthill, Inc., who avers that he discussed ArvinMeritor's accusations of infringement with executives from ArvinMeritor, without achieving any manner of resolution. Decl. of Rocque ¶ 4. Rocque refers specifically to meetings on October 18, 2006 and January 4, 2007, with Sergio Carvalho ("Carvalho"), Vice-President and General Manager for Suspension Systems and Trailer Products at ArvinMeritor. Id. Rocque attests that at these meetings he unsuccessfully attempted to resolve, inter alia, ArvinMeritor's accusations of infringement with respect to the recreational vehicle suspension systems. Id. Moreover, Rocque avers that by the time of the October 18, 2006 meeting, Tuthill had been selling the RD2300 suspension system for many months, and that in the spring of 2007, he was informed by several of Tuthill's customers that ArvinMeritor had informed them that Tuthill's products infringed ArvinMeritor's patents. Id. at ¶¶ 4-5. As a result, according to Roque, Tuthill brought the instant declaratory judgment suit to resolve the accusations of infringement. Id. at ¶ 6. Tuthill also adduces a letter to Pappas stating that "other issues raised" in addition to the patent not at issue in this motion would be the subject of communications between Rocque and ArvinMeritor. Tuthill's Resp. Brief Ex. A-2. Tuthill claims that "other issues raised" refers to the RD2300's alleged infringement of the RV patents.
ArvinMeritor disputes Tuthill's recitation of facts, producing an affidavit by Carvalho, who avers that he never discussed the RV patents with Rocque, but only discussed issues related to the other patent not at issue in this motion. Decl. of Carvalho ¶ 4. Carvalho avers that at the time of the alleged discussions the RV patents were outside of his area of responsibility or authority. Id. at ¶ 5. ArvinMeritor argues that the fact that the RD2300 was actually in production is "of no moment," and all that matters is ArvinMeritor's knowledge of the development, which it derived from Pappas' letter of December 19, 2005.
Article III of the U.S. Constitution states, in relevant part: "The judicial Power shall extend to all cases in Law and Equity, arising under this Constitution, the Laws of the United States, and Treaties made, or which shall be made, under their Authority; .. U.S. Const. art. III § 2. The language of Article III has been generally held to require that federal courts may exercise jurisdiction over subject matter in actions only where there exists an actual case or controversy. Clinton v. City of New York, 524 U.S. 417, 429 (1998). Tuthill brings the instant suit for declaratory judgment under 28 U.S.C. § 2201(a), which states, in relevant part:
In a case of actual controversy within its jurisdiction . any court of the United States, upon the filing of an appropriate pleading, may declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought. Any such declaration shall have the force and effect of a final judgment or decree and shall be reviewable as such.
28 U.S.C § 2201. The burden of establishing declaratory judgment jurisdiction is on the party originally bringing the action. Benitec Australia, Ltd. v. Nucleonics, Inc., 495 F.3d 1340, 1344 (Fed. Cir. 2007). Since the U.S. Supreme Court's 2007 decision in MedImmune, Inc. v. Genentech, Inc., the standard for establishing jurisdiction over a declaratory judgment action requires that:
[T]he dispute be definite and concrete, touching the legal relations of parties having adverse legal interests; and that it be real and substantial and admit of specific relief through a decree of a conclusive character, as distinguished from an opinion advising what the law would be upon a hypothetical state of facts.. Basically, the question in each case is whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment. 549 U.S. 118, 127 S.Ct. 764, 771 (2007) (internal citations omitted).*fn3 The Federal Circuit has since dilated on the criteria established by the Supreme Court:
Article III jurisdiction may be met where the patentee takes a position that puts the declaratory judgment plaintiff in the position of either pursuing arguably illegal behavior or abandoning that which he claims a right to do. We need not define the outer boundaries of declaratory judgment jurisdiction, which will depend on the application of the principles of declaratory judgment jurisdiction to the facts and circumstances of each case. We hold only that where a patentee asserts rights under a patent based on certain identified ongoing or planned activity of another party, and where that party contends that it has the right to engage in the accused activity without license, an Article ...