Friday, July 8, 2011

Request For Sales And Customer Information For Accused Product Creates Actual Controversy Sufficient To Support Declaratory Relief Claim

The court denied defendant's motion to dismiss plaintiff's declaratory relief claim for lack of subject matter jurisdiction. Defendant's CFO wrote a letter to plaintiff stating in part: "[I]t would appear that [plaintiff] is selling [a product] that is a direct copy of [defendant's] patented [product]. . . . [I]t is requested that [plaintiff] hand over all records of any sales of this [product] since January 15, 2006, the customers’ names and contact details, dollar amounts and any open orders, as well as who may may [sic] contracted for its manufacture. Failure to promptly respond to this very serious breach of our patent rights will not be tolerated." "Given [defendant's CFO's] statements requesting [plaintiff's] customer information, it would have been reasonable for [plaintiff] to be concerned that [defendant] planned to approach its customers and suggest that its product infringed [defendant's] patent. It also was reasonable for [plaintiff] to fear that a suit over the [patent-in-suit] was imminent. . . . This amounts to an actual controversy between the parties."

Triteq Lock & Security, LLC v. HMC Holdings, LLC, 1-11-cv-00843 (ILND July 5, 2011, Order) (Leinenweber, J.)

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