Accusations of Copying to Overlapping Customer Base and PTO Create Substantial Controversy Supporting Declaratory Judgment Claim

The court denied defendant's motion to dismiss plaintiff's declaratory judgment claim for lack of an actual case or controversy. "⁠[Defendant] represented to the [PTO] that [plaintiff] was copying the product for which it sought a patent. . . . On its own, [defendant's] pre-issuance conduct might not be enough to make this a real and immediate controversy, but its alleged statements in the marketplace suffice to make it so. [Defendant] told the two companies’ overlapping customer base that [plaintiff] had copied its product. . . . Acknowledging that this is a close question, the Court takes guidance from the Federal Circuit’s observation that the purpose of the Declaratory Judgment Act is to 'obviate,' among other problems, 'extra-judicial patent enforcement with scare-the-customer-and-run tactics.' [Plaintiff's] allegations suggest something like those tactics was afoot here."

Global Tubing LLC v. Tenaris Coiled Tubes LLC et al, 4-17-cv-03299 (TXSD July 20, 2018, Order) (Ellison, USDJ)