Opinion
Docket No. 01-CV-0051E(M)
February 14, 2001
Lisa T. Sofferin, Esq., c/o Brown Kelly, Buffalo, NY, Attorneys for the Plaintiff.
Randolph C. Oppenheimer, Esq., c/o Kavinoky Cook, Buffalo, NY, Attorneys for the Defendant.
MEMORANDUM and ORDER
Plaintiff RP Pools, Inc. d/b/a Island Pools ("Island Pools") filed this action February 2, 2001 pursuant to 28 U.S.C. § 1338 and 2201(a) seeking a declaration that defendant New Kayak Pool Corporation ("New Kayak") is not the owner of two patents which it seeks to enforce against a third party Total Vinyl Products, Inc. ("Total Vinyl") and that such patents are invalid and otherwise enforceable. In conjunction with its complaint, plaintiff filed a motion for a preliminary injunction and such is presently before this Court for disposition.
New Kayak is a manufacturer of above ground swimming pools and related parts and liners. Compl. ¶ 15. Island Pools is a retailer of swimming pool and spa products including inter alia, replacement deep-end liners for New Kayak pools. Id. ¶ 10. Plaintiff purchases replacement deep-end liners for New Kayak pools from various manufacturers, including Total Vinyl which is its largest supplier. Id. ¶¶ 49, 56. On January 4, 2001 New Kayak sent a cease and desist letter to Total Vinyl stating that it owned two patents for deep-end pool liners — i.e., Des. 291, 599 and Des. 300, 247 — and that Total Vinyl was infringing these patents through the manufacture of its deep-end pool liners for New Kayak pools. Id. Ex. D. Total Vinyl faxed a copy of this letter to plaintiff, as a result of which plaintiff brought the instant action.
Plaintiff states that it intends to send its Spring 2001 catalog to the printer February 15, 2001 and that this catalog will offer for sale deep-end liners made by Total Vinyl. Mot. to Shorten Time ¶ 11. Plaintiff states that "[u]pon information and belief, Total Vinyl will not continue to manufacture the disputed deep-end liners unless and until the validity and enforceability of Patents '599 and '247 are determined" and that it "is aggrieved by the assertion of patent rights by New Kayak." Compl. ¶¶ 61-62. Plaintiff states that Total Vinyl is "reluctant to manufacture the disputed deep-end liners unless and until the validity and enforceability" of the patents is determined. Mot. for Preliminary Injunction (Sofferin February 2, 2001 Aff. ¶ 13). Furthermore plaintiff states that the parent company of Total Vinyl is Kafco Industries, which is the major supplier of liners to New Kayak and that as a result of this relationship, "Total Vinyl might not be in a position to challenge New Kayak's cease and desist letter." Id. ¶¶ 14-15. Plaintiff states that it will be irreparably harmed if Total Vinyl ceases production of pool liners in response to New Kayak's cease and desist letter and seeks a preliminary injunction:
"prohibiting and enjoining New Kayak and its officers, agents, servant, employees and attorneys, and those persons in active concert or participation with them from initiating infringement litigation and from threatening any retailer, distributor and manufacturer of deep-end liners, with infringement litigation! or charging any of them, either verbally or in writing, with infringement of Patents '599 and '247." Mot. for preliminary Injunction (Sofferin February 2, 2001 Aff.).
When faced with a declaratory judgment action, a federal court must first determine if there is an actual case or controversy over which it may exercise jurisdiction, because "to proceed in the absence of a case or controversy would involve the court in rendering a forbidden advisory opinion." Arrowhead Industrial Water, Inc. v. Ecolochem, Inc., 846 F.2d 731, 735 (Fed. Cir. 1988). In order to constitute a case and controversy sufficient to give a plaintiff standing to seek a declaratory judgment in a patent case, the plaintiff must establish, based on the facts as they existed when the complaint was filed: "(1) an explicit threat or other action by the patentee, which creates a reasonable apprehension on the part of the declaratory plaintiff that it will face an infringement suit, and (2) present activity which could constitute infringement or concrete steps taken with the intent to conduct such activity." B.P. Chemicals, Ltd. v. Union Carbide Corp., 4 F.3d 975, 978 (Fed. Cir. 1993). "The declaratory judgment plaintiff bears the burden of proving that there is an actual controversy." Fina Research, Baroid Limited, 141 F.3d 1479, 1481 (Fed. Cir. 1998). "[E]ven if there is an actual controversy and thus jurisdiction, the exercise of that jurisdiction rests within the sound discretion of the district court." Ibid.
Plaintiff brought this declaratory judgment action based solely upon defendant sending a cease and desist letter to a third party — Total Vinyl — stating that Total Vinyl was infringing defendant's patents. Plaintiff does not state that it fears that defendant will bring an infringement suit against it; indeed it even states that "[a]t no time has New Kayak asserted to Island Pools, or otherwise directly placed Island Pools on notice, that the deep-end liners sold by Island Pools allegedly infringe upon any patent rights of New Kayak." Compl. ¶ 54. What plaintiff is apparently attempting to do by bringing this action is to assert the right of Total Vinyl to bring a declaratory judgment — because it believes that Total Vinyl will not do so — in order to obtain an advisory opinion from this Court that defendant's patents are invalid so the Total Vinyl will continue to make the deep-end liners which plaintiff intends to offer for sale through its Spring 2001 catalog. It further appears to this Court that plaintiff sought an expedited hearing on its preliminary injunction so that it could determine whether or not to include the deep end liners manufactured by Total Vinyl in its Spring 2001 catalog, as it believes that Total Vinyl will cease manufacturing such in response to the cease and desist letter. Plaintiff has failed to satisfy the first criteria for standing to bring this declaratory judgment action — i.e., "an explicit threat or other action by [New Kayak], which creates a reasonable apprehension on the part of [Island Pools] that it will face an infringement suit." B.P. Chemicals, at 978. Plaintiff is not entitled to have this Court render an advisory opinion on the validity of defendant's patents so that it can determine whether Total Vinyl is likely to continue to manufacture deep-end liners for New Kayak pools and accordingly whether to include such in its Spring 2001 catalog.
Accordingly, it is hereby ORDERED that this case is dismissed for lack of subject matter jurisdiction and that this case shall be closed in this Court.