Delaware Patent Litigation Report : Delaware Intellectual Property Lawyer & Attorney : Morris James Law Firm : Delaware Patent Litigation Report

After reviewing the Report and Recommendation issued July 14, 2008 and the plaintiff’s objections, the Court dismisses this action for lack of subject matter jurisdiction or in the exercise of her discretion.  Acknowledging the lenient standard for determining the existence of subject matter jurisdiction announced in Medimmune, the Court observes it fosters a forum-seeking race to the courthouse, noting defendants subsequently filed suit against plaintiff in North Carolina.  Plaintiff’s arguments that defendants were actively investigating it and that defendants had sued competitors and further that defendants indicated in telephone calls between the parties’ employees that defendants would sue if plaintiff launched an infringing product, taken as true, did not persuade the Court to exercise jurisdiction.  A potential infringer should not be able to create subject matter jurisdiction by initiating telephone conversations to the patentee’s employees who were not in decision-making positions and who were uninformed as to the real purpose behind the conversations.  Where plaintiff failed to make known its concerns of uncertainty and delay presuit the Court is not convinced the objectives of the Declaratory Judgment Act are served.  The Court acknowledges that such a holding keeps the odds in the race to the courthouse in a patentee’s favor.