comba telecom, inc. v. andrew llc, et al., c.a. no. 12-311-gms (d. del. july 15, 2015)

8/20/2019 Comba Telecom, Inc. v. Andrew LLC, et al., C.A. No. 12-311-GMS (D. Del. July 15, 2015).

1/3

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE

COMBA TELECOM, INC.,

Plaintiff,

v.

ANDREW LLC and COMMSCOPE, INC.,

Defendants.

OR ER

Civil Action No. 12-311-GMS

WHEREAS, on April 30, 2012, pursuant to Federal Rule

o

Civil Procedure 12(b)(l),

defendants Andrew LLC and CommScope, Inc. (collectively the defendants

1

) filed a Motion to

Dismiss the Complaint (D.I. 11);

WHEREAS, on March 11, 2013, the court granted-in-part and denied-in-part the

defendants' Motion to Authorize Jurisdictional Discovery (D.I. 39);

WHEREAS, the court granted the Comba Telecom's ( Comba ) Motion to Amend the

Complaint (D.I. 38);

WHEREAS, following jurisdictional discovery both parties filed supplemental briefing

and the defendants' renewed their motion to dismiss

see

D.I. 47, 48, 49); and

WHEREAS, having considered the parties' positions as set forth in their papers;

IT IS HEREBY ORDERED that the defendants' Motion to Dismiss Under Federal Rule

o

Civil Procedure 12(b)(l) (D.I. 11) is GRANTED.

2

1

CommScope, Inc. acquired Andrew LLC in 1997. (D.I. 1 7.) As such, the court will refer to the parties

collectively as the defendants.

2

Comba seeks a declaratory judgment that U.S. Patent Nos. 6,198,458; 6,538,619; 6,600,457; 6,567,051;

6,590,546; 6,603,436; 6,346,924 and 7,518,522 are invalid. (D.I. 40,

1.)

The patents relate to remote-controlled

electrical tilt antennas, commonly known

in

the industry as RET antennas. (Id.) Comba asserts that it has taken

significant, meaningful, and concrete steps to begin

in

engaging in activities that would subject it to allegations

o


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infringement in the United States

i

the patents are not declared invalid. Id.) Further, Comba claims that the

defendants have taken affirmative action toward defending their patents in the United States. Id.)

The Declaratory Judgment Act requires that a case o actual controversy exist between the parties before a

federal court may exercise jurisdiction. 28 U.S.C. § 220l(a) . In determining whether there is subject matter

jurisdiction over declaratory judgment claims, a court should ask whether the facts alleged, under all the

circumstances, show that there

is

a substantial controversy, between parties having adverse legal interests,

o

sufficient immediacy and reality to warrant the issuance o a declaratory judgment.

Medlmmune,

Inc. v.

Genentech, Inc., 549 U.S. 118, 127 (2007) (internal quotation marks and citation omitted) (noting that the

Declaratory Judgment Act 's requirement that a case o actual controversy exist is a reference to the types o cases

and controversies that are justiciable under Article III); see also Prasco, LLC v. Medicis Pharm. Corp., 537 F.3d

1329, 1335-36 (Fed. Cir. 2008). A case or controversy must be based on a real and immediate injury or threat

o

future injury that

is

caused by the defendants an objective standard that cannot be met by a purely subjective or

speculative fear o future harm.

Prasco, LLC,

537 F.3d at 1339 (emphasis in original). Thus, in the patent context,

jurisdiction generally will not arise merely on the basis that a party learns

o

the existence o a patent owned by

another or even perceives such a patent to pose a risk o infringement, without some affirmative act by the patentee.

Id.

(internal quotation marks and citation omitted). When the conduct o the patentee can be reasonably inferred

as

demonstrating intent to enforce a patent against the declaratory judgment plaintiff, subject matter jurisdiction will

arise, even when that intent

is

demonstrated implicitly. Hewlett-Packard Co. v. Acceleron LLC, 587 F.3d 1358,

1363-64 (Fed. Cir. 2009). A decision as to whether an actual controversy exists in the context o a patent

declaratory judgment claim will necessarily be fact specific and must be made in consideration

o

all the relevant

circumstances. W.L.

Gore Assocs.,

Inc. v.

AGA

Med.

Corp.,

Civil No. 11-539 (JBS-KMW), 2012 WL 924978, at

*4

(D. Del. Mar. 19, 2012) (citing Medimmume, Inc., 549 U.S. at 127). The burden

is

on the party asserting

declaratory judgment jurisdiction to establish that an Article III case or controversy existed at the time that the claim

for declaratory relief was filed and that it has continued since. Danisco US. Inc. v. Novozymes AIS, 744 F.3d 1325,

1329 (Fed. Cir. 2014);

Butamax Advanced Biofuels LLC

v.

Gevo, Inc.,

Civ. No. 12-1301-SLR, 2013 WL 1856308, at

*2 (D. Del. May 2, 2013).

Comba argues that dismissal would be improper because (

1)

the defendants have taken steps to legally

enforce U.S. patents in foreign litigation and by way o public and private threats; and (2) Comba has moved past

the preparatory stage o marketing to the United States and is ready to sell to consumers. D.1. 18 at 7, 17.) Comba

asserts that the patents-in-suit present a barrier to Comba's entering the US market. D.1. 1, 37.)

In support, Comba asserts that the United States

is

the next inevitable installment

o

[the] ongoing patent

battle

as

a result

o

ongoing litigation in Brazil and China.

Id.

at 9.) The defendants respond that foreign

proceedings brought by defendants in foreign jurisdictions do not create a real or immediate controversy in the

United States.

D.1.

24 at 5.) The patent laws and regulations in other countries are different from the United States

and, as

such, are not a persuasive means

o

authority in this court. The mere existence

o

foreign litigation does not

create a real and immediate threat. Next, Comba claims that the defendants have taken a substantial step toward

litigation in the United States by sending direct and veiled threats. D.1. 18 at 13-16.) Specifically, Comba points to

a 2011 press release in which the defendants announced their intent to defend their patents from infringement.

Id.

at 13.) The press release directly addressed Comba and stated that [the defendants'] intend[] to take all necessary

additional steps to enforce [their] rights against Comba and any unauthorized user.

Id.

at 14.) The defendants

concede that the press release was addressed to Comba but clarify that the press release was in regard to the ongoing

disputes in Brazil and China, and made no mention o a controversy, potential or otherwise, in the United States.

D.1.

24 at 3.) Comba also cites a letter from the defendants to a third manufacturer as a veiled threat meant to

foreshadow the defendants' intention to file a lawsuit against Comba in the United States because the letter discusses

RET antenna technology.

D.1.

18

at 16.) The defendants deny the letter

as

issued provides any support to Comba's

claim as it

is not addressed to Comba or its affiliates, does not accuse Comba or other companies mentioned in the

letter o infringement, and does not mention any o the defendants' patents. D.1. 47 at 4.)

The court concludes that the press release and letter from the defendants do not establish an actual

controversy. Implied threats such as the type alleged by Comba cannot be considered a substantial step toward legal

action for patent infringement. See Innovative Therapies, Inc. v. Kinetic Concepts, Inc., 599 F.3d 1377, 1381 (Fed.

Cir. 2010). There

is

no record

in

either the press release or the letter that shows defendants saw or have seen the

allegedly infringing Comba products related to those patented by the defendants in the United States. As such, the

court concludes that Comba has not presented sufficient evidence to establish an affirmative act, because neither the

requisite immediate threat nor substantial step have been established.

2


3/3

Dated: July tJ, 2015

Even

if

the court were to find Comba had established an affirmative act under the first prong, the court

concludes that Comba has not taken meaningful steps to conduct patent-infringing activity as required under the

second prong.

Comba asserts that it

is past the preparatory stage and

is

ready to sell products in the United States. (D.I. 18

at 17.) Comba argues that it has introduced RET antennas to U.S. consumers through its presence at trade shows.

(D.I. 49 at 2.) Comba also alleges it has a presence in the United States through offices and retailers, though its

presence

is

not specifically dedicated to antennas.

Id.)

Furthermore, Comba argues that it has expanded and

upgraded its manufacturing facilities to prepare for the U.S. market, including a testing system to test the radiation

pattern

of

the antennas.

Id.

at 3.) In contrast, the defendants argue that Comba has not taken meaningful steps to

conduct patent-infringing conduct in the United States because its preparation

is

not specific to the United States, to

RET antennas, or both. (D.I. 47 at 7.) First, the defendants argue that Comba has not specified which RET antennas

it intends to sell in the United States, nor correlated the exact antennas that would infringe on the defendants'

patents. Id. at 8.) The defendants argue that Comba's attempts to simply state the antennas are substantially

similar to the patents-in-suit does not establish patent-infringing activity. Id.) The defendants also claim that

Comba's intensive upgrading and expansion of its facilities does not expressly relate to the United States. Id.) For

instance, Comba claims its China facility can produce 800,000 units per year, but does not supply evidence to show

that the units are intended for export to the United States. Id.)

The court is not persuaded that Comba has taken meaningful steps to conduct patent-infringing activity.

Comba presented no evidence that supports a finding that it has meaningfully prepared to sell RET antennas in the

United States. See Benetic Aust/., Ltd. v. Nucleonics, Inc., 495 F.3d 1340, 1346 (Fed. Cir. 2007). Further, Comba

has not specified the products that would allegedly infringe the defendants' patents. See United Marine Marketing

Group, LLC

v.

Jet Dock Systems, Inc.,

No. 8:10-CV-02653-T-30, 2011 WL 3897950, at

*3

(M.D. Fla. Sept. 6,

2011 . In

addition, only one

of

the five RET antennas that appeared at a trade show intended to be introduced to the

United States. (D.I. 47 at 8.) Further, Comba's marketing materials do not establish the company's immediate

intention to sell these specific RET antennas within the United States because Comba admitted that it would have

prepared in this manner whether or not it intended to enter the U.S. market.

Id.

at 6.) Comba also points

to

its

deputy manager of antenna and subsystems unit, Carol Ye, who testified that it

is

crucial for Comba to enter the

United States.

Id.)

Even so,

if

Comba is engaging with the U.S. market, Ms.

Ye s

testimony does not point

specifically

to

the placement

of

RET antennas.

As

such, the court does not find sufficient evidence

of

meaningful

preparation to find an actual controversy in this case.

For the foregoing reasons, the court grants the defendants' motion to dismiss.

3

comba telecom, inc. v. andrew llc, et al., c.a. no. 12-311-gms (d. del. july 15, 2015)

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