Below are sample federal declaratory judgment complaints related to patent infringement cases. The complaints are divided by issue. The complaint examples are publicly filed in the respective lawsuits. The complaints were all filed in 2010 or later. This post says nothing of the merits, truthfulness or falsity of the alleged claims. The post simply provides examples of filed declaratory judgment action complaints.
Standard:
“A court has subject matter jurisdiction under the Declaratory Judgment Act, 28 U.S.C. § 2201(a), if the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment. The requirement of a substantial controversy “is the same as an Article III case or controversy. To determine whether a case or controversy existed, [courts] consider, inter alia: whether a party has proved a reasonable apprehension of suit; whether there has been meaningful preparation to conduct potentially infringing activity; whether a party demonstrates refusal to grant a covenant not to sue; and the nature and extent of any communications between the declaratory plaintiff and the patentee related to infringement.” Indus. Models, Inc. v. SNF.
Non-infringement:
“To prove infringement, a patentee must supply sufficient evidence to prove that the accused product or process contains, either literally or under the doctrine of equivalents, every limitation of the properly construed claim.” Eli Lilly & Co. v. Hospira. Courts “apply a two-step analysis to determine whether accused devices literally infringe a patent’s claims. First, the claims are construed to determine their scope. Second, the claims must be compared to the accused device. Literal infringement exists when every limitation recited in the claim is found in the accused device.” EMED Techs. v. Repro-Med. “A party asserting infringement under the doctrine of equivalents may prove its case by showing, on an element-by-element basis, that the accused product performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented product.” Verinata Health v. Ariosa Diagnostic. “Summary judgment of noninfringement is proper when no reasonable jury could find that every limitation recited in a properly construed claim is found in the accused device either literally or under the doctrine of equivalents.” Advanced Steel Recovery v. X-Body Equipment.
| Varian Medical Systems, Inc. v. Elekta AB et al | D. Del. 2016 | COMPLAINT FOR DECLARATORY JUDGMENT |
| Samsung Electronics Co, Ltd. et al v. IXI Mobile (R&D) Ltd. et al | N.D. Cal. 2019 | COMPLAINT FOR DECLARATORY JUDGMENT OF PRECLUSION, NONINFRINGEMENT, AND INVALIDITY |
| Mitek Systems, Inc. v. United Services Automobile Association | N.D. Cal. 2019 | COMPLAINT FOR DECLARATORY JUDGMENT |
| Google Inc. v. SimpleAir, Inc. et al | C.D. Cal. 2016 | COMPLAINT |
| Time Warner Cable Inc. v. OpenTV,Inc. et al | N.D. Cal. 2016 | COMPLAINT FOR DECLARATORY JUDGMENT |
| Ameristar Perimeter Security Inc. v. RSA Protective Technologies, LLC | D. Del. 2020 | COMPLAINT FOR DECLARATORY JUDGMENT |
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Obviousness:
“A claimed invention is unpatentable if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious to one of ordinary skill in the relevant art. 35 U.S.C. § 103. Obviousness is a legal question based on underlying factual determinations. Among the factual determinations are the scope and content of the prior art, differences between the prior art and the claims at issue, the level of ordinary skill in the pertinent art, and any objective indicia of non-obviousness. Also a fact question, of significance here, is whether the relevant skilled artisan had a motivation to combine pieces of prior art in the way eventually claimed in the patent at issue.” Intercontinental Great Brands v. Kellogg N. Am.
| Parrot S.A. et al v. QFO Labs, Inc. | D. Del. 2016 | COMPLAINT FOR DECLARATORY JUDGMENT |
| Samsung Electronics Co, Ltd. et al v. IXI Mobile (R&D) Ltd. et al | N.D. Cal. 2019 | COMPLAINT FOR DECLARATORY JUDGMENT OF PRECLUSION, NONINFRINGEMENT, AND INVALIDITY |
Enablement:
“Enablement requires that “the specification teach those in the art to make and use the invention without undue experimentation. A claim is not enabled when, at the effective filing date of the patent, one of ordinary skill in the art could not practice their full scope without undue experimentation.” Idenix Pharm. LLC v. Gilead Scis.
| Merck Sharp & Dohme Corp. v. Genentech, Inc. et al | C.D. Cal. 2016 | COMPLAINT FOR DECLARATORY JUDGMENT OF INVALIDITY AND NONINFRINGEMENT |
Written Description:
“This written description requirement is met when the specification clearly allows persons of ordinary skill to recognize that the inventor invented what is claimed. In other words, the test for sufficiency is whether the specification reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. This test involves an inquiry into the four corners of the specification from the perspective of a person of ordinary skill.” In re Glob. IP Holdings.
| Parrot S.A. et al v. QFO Labs, Inc. | D. Del. 2016 | COMPLAINT FOR DECLARATORY JUDGMENT |
| Merck Sharp & Dohme Corp. v. Genentech, Inc. et al | C.D. Cal. 2016 | COMPLAINT FOR DECLARATORY JUDGMENT OF INVALIDITY AND NONINFRINGEMENT |
Subject-Matter Eligibility:
“A claim falls outside § 101 where (1) it is directed to a patent-ineligible concept, i.e. , a law of nature, natural phenomenon, or abstract idea, and (2), if so, the particular elements of the claim, considered both individually and as an ordered combination, do not add enough to ‘transform the nature of the claim’ into a patent-eligible application. The first stage of the Alice inquiry looks at the focus of the claims, their character as a whole; and the second stage of the inquiry (where reached) looks more precisely at what the claim elements add—specifically, whether, in the Supreme Court’s terms, they identify an inventive concept in the application of the ineligible matter to which (by assumption at stage two) the claim is directed.” SAP Am., Inc. v. Investpic (parenthesis in original).
| Yahoo! Inc. v. Kudelski SA et al | N.D. Cal. 2016 | COMPLAINT FOR DECLARATORY JUDGMENT |
| The Tie Bar Operating Co., LLC v. Landmark Technology, LLC | S.D.N.Y. 2018 | COMPLAINT |
Obviousness-Type Double Patenting:
“Non-statutory, or obviousness-type, double patenting is a judicially created doctrine designed to foreclose ‘claims in separate applications or patents that do not recite the ‘same’ invention, but nonetheless claim inventions so alike that granting both exclusive rights would effectively extend the life of patent protection…. The core principle is that, in exchange for a patent, an inventor must fully disclose his invention and promise to permit free use of it at the end of his patent term. Prohibiting double patenting prevents a patentee from obtaining sequential patents on the same invention and obvious variants, to thereby effectively manufacture a timewise extension of its patent exclusivity through a later-expiring patent.” Novartis Pharms. v. Breckenridge Pharm.
| Merck Sharp & Dohme Corp. v. Genentech, Inc. et al | C.D. Cal. 2016 | COMPLAINT FOR DECLARATORY JUDGMENT OF INVALIDITY AND NONINFRINGEMENT |
| Alere Inc v. Institut Pasteur et al | N.D. Cal. 2017 | COMPLAINT FOR DECLARATORY JUDGMENT |
Inequitable Conduct:
“Inequitable conduct has two separate requirements: materiality and intent. As a general matter, the materiality required to establish inequitable conduct is but-for materiality. A prior art reference is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art…. In addition to proving the materiality of withheld references, the accused infringer must prove that the patentee acted with the specific intent to deceive the PTO…. Proving that the applicant knew of a reference, should have known of its materiality, and decided not to submit it to the PTO does not prove specific intent to deceive. In a case involving nondisclosure of information, clear and convincing evidence must show that the applicant made a deliberate decision to withhold a known material reference.” Regeneron Pharms., Inc. v. Merus N.V.
| Google Inc. v. SimpleAir, Inc. et al | C.D. Cal. 2016 | COMPLAINT |
| Intel Corporation v. Tela Innovations, Inc. | N.D. Cal. 2018 | COMPLAINT FOR DECLARATORY JUDGMENT OF NONINFRINGEMENT AND UNENFORCEABILITY |
| Oticon A/S et al v. GN Hearing A/S | D. Minn. 2017 | COMPLAINT |
| CertainTeed Gypsum, Inc. v. Pacific Coast Building Products, Inc. et al | N.D. Cal. 2019 | PLAINTIFF’S COMPLAINT FOR DECLARATORY JUDGMENT |
Prosecution Laches:
Prosecution laches is an equitable defense to a charge of patent infringement. The doctrine “may render a patent unenforceable when it has issued only after an unreasonable and unexplained delay in prosecution that constitutes an egregious misuse of the statutory patent system under the totality of the circumstances…. [P]rosecution laches’ requirement of an unreasonable and unexplained delay includes a finding of prejudice, as does any laches defense.” Cancer Research Technology v. Barr Laboratories.
| Merck Sharp & Dohme Corp. v. Genentech, Inc. et al | C.D. Cal. 2016 | COMPLAINT FOR DECLARATORY JUDGMENT OF INVALIDITY AND NONINFRINGEMENT |
| LG Electronics, Inc. et al v. Personalized Media Communications LLC | D. Del. 2015 | COMPLAINT FOR DECLARATORY JUDGMENT |
Equitable Estoppel / Promissory Estoppel:
“Equitable estoppel serves as an absolute bar to a patentee’s infringement action. The defense consists of three elements: (1) the patentee engages in misleading conduct that leads the accused infringer to reasonably infer that the patentee does not intend to assert its patent against the accused infringer; (2) the accused infringer relies on that conduct; and (3) as a result of that reliance, the accused infringer would be materially prejudiced if the patentee is allowed to proceed with its infringement action. Misleading conduct may include the patentee’s “specific statements, action, inaction, or silence where there was an obligation to speak.” John Bean Techs. Corp. v. Morris & Assocs.
| Intel Corporation v. Tela Innovations, Inc. | N.D. Cal. 2018 | COMPLAINT FOR DECLARATORY JUDGMENT OF NONINFRINGEMENT AND UNENFORCEABILITY |
| Cisco Systems, Inc. v. Spherix Incorporated | D. Del. | COMPLAINT |
Patent Ownership:
| FIRST DATA CORPORATION et al v. INSELBERG et al | D.N.J. 2015 | COMPLAINT AND DEMAND FOR TRIAL BY JURY |
Res Judicata/Claim Preclusion:
| Samsung Electronics Co, Ltd. et al v. IXI Mobile (R&D) Ltd. et al | N.D. Cal. 2019 | COMPLAINT FOR DECLARATORY JUDGMENT OF PRECLUSION, NONINFRINGEMENT, AND INVALIDITY |
Covenant Not To Sue:
| Intel Corporation v. Tela Innovations, Inc. | N.D. Cal. 2018 | COMPLAINT FOR DECLARATORY JUDGMENT OF NONINFRINGEMENT AND UNENFORCEABILITY |