Ortho-Tain, Inc. v. Rocky Mountain Orthodontics, Inc., No. 05 C 6656, 2006 WL 3782916 (N.D. Ill. Dec. 20, 2006) (Leinenweber, J.).
Judge Leinenweber dismissed defendant’s, Rocky Mountain Orthodontics ("RMO"), patent-related declaratory judgment counterclaims for lack of subject matter jurisdiction. Plaintiff, Ortho-Tain ("OT"), sued RMO alleging that RMO breached the distributorship agreement between the parties pursuant to which OT manufactured dental appliances (allegedly covered by OT’s patents) and RMO sold those appliances in France. RMO counterclaimed for, among other things, declaratory judgment of noninfringement and unenforceability of OT’s relevant United States patents. RMO argued that OT’s breach of contract and tortious interference suit combined with OT’s warnings to RMO’s customers that RMO was no longer authorized to sell OT products created the requisite reasonable apprehension of suit. The Court, however, held that there was no reasonable apprehension. OT’s suit had been pending for over a year and OT had not added patent claims. OT had also repeatedly stated that the suit was only a contract and tortious interference action. While OT’s statements stopped short of an affirmative disavowal of suit, they were sufficient to prevent a reasonable apprehension of suit.
Additionally, there was no present activity by RMO which constituted infringement. RMO’s counterclaims identified only United States patents, but RMO’s sales activities were all in France. Because there was no evidence submitted of infringing activity in the United States, there was no subject matter jurisdiction for a declaratory judgment action.