Chief Magistrate Judge Thynge Recommends Denial of Motion to Dismiss for Lack of Subject Matter Jurisdiction

November 13, 2017

Publication| Intellectual Property

In Tabletop Media, LLC v. AMI Entertainment Network, LLC, C.A. No. 16-1121-RGA-MPT (D. Del. Oct. 10, 2017), Chief Magistrate Judge Thynge recommended that the Court deny AMI Entertainment Network, LLC’s motion to dismiss for lack of subject matter jurisdiction this action for a declaratory judgment of non-infringement filed by Tabletop Media, LLC, the plaintiff.

In pre-litigation communications, AMI had alleged that the patent-in-suit covered one of Tabletop’s products (which AMI denied), but had not threatened litigation. Before the parties were scheduled to meet to discuss other business opportunities, Tabletop filed this lawsuit. Judge Thynge concluded that these facts demonstrated an actual case or controversy, notwithstanding that AMI made no express threat of litigation: AMI asserted that its patent covered Tabletop’s product and continued to insist on further discussions regarding the patent-in-suit after Tabletop denied its claim. According to the Court, the parties thus had adverse legal interests that could be resolved by a court decision, providing the basis for subject matter jurisdiction.

AMI also urged the Court to recommend a discretionary dismissal of the action to allow the parties to try to resolve the dispute outside of court. Judge Thynge noted that the conclusion that there was an actual controversy between the parties limited the Court’s discretion under the Declaratory Judgment Act, and further stated that the Act was intended to address disputes of this type. No objections were filed to the Report and Recommendation, and it was adopted by Judge Andrews.

Key Point: In deciding whether the Court had subject matter jurisdiction over this declaratory judgment action filed by the party accused of infringement, Chief Magistrate Judge Thynge noted that the patentee had not made a threat of litigation but would not rule out the possibility of suing for infringement.

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