Akzona Inc. v. EI du Pont de Nemours & Co., Civ. A. No. 84-10 LON.

Decision Date02 June 1987
Docket NumberCiv. A. No. 84-10 LON.
Citation662 F. Supp. 603
CourtU.S. District Court — District of Delaware
PartiesAKZONA INCORPORATED, a corporation of Delaware, d/b/a American Enka B.V., a corporation of The Netherlands, and Aramide Maatschappij Vof, a partnership of The Netherlands, Plaintiffs, v. E.I. du PONT de NEMOURS & COMPANY, Defendant.

COPYRIGHT MATERIAL OMITTED

E. Norman Veasey (argued), and Robert H. Richards, III of Richards, Layton & Finger, Wilmington, Del. (C. Frederick Leydig (argued), and Charles Oslakovic of Leydig, Voit & Mayer, Chicago, Ill., Denis McInerney (argued), and P. Kevin Castel of Cahill, Gordon & Reindel, New York City, Robert Hardy Falk and Jonathan Jobe of Hubbard, Thurman, Turner & Tucker, Dallas, Tex., of counsel), for plaintiffs.

Richard L. Sutton (argued), and Jack B. Blumenfeld of Morris, Nichols, Arsht & Tunnell, Wilmington, Del. (Joseph M. Fitzpatrick and John O'Brien of Fitzpatrick, Cella, Harper & Scinto, New York City, of counsel), for defendant.

LONGOBARDI, District Judge.

Plaintiffs Akzona Incorporated ("Akzona"), Enka B.V. of Holland ("Enka") and Aramide Maatschappij VoF1 have brought this action pursuant to the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202,2 seeking a judgment that six patents relating to aramid fibers assigned to the E.I. du Pont de Nemours & Company ("DuPont") are invalid, unenforceable and non-infringed.3 These high-strength, low density synthetic aramid fibers are manufactured from high molecular weight aromatic polyamide materials, see Docket Item ("D.I.") 1, ¶ 8; N.V. Akzo v. E.I. DuPont de Nemours, 810 F.2d 1148, 1149 (Fed.Cir. 1987) (affirming Akzo, 635 F.Supp. 1336 (E.D.Va.1986)), and are used commercially in roping, tires, aviation parts, bullet-proof clothing and boat hulls. Akzo, 810 F.2d at 1149; see Akzo, 635 F.Supp. 1336. Aramid fibers are sold by DuPont under the trade name Kevlar and by Enka under the name Enka Aramids and the trade name Twaron. Although Plaintiffs are European manufacturers which presently market primarily in Europe, they allege a stake in the American product market that may potentially be threatened by the DuPont patents.4

Plaintiffs also seek treble damages and injunctive relief for alleged violations of the antitrust laws and unfair competition by DuPont. The antitrust claims were previously bifurcated from the patent claims and stayed pending resolution of the patent dispute. See Akzona, supra. DuPont has counterclaimed against all of the Plaintiffs and Akzo, the sole owner of Enka and indirect owner of Akzona, for patent infringement.5

This is the second declaratory judgment suit litigated in this district by Akzona and/or its related corporations seeking to test the validity and enforceability of several of DuPont's aramid fiber patents. The earlier action was dismissed by Judge Schwartz in 1981 for lack of subject matter jurisdiction. Enka B.V. of Arnhem, Holland v. E.I. du Pont, 519 F.Supp. 356 (D.Del.1981). The factual background and issues of this controversy are extensively outlined in both Judge Schwartz's Enka Opinion and this Court's Opinion in Akzona.6 The details need not be repeated here.

On April 18, 1984, six months after this suit was filed, DuPont filed a complaint with the United States International Trade Commission ("ITC") alleging that Plaintiffs were violating section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337, by their unlawful importation into the United States or in their sale of aramid fiber manufactured by a process covered by the '756 patent.7 On November 25, 1985, the ITC ordered that "aramid fiber in the form of fiber, yarn, pulp, staple, chopped fiber, paper, felt, or fabric, made by Plaintiffs ... by a process that, if practiced in the United States, would infringe claim 13 of U.S. Letters Patent 3,767,756 shall be excluded for the remaining life of the patent...." D.I. 168A, In the Matter of Certain Aramid Fibers, Invest. No. 337-TA-194, Order at 3.8 President Reagan took no action to disapprove the ITC's determination and, as such, the Order became final on January 26, 1986. In an opinion issued on December 22, 1986, the United States Court of Appeals for the Federal Circuit upheld the validity and enforceability of the '756 patent and affirmed the ITC Order. See Akzo N.V. v. U.S. Intern. Trade Comm'n, 808 F.2d 1471 (Fed.Cir.1986), cert. denied, ___ U.S. ___, 107 S.Ct. 2490, 96 L.Ed.2d 382 (1987).9

Relying heavily on the outcome of the ITC proceeding and the Federal Circuit's affirmance, DuPont has moved to dismiss Plaintiffs' declaratory judgment action for lack of subject matter jurisdiction. Akzona vigorously disputes the basis of DuPont's motion and has alternatively moved to vacate the stay of the antitrust proceedings.10

The dictates of the Declaratory Judgment Act require that there be an actual controversy ripe for adjudication before jurisdiction vests in a federal district court. This requirement makes certain that constitutional mandates are maintained and ensures that District Courts do not needlessly engage in the process of issuing advisory opinions. Similarly, the constitutional requirement of a "case" or "controversy" requires that the actual controversy continue throughout the pendency of the lawsuit. See, e.g., Preiser v. Newkirk, 422 U.S. 395, 401-02, 95 S.Ct. 2330, 2334, 45 L.Ed.2d 272 (1975); Intern. Medical Prosthetics v. Gore Enterprise, 787 F.2d 572, 575 (Fed. Cir.1986). The issue before the Court is whether the ITC Order banning importation of aramid fibers made by a process that could infringe DuPont's '756 patent has acted to moot the existence of an actual controversy between the parties.

I. DuPONT'S MOTION TO DISMISS
A. Legal Standards

There is some dispute as to the proper characterization of DuPont's motion to dismiss. DuPont has styled its motion as grounded upon a lack of subject matter jurisdiction. Akzona vigorously opposes that characterization and rather seeks to label the issue as mootness. See D.I. 182 at 52; D.I. 221 at 2-3.

DuPont apparently does not contest that, as of the time of filing of the complaint, subject matter jurisdiction did exist.11 While subject matter jurisdiction cannot be conceded by the parties, DuPont has not specifically asserted that this Court never had such jurisdiction over the instant case. Akzona thus argues that this case is distinguishable from Judge Schwartz's decision in Enka. In that case, subject matter jurisdiction never attached. Here, however, Akzona argues that it did attach and that DuPont is now seeking dismissal because of mootness. According to Akzona, DuPont thus bears the burden of showing that the patent claims should be dismissed.

A fundamental principle of federal jurisdiction is that the existence of jurisdiction is determined as of the time the complaint is filed. Smith v. Widman Trucking & Excavating, 627 F.2d 792, 798 (7th Cir. 1980) (noting Dery v. Wyer, 265 F.2d 804, 808 (2d Cir.1959)); see Air Transport Ass'n v. Prof. Air Traf. Control, 516 F.Supp. 1108, 1110 (E.D.N.Y.), aff'd, 667 F.2d 316 (2d Cir.1981). Further, "if jurisdiction exists at the outset of a suit, subsequent events will not divest the court of jurisdiction." Smith, 627 F.2d at 798; see F. Alderete General Contractors v. United States, 715 F.2d 1476, 1480 (Fed.Cir. 1983); Air Transport, 516 F.Supp. at 1110 (noting Federal Dep. Ins. Corp. v. Tisch, 89 F.R.D. 446 (E.D.N.Y.1981)).12

Thus, for example, if diversity jurisdiction is properly obtained at the commencement of a lawsuit, a subsequent change in domicile by a party will not work to destroy that jurisdiction. Smith, 627 F.2d at 798 (noting Smith v. Sperling, 354 U.S. 91, 93 n. 1, 77 S.Ct. 1112, 1113 n. 1, 1 L.Ed.2d 1205 (1957); 1 J. Moore, Federal Practice ¶ 0.741). A similar result follows with the jurisdictional amount (amount in controversy) requirement. Smith, 627 F.2d at 798 (noting Lynch v. Porter, 446 F.2d 225, 228 (8th Cir.1971), cert. denied, 404 U.S. 1047, 92 S.Ct. 711, 30 L.Ed.2d 739 (1972); State Farm Mutual Auto. Ins. Co. v. American Cas. Co., 433 F.2d 1007, 1009 (8th Cir.1970); 1 J. Moore, supra, ¶ 0.913).

Therefore, Rule 12(h)(3), which allows the parties or the court to raise the existence of subject matter jurisdiction at any point along the continuum of a lawsuit, applies if jurisdiction never properly attached in the federal court. Rule 12(h)(3) is designed to ensure that the court only adjudicates cases which are within its limited jurisdiction.

Rule 12 also has application when "constitutional jurisdiction" does not exist, i.e., there is no actual controversy. See, e.g., International Video Corporation v. Ampex Corporation, 484 F.2d 634, 636 (9th Cir.1973); Chamfer Engineering, Inc. v. Tapco Intern., 498 F.Supp. 129, 131-32 (S.D.Tex.1980). As such, if an intervening event serves to destroy the justiciable controversy, Rule 12 provides a tool for the parties and the Court to inquire as to the continued power of the court to adjudicate the cause of action. The language of Rule 12(h)(3) clearly so provides: "whenever it appears by suggestion of the parties or otherwise that the court lacks jurisdiction of the subject matter, the court shall dismiss the action." Fed.R.Civ.P. 12(h)(3).

B. Declaratory Judgment Act

Under section 220113 of the Declaratory Judgment Act, it is essential that "a case of actual controversy within its jurisdiction" exists before a court can proceed to adjudication. See Cutaiar v. Marshall, 590 F.2d 523, 527 (3d Cir.1979); Enka, 519 F.Supp. at 360; Forty-Eight Insulations v. Johns-Manville Products, 472 F.Supp. 385, 393 (N.D.Ill.1979).14 The Act does not provide a basis for jurisdiction in and of itself but, rather, provides a remedy. Cutaiar, supra. This is because federal courts can neither issue advisory opinions, see Coffman v. Breeze Corporations, 323 U.S. 316, 324, 65 S.Ct. 298, 302-303, 89 L.Ed. 264 (1945), nor decide hypothetical or abstract questions. See Electric Bond Co. v. Comm'n., 303...

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