Judkins v. Ht Window Fashions Corp., Civil Action No. 07-0251.

Citation514 F.Supp.2d 753
Decision Date12 June 2007
Docket NumberCivil Action No. 07-0251.
PartiesRen JUDKINS, Plaintiff, v. HT WINDOW FASHIONS CORP., Defendant.
CourtUnited States District Courts. 3th Circuit. United States District Courts. 3th Circuit. Western District of Pennsylvania

Bryan H. Opalko, Lynn J. Alstadt, Buchanan Ingersoll & Rooney PC, Pittsburgh, PA, for Plaintiff.

Arne M. Olson, Joseph M. Kuo, Matthew D. Kellam, Olson & Hierl, Chicago, IL, Timothy P. Ryan, Wendy West Feinstein, Eckert, Seamans, Cherin & Mellott, Pittsburgh, PA, for Defendant.

MEMORANDUM and ORDER

GARY L. LANCASTER, District Judge.

This is a patent infringement suit. Plaintiff alleges that defendant's window covering products infringe his patent in violation of the Patent Act, 35 U.S.C.A. § 1, et seq. Plaintiff seeks injunctive relief, damages, and attorneys fees. Defendant has brought counterclaims under the Declaratory Judgement Act alleging that the asserted patent, and a related patent are invalid, unenforceable, and not infringed. Defendant has also brought counterclaims alleging unfair competition, interference with prospective contract, business disparagement, and trade libel.

There are two motions before the court. Plaintiff has moved to dismiss defendant's declaratory judgment counterclaim as to the related patent [doc. no. 20]. Plaintiff contends that we lack subject matter jurisdiction over that action because there is no case or controversy regarding the related patent. Defendant has moved for a preliminary injunction [doc. no. 8]. Defendant seeks to enjoin plaintiff from notifying third parties of his belief that defendant's products infringe his patents.

For the reasons set forth below, both motions will be denied.

I. FACTUAL BACKGROUND

The material facts are not in dispute. Plaintiff, Mr. Judkins, holds many patents in the window coverings field. Two recently issued patents are involved in this case: U.S. Patent Number 7,159,634 (the '634 Patent) and U.S. Patent Number 7,182,120 (the '120 Patent). Simply put, these patents cover tabbed, cellular blinds — those that from the side look like figure eights or narrow honeycombs stacked on top of each other. The '634 Patent covers tabbed single cell blinds and the '120 Patent covers tabbed double cell blinds. Plaintiff does not manufacture or sell window coverings. Rather, he is in the business of licensing his inventions to third parties in exchange for royalties.

Plaintiff alleges that at least one of defendant's products infringes his '120 Patent. In its counterclaims, defendant seeks a declaratory judgment that both the '120 Patent and the related '634. Patent are invalid, unenforceable, and not infringed.

In addition to the patent counterclaims, defendant has also asserted counterclaims based on plaintiff's distribution of a letter notifying the marketplace of defendant's alleged infringement of his patents. Defendant contends that plaintiff has engaged in unfair competition, under federal and state law, interference with prospective contract, commercial disparagement, and trade libel, by distributing such letters. The letter is signed by plaintiffs attorney, and is written on that attorney's letterhead. The letter refers to both the '634 Patent and the '120 Patent and states the attorney's "opinion" that defendant's "`Polaris' product falls within one or more of [the] allowed claims" of the '120 Patent. The letter also states the attorney's "opinion that the sale, offer for sale and use of the `Polaris' tabbed double cell products ... will infringe the ['120] Patent."

Another series of letters is also at issue in this case. In 2005 and 2006, the parties exchanged several letters regarding defendant's alleged infringement of what would become the '634 Patent. Plaintiff claims that these letters prove that defendant redesigned its allegedly infringing first generation single cell product voluntarily, and not as a result of plaintiffs threats of litigation. Therefore, according to plaintiff, there is no case or controversy regarding the '634 Patent.

The first of these letters is dated March 31, 2005. In it, plaintiff accuses defendant of selling tabbed single cell products that infringe the allowed claims of what would ultimately issue as the '634 Patent. In response, defendant asked for a copy of the allowed claims. Plaintiff did not provide defendant with a copy of the allowed claims until June of 2006, more than a year after defendant made its request. In July of 2006 defendant provided plaintiff with samples of its second generation single cell product, explained that it had redesigned, and no longer sold, its first generation product, and denied any allegations of infringement. Plaintiff responded that the second generation single cell Polaris product did not infringe the '634 Patent, but reiterated his belief that the now discontinued first generation product still did.

About six months after the last letter was sent regarding defendant's Polaris products and alleged infringement of the '634 Patent, the '634 Patent issued. About one month after the issuance, and about two weeks before this case was filed, our defendant filed a declaratory judgement action in the United States District Court for the Central District of California seeking a determination that the '634 Patent was invalid, unenforceable, and not infringed. That action was transferred to this court on the grounds that the California court lacked personal jurisdiction over Mr. Judkins. That case, HT Window Fashions Corp. v. Judkins, Civil Action No. 07-0693, has recently been consolidated with this case [doc. no. 27]. The declaratory judgment action filed in California mirrors defendant's declaratory judgment counterclaims in this case.

In short, defendant contends that the '120 Patent and the '634 Patent are invalid and unenforceable because they were obtained as a result of sham litigation and fraud before the federal courts and the Patent and Trademark Office. According to defendant, plaintiff sued another window coverings company, Newell Window Furnishings, Inc., for patent infringement in this court in 2001 in order to overturn a prior determination by the Board of Patent Appeals and Interferences that plaintiff had abandoned, suppressed, or concealed the invention disclosed in U.S. Patent Application Serial Number 08/756,282 (the '282 Application).1 Defendant contends that as part of the alleged scheme, Newell agreed not oppose plaintiff s motion for summary judgment to overturn the Board's decision in exchange for a favorable license under any patent that might issue from the '282 Application.2 In fact, plaintiffs motion for summary judgment was granted, and the Board's decision that plaintiff had abandoned, suppressed, or concealed his invention was overturned. Judkins v. Newell Window Furnishings, Inc., Civil Action No. 01-2211 [doc. no. 30].

In addition, defendant contends that plaintiff and Newell agreed that they would not inform this court of a relevant ruling made in a related federal case. That related case was a patent infringement lawsuit between Newell and another window coverings company, Springs Window, previously filed in the United States District Court for the Northern District of Illinois. In that case, the court held that Newell's patent3 was invalid because Mr. Judkins was the first to invent. Although the '282 Application was not being asserted in the case, the Illinois court went on to observe that while the invention disclosed in the '282 Application enjoyed priority over Newell's patent, plaintiff had abandoned, suppressed, or concealed it, and therefore, would not be able to obtain a patent for it. According to defendant, plaintiff did not inform this court of the Illinois court's comments in order to avoid any preclusive effect that they might have.

II. APPLICABLE LAW
A. The Motion to Dismiss

Plaintiff has filed a motion to dismiss defendant's declaratory judgment counterclaims alleging invalidity, unenforceability, and non-infringement of the '634 Patent under Federal Rule of Civil Procedure 12(b)(1). Plaintiff contends that this court has no subject matter jurisdiction over the declaratory judgment counterclaims because there is no case or controversy regarding the '634 Patent. We first set forth the law applicable to Rule 12(b)(1) motions, and then examine the jurisdictional requirements under the Declaratory Judgment Act.

1. 12(b)(1) Standard

While a Rule 12(b)(6) motion tests the legal sufficiency of a claim, a Rule 12(b)(1) motion is directed to the court's "very power to hear the case." Mortensen v. First Federal Say. and Loan Ass'n, 549 F.2d 884, 891 (3d Cir.1977). There are two types of Rule 12(b)(1) motions: those that attack the complaint on its face, and those that attack subject matter jurisdiction as a matter of fact. Petruska v. Gannon Univ., 462 F.3d 294, 302 n. 3 (3d Cir.2006). When considering a facial attack, "the Court must consider the allegations of the complaint as true," and in that respect such a Rule 12(b)(1) motion is similar to a Rule 12(b)(6) motion. Mortensen, 549 F.2d at 891.

The factual attack differs greatly for here the trial court may proceed as it never could under 12(b)(6) or Fed. R.Civ.P. 56. Because at issue in a factual 12(b)(1) motion is the trial court's jurisdiction ... there is substantial authority that the trial court is free to weigh the evidence and satisfy itself as to the existence of its power to hear the case. In short, no presumptive truthfulness attaches to plaintiffs allegations, and the existence of disputed material facts' will not preclude the trial court from evaluating for itself the merits of jurisdictional claims. Moreover, the plaintiff will have the burden of proof that jurisdiction does in fact exist.

Id.

When faced with a factual attack, a district court must ensure that a Rule 12(b)(1) motion is based on an adequate factual record. Gould Electronics Inc. v. United States, 220 F.3d 169, 177 (3d Cir. 2000); Int'l Ass'n of...

To continue reading

Request your trial
63 cases
  • Ameriprise Bank, FSB v. PNC Bank, Nat'l Ass'n
    • United States
    • U.S. District Court — Western District of Pennsylvania
    • 26 Noviembre 2012
    ...FED. R. CIV. P. 12(b)(1). "Atissue in a Rule 12(b)(1) motion is the court's 'very power to hear the case.'" Judkins v. HT Window Fashions Corp., 514 F.Supp.2d 753, 759 (W.D.Pa. 2007), quoting Mortensen v. First Federal Savings & Loan Association, 549 F.2d 884, 891 (3d Cir. 1977). As the par......
  • PG Publ'g Co. v. Aichele
    • United States
    • U.S. District Court — Western District of Pennsylvania
    • 9 Octubre 2012
    ...R. Civ. P. 12(b)(1). “At issue in a Rule 12(b)(1) motion is the court's ‘very power to hear the case.’ ” Judkins v. HT Window Fashions Corp., 514 F.Supp.2d 753, 759 (W.D.Pa.2007), quoting Mortensen v. First Federal Savings & Loan Association, 549 F.2d 884, 891 (3d Cir.1977). As the party as......
  • Burns v. Alexander
    • United States
    • U.S. District Court — Western District of Pennsylvania
    • 4 Marzo 2011
    ...R. Civ. P. 12(b)(1). “At issue in a Rule 12(b)(1) motion is the court's very power to hear the case.' ” Judkins v. HT Window Fashions Corp., 514 F.Supp.2d 753, 759 (W.D.Pa.2007), quoting Mortensen v. First Federal Savings & Loan Association, 549 F.2d 884, 891 (3d Cir.1977). As the party ass......
  • U.S. Equal Emp't Opportunity Comm'n v. Court of Common Pleas of Allegheny Cnty.
    • United States
    • U.S. District Court — Western District of Pennsylvania
    • 15 Octubre 2014
    ...R. Civ. P. 12(b)(1). “At issue in a Rule 12(b)(1) motion is the court's ‘very power to hear the case.’ ” Judkins v. HT Window Fashions Corp., 514 F.Supp.2d 753, 759 (W.D.Pa.2007), quoting Mortensen v. First Federal Savings & Loan Association, 549 F.2d 884, 891 (3d Cir.1977). As the party as......
  • Request a trial to view additional results
2 books & journal articles
  • Table Of Cases
    • United States
    • ABA Antitrust Library Antitrust Counterattack in Intellectual Property Litigation Handbook
    • 1 Enero 2010
    ...451 (3d Cir. 1966), 137. Jostens, Inc. v. Nat’l Computer Sys., 318 N.W.2d 691 (Minn. 1982), 87. Judkins v. HT Window Fashions Corp., 514 F. Supp. 2d 753 (W.D. Pa. 2007), 176. Juicy Whip, Inc. v. Orange Bang, Inc., 185 F.3d 1364 (Fed. Cir. 1999), 44. K KP Permanent Make-Up, Inc. v. Lasting I......
  • Discovery Issues
    • United States
    • ABA Antitrust Library Antitrust Counterattack in Intellectual Property Litigation Handbook
    • 1 Enero 2010
    ...F.3d at 1349). 64. See, e.g. , Golan v. Pingel Enter., 310 F.3d 1360, 1372–73 (Fed. Cir. 2002); Judkins v. HT Window Fashions Corp., 514 F. Supp. 2d 753, 766 (W.D. Pa. 2007); Smithkline Beecham Corp. v. Apotex Corp., 2005 U.S. Dist. LEXIS 22228, at *6–7 (E.D. Pa. 2005). Discovery Issues 177......

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT