D. Mass. Patent Litigation Update: April 2023

This is part of a series of articles discussing recent orders of interest issued in patent cases by the United States District Court for the District of Massachusetts.

In Ocean Semiconductor LLC v. Analog Devices, Inc., No. 1:20-cv-12310, Judge Pattis B. Saris denied the Plaintiff’s Motion for Extension of Time to File a Second Amended Complaint, stating that “[t]his is an old case and an open-ended extension is unwarranted. If a Third Amended Complaint is appropriate, plaintiff may move to amend.”

In Littelfuse, Inc. v. Mersen USA Newburyport-MA, LLC, No. 17-cv-12375, Judge Talwani denied the Plaintiff’s motion to dismiss the Defendant’s counterclaim for declaratory judgment of non-infringement regarding an unaccused device under Rules 12(b)(1) and (b)(6).

The Court first rejected the Plaintiff’s contention that no “meaningful preparation” for making or using a potentially infringing product has occurred, instead crediting the Defendant’s allegation that “not only that it possesses a potentially infringing design,” but “the potentially infringing device has been ordered.”

Next, the Court held that the Defendant’s apprehension of suit was “sufficient to establish [declaratory judgment] jurisdiction.” Here, the Plaintiff has maintained a patent infringement action against the Defendant and refused to either confirm non-infringement or promise not to sue with respect to the unaccused device, suggesting the existence of “an active and substantial controversy.”

The Court also found that concerns about issuing an advisory opinion due to the variability of the subject of the declaratory judgment action, in particular as to its potentially infringing features, were not present in this case because the Defendant has ordered the potentially infringing device from its manufacturer, leaving its “preliminary drawings” with “no bearing on the analysis.”

Accordingly, the Court found the Defendant’s counterclaim for declaratory judgment satisfied the immediacy and reality requirements under the Declaratory Judgment Act.