Patentees Can File DJ Actions, Too: Complaint in Middle District of GA Provides Example
If the controversy requirement is met by a sufficient allegation of immediacy and reality, we see no reason why a patentee should be unable to seek a declaration of infringement against a future infringer when a future infringer is able to maintain a declaratory judgment action for noninfringement under the same circumstances.
On December 5, 2012, Merial Limited and Merial SAS (collectively “Merial”) filed a “Declaratory Judgment Complaint for Patent Infringement” in the Athens Division against Ceva Animal Health, LLC (“Ceva”), alleging a “real and immediate controversy concerning Ceva's infringement of [U.S. Patent No. 6,096,329 (“the ’329 Patent”)] under 35 U.S.C. § 271.”
the assignee of the ’329 Patent, and that Merial Limited received an exclusive license under that patent from Merial S.A.S.
Ceva, according to the complaint, is based in Rutherford, New Jersey, and its parent company is Ceva Santé Animale, based in France (referred to in this blog post as “the French parent company”). Merial alleges that Ceva intends to begin selling infringing products in the United States “in approximately the spring of 2013.” More specifically, the complaint includes the following allegations, made upon information and belief:
Merial’s complaint expresses unwillingness to grant that license “or otherwise to relinquish its legal right to exclude others from exploiting its patented inventions claimed in the ’329 Patent.” Merial prays for a judgment that Ceva’s planned products infringe the ’329 Patent, for preliminary and permanent injunctive relief, for a declaration that any infringement “has been and is willful,” and for awards of specified forms of monetary relief under the Patent Act, including those available for an “exceptional case.” Compensatory damages and interest thereon are requested “if necessary at some future date.”
The case is Merial Ltd. and Merial SAS v. Ceva Animal Health, LLC., No. 3:12-cv-154 (CDL), filed 12/05/12 in the U.S. District Court for Middle District of Georgia, Athens Division, assigned to U.S. District Judge Clay D. Land.
 Elecs. for Imaging, Inc. v. Coyle, 394 F.3d 1341, 1345 (Fed. Cir. 2005) (quoting BP Chems. Ltd. v. Union Carbide Corp., 4 F.3d 975, 977 (Fed. Cir. 1993)).