The opinion of the court was delivered by: KAPLAN
LEWIS A. KAPLAN, District Judge.
In the years prior to the creation of the Federal Circuit and the conferral upon it of exclusive jurisdiction of patent appeals, the use of actions for declaratory judgments of patent invalidity and non-infringement in the service of shopping for a favorable forum was raised to a high art form. This case evidences the fact that the practice has not been eliminated despite the fact that all appeals in patent cases go to the same appellate court irrespective of the district in which they are determined.
Defendant Rohm and Haas, Inc. (R&H) in early 1995 advised plaintiff Lonza Inc. ("Lonza"), in substance, that Lonza's sale of a biocide referred to by R&H as "SKI-CIDE" and sold by Lonza as "ISOCIL" might infringe R&H's U.S. patent nos. 4,252,694 (the "'694" patent), 4,265,899 (the "'899" patent), and 5,312,827 (the "'827" patent) and that its method of manufacture might infringe R&H's U.S. patent nos. 5,068,338 (the "'338" patent) and 4,939,266 (the "'266" patent). In December 1995, R&H notified its customers of Lonza's product and warned them that R&H had patents on this product under the '694, '899, and '338 patents.
R&H and Lonza thereafter agreed to negotiate with a view to resolving their dispute. The agreement provided that neither would institute litigation regarding the patents for seven calendar days following the faxed notification of a notice of termination of the negotiations. On August 10, 1996, R&H gave notice of termination. The notice stated, among other things, that R&H "commits that it will not initiate litigation, now or in the future, against Lonza based on [the '694 or '899 patents] with respect to any product currently offered for sale by Lonza."
R&H now moves to dismiss Lonza's claims for declarations with respect to the '694 and '899 patents and to dismiss or stay the claim with respect to the '827 patent in deference to the Eastern District of Pennsylvania action.
A case or controversy exists with respect to a putative claim of patent infringement only where there is:
"both (1) an explicit threat or other action by the patentee, which creates a reasonable apprehension on the part of the declaratory plaintiff that it will face an infringement suit, and (2) present activity which would constitute infringement or concrete steps taken with the intent to conduct such activity." BP Chemicals Ltd. v. Union Carbide Corp., 4 F.3d 975, 978 (Fed. Cir. 1993). Accord, EMC Corp. v. Norand Corp., 89 F.3d 807, 811 (Fed. Cir.), cert. filed, 65 U.S.L.W. 3381 (Nov. 7, 1996) (No. 96-743).
A promise not to sue on a patent eliminates any reasonable apprehension on the part of the declaratory plaintiff that it will face an infringement suit and thus prevents satisfaction of the first prong of the BP Chemicals test. Super Sack Mfg. Corp. v. Chase Packaging Corp., 57 F.3d 1054, 1058-60 (Fed. Cir. 1995), cert. denied, 133 L. Ed. 2d 760, 116 S. Ct. 815 (1996). R&H's express written commitment not to sue on the '694 and '899 patents, particularly coupled with the fact that those patents will expire on February 24 and May 5, 1998, respectively, would seem to eliminate any reasonable apprehension of an infringement suit thereon and require dismissal of Lonza's declaratory claims with respect to those patents.
Lonza counters by arguing that various actions taken by R&H prior to August 10, 1996 created a reasonable apprehension of suit and that the August 10, 1996 letter did not fully dissipate that apprehension. It bases the contention on the fact that the letter committed not to sue only with respect to products then "currently offered for sale by Lonza." It says that Lonza added two new products to its own line in September 1996, after the date of R&H's letter, ...