United States District Court, S.D. New York
MEMORANDUM OPINION AND ORDER
LAURATAYLORSWAIN United States District Judge
BroadSign International, Inc. (“Plaintiff” or
“BroadSign”) brings this action against Defendant
T-Rex Property AB (“Defendant” or
“T-Rex”), seeking a declaratory judgment of
non-infringement of U.S. Patent No. RE39, 470 (“the
‘470 patent”), U.S. Patent No. 7, 382, 334
(“the ‘334 patent”), and U.S. Patent No. 6,
420, 603 (“the ‘603 patent”) (collectively,
the “Patents-in-Suit”), as well as a declaratory
judgment that BroadSign has intervening rights with respect
to the ‘470 patent.
Court has jurisdiction of this action pursuant to 35 U.S.C.
§§ 271, et seq., and 28 U.S.C.
§§ 1331, 1338, 2201, and 2202.
moves pursuant to Federal Rule of Civil Procedure 12(b)(1) to
dismiss each of Plaintiff's claims for lack of subject
matter jurisdiction. T-Rex asserts that there is no case or
controversy between BroadSign and T-Rex.
Court has reviewed thoroughly all of the parties'
submissions and arguments. For the following reasons, the
motion to dismiss is granted.
following recitation of facts is drawn from the Amended
Complaint (Docket Entry No. 10, Amended Complaint (“Am.
Compl.”)), and from affidavits and exhibits submitted
by both parties in connection with this motion
supplies “hardware and software solutions to operators
of networks of digital displays.” (Am. Compl. ¶
10.) Defendant is the “assignee and owner of the right,
title, and interest in and to the Patents-in-Suit, ”
which concern the control and coordination of digital
displays. (Am. Compl. ¶¶ 8, 9.) Over the last
several years, T-Rex has sued “at least five” of
BroadSign's customers, which are various entities that
make, use, or sell complete digital signage systems,
“for [direct] patent infringement on one or more of the
Patents-In-Suit.” (Am. Compl. ¶ 11.) As a result,
Plaintiff has received “numerous requests for
indemnification” from its customers, who have
identified provisions of their respective license agreements
that support their requests. (Declaration of Sandra
Beauchesne in Opp'n to Def.'s Mot. to Dismiss
(“Beauchesne Decl.”), Docket Entry No. 23,
¶¶ 13, 20, Ex. D, I, J.)
21, 2016, BroadSign contacted T-Rex to request a meeting with
T-Rex to discuss a potential business agreement after T-Rex
had initiated lawsuits against BroadSign's customers.
(Beauchesne Decl. ¶ 15.) In those lawsuits, T-Rex
identified as allegedly directly infringing products which
were, at least in part, sold and delivered by
asserts that the parties have “had direct discussions
and in-person meetings in which T-Rex has demanded that
BroadSign take a license to the [P]atents-in-[S]uit” to
stop T-Rex's suits against BroadSign's customers.
(Am. Compl. ¶ 15.) On June 28, 2016, BroadSign's
President and CEO, as well as its outside patent consultant,
traveled to Sweden and met with T-Rex's principals.
(Beauchesne Decl. ¶ 15.) No agreement was reached during
that meeting. (Id.) The parties continued
communicating via email, phone, and Skype throughout the
following weeks. (Declaration of Mats Hylin in Supp. of Mot.
to Dismiss (“Hylin Decl.”), Docket Entry No. 27,
¶¶ 11-14.) While the negotiations were ongoing in
late June 2016, but before the parties had reached any
agreement that T-Rex would not initiate suit against any
additional BroadSign customers, T-Rex informed BroadSign that
it had sued another of BroadSign's customers. (Hylin
Decl. Exhibit C.) The parties continued their discussions
after this notification.
9, 2016, T-Rex sent a draft license agreement to BroadSign,
under which, “in exchange for an undetermined payment
by BroadSign, T-Rex would give BroadSign a fully paid[-]up[,
] non-exclusive license to practice [the Patents-In-Suit],
” as well as “‘all other Patents that are
now owned or controlled by T-Rex on the United States and
Canada . . .', ” and which would protect
BroadSign's customers “to the extent they operate
digital display systems consisting of BroadSign's
products.” (Beauchesne Decl. ¶ 16 (citing Exhibit
P, Docket Entry No. 23-43).) The accompanying email stated
that T-Rex was “[amenable] to receiving edits and input
from BroadSign concerning the licensing agreement.”
(Hylin Decl., ¶ 15.) Plaintiff asserts Defendant sent
that agreement “without prior discussion [between the
parties] of a license.” (Beauchesne Decl. ¶ 16.)
T-Rex alleges that BroadSign requested the draft agreement
and that BroadSign's CEO threatened to sue T-Rex. (Hylin
Decl. ¶¶ 3, 10.) Plaintiff proffers that BroadSign
interpreted the proposed license agreement as a
“demand by T-Rex that BroadSign take a license to the
[P]atents-in-[S]uit to prevent [the initiation of] further
patent infringement actions against BroadSign's
customers.” (Am. Compl. ¶ 16.) Plaintiff allegedly
considered the proposed license agreement, “coupled
with” the news of a[n additional, ] recently-filed
patent infringement action against yet another BroadSign
customer, to be “a veiled threat that if
BroadSign did not take a license, T-Rex would continue to sue
BroadSign's customers and perhaps BroadSign
itself.” (Beauchesne Decl. ¶¶ 17-18.)
communicated its dissatisfaction with this course of events
in a July 17, 2016, email, to which T-Rex responded,
apologizing for potential misunderstandings and seeking
further “constructive dialogue.” (Hylin Decl.
¶ 16, Ex. F.) Communications between the parties ended
shortly thereafter. (Hylin Decl. ¶ 16.) BroadSign filed
this action for declaratory judgment on September 15, 2016.