“A declaratory action allows a party ‘who is reasonably at legal risk because of an unresolved dispute, to obtain judicial resolution of that dispute without having to await the commencement of legal action by the other side.’”[1] In the patent litigation context, declaratory judgment actions are frequently brought as preemptive strikes by those who perceive that they will soon be sued by a patentee for infringement. “Declarations of infringement sought by patentees against parties who will allegedly infringe in the future have been less frequently requested, but have nevertheless been allowed to proceed.”[2] As the U.S. Court of Appeals for the Federal Circuit stated over twenty years ago:
A new complaint in the U.S. District Court for the Middle District of Georgia provides an example of a comparatively-rare declaratory judgment action by a patentee.
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.”
As explained in our first post, the ’329 Patent is directed to parasiticides comprised of the chemical compounds fipronil and methoprene, for veterinary treatment of dogs and cats, and the Middle District of Georgia observed that the commercial embodiment of those compositions, sold under the trademark FRONTLINE PLUS, is the leading flea and tick treatment in the United States. The complaint alleges that Merial S.A.S. is
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:
Additionally, Merial alleges that on or around November 7, 2012, the General Counsel of the French parent company contacted Merial, advising that Ceva “intended to launch fipronil and methoprene-containing spot-on flea and tick products in the United States,” stating that Ceva was “‘far down the road’” in its launch preparations, and expressing a desire to obtain a license under the ’329 Patent. The Ceva representative, according to Merial, also threatened to file a lawsuit to invalidate the ’329 Patent if Merial would not grant a license.
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.
[1] 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)).
Categories: Before 2017
Georgia IP Litigation 