                IN THE UNITED STATES DISTRICT COURT
                    FOR THE DISTRICT OF COLUMBIA


EPOS TECHNOLOGY LTD.            :
                                :
v.                              :   Civil Action: WMN1-07-0416
                                :
PEGASUS TECHNOLOGIES LTD.       :

                            MEMORANDUM

     Before the Court is Defendant’s motion to dismiss, or in

the alternative, for a more definite statement.   Paper No. 17.

The motion is fully briefed.   Upon review of the pleadings and

the applicable case law, the Court determines that no hearing is

necessary (Local Rule 105.6) and that Defendant’s motion will be

denied.

     Plaintiff is an Israeli technology company that, since its

inception in 2003, has worked to develop advanced digital

positioning technology.   Opp’n, Decl. of Oded Turbahn (Turbahn

Decl.) ¶ 2.   Recently, Plaintiff developed two products which

allow a person to take notes with a wireless digital pen that

then appear in handwritten or typewritten form on a computer.

Id. ¶ 3.   Plaintiff alleges, and for the purposes of this motion

Defendant does not submit any challenging evidence, Reply at 2

n.1, that Plaintiff has been preparing the United States’ market


1
  This case was reassigned on June 19, 2009, from Judge Richard
W. Roberts to the undersigned as a visiting judge from the
United States District Court for the District of Maryland
sitting by designation.
for its product since 2006.    Plaintiff has discussed the digital

pen in print and television interviews in the United States and

in 2007, Plaintiff sent employees to a computer electronics show

in Las Vegas where they demonstrated the digital pen and handed

out sample pens.   Id. ¶ 10-18.   In all, Plaintiff alleges that

its employees have made approximately ten trips to the United

States to market the pen.    Id. ¶ 14.

     Defendant also develops and markets digital pens.      Id. ¶ 8.

On December 31, 2006, Defendant, through its counsel, sent a

letter to Plaintiff and several of Plaintiff’s investors stating

that it was Defendant’s belief that Plaintiff’s “ultrasonic

digital pen product . . . infringes one or more claims of

[Defendant’s patents].”2    Compl., Ex. E.   The letter requested

that Plaintiff “forbear from making, using and/or selling the

infringing product” and stated that Defendant “is determined to

vigorously enforce its intellectual property and will weigh all

its legal options.”   Id.   In addition to sending the letter to

several of Plaintiff’s investors, Defendant has told a number of

Plaintiff’s investors, customers and potential business partners

that Plaintiff is infringing Defendant’s patents and that

Defendant intends to sue Plaintiff.      Turbahn Decl. ¶¶ 21-22, 24;

Opp’n, Decl. of Yoav Hoshen (Hoshen Decl.) ¶¶ 2-4.

2
  In particular, the patents at issue are U.S. Patent Nos.
6,392,330, 6,724,371, 6,841,742, and 6,326,565 and will be
referred to hereafter as “Defendant’s Patents.”

                                  2
     Plaintiff alleges that it had intended its digital pen to

be on the United States’ market in the first half of 2007, but

that Defendant’s accusations resulted in Plaintiff’s deals

closing more slowly (or not at all), and thus, at the time

briefing on this motion was submitted,3 Plaintiff’s new

expectation was that the pen would not be on the market in the

United States until the Fall of 2007.   In order to go forward

with their planned release, Plaintiff filed this action under

the Declaratory Judgment Act, 28 U.S.C. § 2201(a), and asks the

Court to declare Defendant’s Patents to be invalid.

     In moving for dismissal, Defendant argues that this Court

lacks subject-matter jurisdiction and that the Complaint should

be dismissed under Fed. Rule Civ. P. 12(b)(1).   On such a

motion, “the plaintiff bears the burden of establishing that the

court has subject-matter jurisdiction.”   Mutual Pharm. Co., Inc.

v. Pfizer Inc., 307 F. Supp. 2d 88, 91-92 (D.D.C. 2004)

(internal citations omitted).   In ruling on a motion under Fed.

R. Civ. P 12(b)(1), the court must accept the complaint’s well-

pled factual allegations as true and draw all reasonable

inferences in the plaintiff’s favor, but where the motion to

dismiss concerns a dispute over the facts alleged to establish


3
  This motion became ripe on July 24, 2007. No substantive
motions have since been submitted. Accordingly, this Court will
hold a telephone status conference on August 12, 2009, at 9:45
AM, to be initiated by Plaintiff’s counsel.

                                 3
subject matter jurisdiction, the court may not deny the motion

to dismiss merely by assuming the truth of the facts alleged by

the plaintiff and disputed by the defendant.    Citizen Elect.

Co., Ltd. v. Osram GmbH, 377 F. Supp. 2d 149, 152 (D.D.C. 2005)

(internal quotations omitted).    Instead, the court “must go

beyond the pleadings and resolve any disputed issues of fact the

resolution of which is necessary to a ruling upon the motion to

dismiss.”   Id.

     Defendant alleges that the Court lacks subject-matter

jurisdiction because no justiciable case or controversy exists

under the Declaratory Judgment Act.    The Declaratory Judgment

Act provides that “[i]n a case of actual controversy within its

jurisdiction . . . any court of the United States, upon the

filing of an appropriate pleading, may declare the rights and

other legal relations of any interested party seeking such

declaration, whether or not further relief is or could be

sought.”    28 U.S.C. §2201(a).   The requirement that there be a

“case of actual controversy” has been interpreted to refer “to

the type of ‘Cases’ and ‘Controversies’ that are justiciable

under Article III.”   Medimmune, Inc. v. Genentech, Inc., 549

U.S. 118, 127 (2007) (internal citations omitted).    Until

recently, the Federal Circuit employed a two-part test to

determine the existence of a sufficient “case or controversy”:

(1) whether conduct by the patentee creates a reasonable

                                   4
apprehension on the part of the declaratory judgment plaintiff

that it will face an infringement suit; and (2) whether conduct

by the declaratory judgment plaintiff potentially constitutes

infringing activity or demonstrates concrete steps taken with

the intent to conduct such activity.   SanDisk Corp. v.

STMicroelectronics, Inc., 480 F.3d 1372, 1379 (Fed. Cir. 2007).

       In 2007, however, the Supreme Court rejected the Federal

Circuit’s “reasonable apprehension test” in MedImmune, 549 U.S.

at 132, n. 11.   The specific question the Court considered in

that case was whether Article III and the Declaratory Judgment

Act require “a patent licensee to terminate or breach its

license agreement before it can seek a declaratory judgment that

the underlying patent is invalid, unenforceable, or not

infringed.”   Id. at 120-21.   MedImmune was a drug manufacturer

that entered into a licensing agreement with a patentee,

Genentech, allowing it to sell products the sale of which would

otherwise infringe on one or more claims of Genentech’s patents.

Id. at 121.   The Court held that subject matter jurisdiction

existed despite the fact that “the continuation of royalty

payments [by MedImmune] makes what would otherwise be an

imminent threat at least remote, if not inexistent.”   Id. at

128.

       In coming to this conclusion, the Court specifically

analyzed and rejected the Federal Circuit’s “reasonable

                                  5
apprehension of suit” test and stated that “[t]he rule that a

plaintiff must destroy a large building, bet the farm, or (as

here) risk treble damages and the loss of 80 percent of its

business, before seeking a declaration of its actively contested

legal rights finds no support in Article III.”   Id. at 134.

More generally, the Supreme Court reiterated that in patent

cases, as in all other cases, the general rules regarding

Article III and Declaratory Judgment Act jurisdiction apply.

The Court stated that “[t]he dilemma posed . . . [by] the choice

between abandoning his rights or risking prosecution is ‘a

dilemma that it was the very purpose of the Declaratory Judgment

Act to ameliorate.’”   Id. at 129 (quoting Abbott Laboratories v.

Gardner, 387 U.S. 136, 152 (1967)).

     Declaratory judgment jurisdiction in patent cases thus

requires that the dispute be “definite and concrete, touching

the legal relations of parties having adverse legal interests”;

“real and substantial”; and “admit of specific relief through a

decree of conclusive character, as distinguished from an opinion

advising what the law would be upon a hypothetical state of

facts.”   Id. at 127 (internal quotation omitted).   In short, the

question “is whether the facts alleged, under all the

circumstances, show that there is a substantial controversy,

between parties having adverse legal interests, of sufficient

immediacy and reality to warrant the issuance of a declaratory

                                 6
judgment.”    Id. (internal quotations omitted).   Since MedImmune,

the Federal Circuit has held that a substantial controversy

exists “where a patentee asserts rights under a patent based on

certain identified ongoing or planned activity of another party,

and where that party contends that it has the right to engage in

the accused activity without license.”    SanDisk, 480 F.3d at

1381.

        Defendant alleges that there is no case or controversy in

the present matter because “[t]he allegedly non-infringing

products have not been specifically identified, and there is no

allegation that the design of the allegedly non-infringing

products has been finalized, or that they are being manufactured

in or being exported to the United States.”    Mot. at 9.   Thus,

Defendant argues, any declaratory judgment regarding Defendant’s

Patents would amount to no more than an advisory opinion, based

on a set of hypothetical facts.

        Defendant’s challenge is defective as a matter of law.

Following Defendant’s argument to its logical conclusion,

Plaintiff could only challenge the validity and enforceability

of its digital pen by selling the allegedly infringing pen and

thereby making itself a possible infringer.    As noted above,

however, both the Supreme Court and the Court of Appeals for the

Federal Circuit have reaffirmed that a potential infringer need




                                   7
not force itself into the position of becoming an infringer

before bringing an action under the Declaratory Judgment Act.

     A declaratory judgment plaintiff need only show “under ‘all

the circumstances’ an actual or imminent injury caused by the

defendant that can be redressed by judicial relief and that is

of ‘sufficient immediacy and reality to warrant the issuance of

a declaratory judgment.”   Teva Pharm. USA, Inc. v. Novartis

Pharm. Corp., 482 F.3d 1330, 1338 (Fed. Cir. 2007).    Plaintiff

has met these requirements.   Plaintiff has alleged an actual and

imminent injury by Defendant.   As noted above, Plaintiff alleges

that Defendant’s accusations regarding possible infringement by

Plaintiff’s digital pen have caused investor relationships to

sour and resulted in Plaintiff’s inability to release its new

product into the United States’ market.   Additionally, the

injury alleged by Plaintiff is immediate and real.    Plaintiff

alleges that it had planned to release the pen in early 2007,

but because of actions taken by Defendant, it has had to push

that date back.

     Defendant responds that because Plaintiff has changed its

intended release date, the potentially infringing act of selling

the pen in the United States is not imminent.   In support of

this argument, Defendant likens Plaintiff’s situation to that of

the declaratory judgment plaintiff in Benitec Australia, Ltd. v.

Nucleonics, Inc., 495 F.3d 1340 (Fed. Cir. 2007).     In that case,

                                 8
Benitec sued Nucleonics for infringing Benitec’s gene-therapy

patent.   Id. at 1342.    Nucleonic initially moved to dismiss on

the basis that it was years away from introducing any infringing

gene-therapy drug products, but eventually amended its answer to

include a counterclaim seeking a declaration that the patent was

invalid and unenforceable.    Id. at 1342-43.   After Benitec

dismissed its own complaint in light of an unfavorable Supreme

Court decision, the district court dismissed Nucleonic’s

counterclaim for lack of jurisdiction and the Federal Circuit

affirmed.   Id. at 1343.    In its opinion, the Federal Circuit

noted that the parties agreed that Nucleonic’s activities

related to human gene-therapy drug treatment4 could not be

considered infringing unless and until Nucleonics filed a new

drug application (NDA) with the Food and Drug Administration

(FDA).    Id. at 1346.   Nucleonic did not anticipate filing an

NDA, however until “at least 2010-12, if ever,” and its current

activities consisted entirely of developing and submitting

(unidentified) preliminary information to the FDA.    Id.   Such

circumstances, the Federal Circuit found, did not “prove the

immediacy and reality required for a declaratory judgment.”




4
  The Court also discussed Nucleonic’s activities related to
animal gene-therapy drug treatment in a separate portion of the
opinion.


                                   9
     Although Plaintiff, at the time of briefing, has not yet

entered the United States market, it is clear that Plaintiff’s

situation is markedly different from that of Nucleonic.    While

Nucleonic admitted that there was a possibility that it would

never file an NDA, and therefore, a possibility it would never

participate in the allegedly infringing activity, Plaintiff has

announced its intention to enter the United States market as

soon as possible.    Additionally, Plaintiff alleges that the

reason it has not yet entered the United States market is

because of the activity of Defendant – the very activity

Plaintiff’s declaratory judgment complaint attempts to remedy.

Accordingly, this Court finds that Plaintiff’s Complaint does

present an actual case or controversy.

     Defendant next argues that, even if the Court finds an

actual case or controversy, it should decline to exercise

declaratory judgment jurisdiction.     The Declaratory Judgment Act

allows, but does not mandate, a court to “declare the rights and

other legal relations of any interested party.”    28 U.S.C. §

2201(a).   “This text has long been understood to confer on

federal courts unique and substantial discretion in deciding

whether to declare the rights of litigants.”    MedImmune, 549

U.S. at 136.   District courts are to consider any “equitable,

prudential, and policy arguments in favor of such discretionary

dismissal.”    Id.   Despite quoting this language in its motion

                                  10
and reply, Defendant does not provide any such argument.

Instead, Defendant simply restates its original argument that

the fact that Plaintiff has not yet sold its product in the

United States means that declaratory judgment jurisdiction does

not exist.   As stated above, this Court disagrees and, in the

absence of grounds to do otherwise, will exercise its

discretionary declaratory judgment jurisdiction.5

     Finally, Defendant asks that, if its motion to dismiss is

denied, the Court require Plaintiff to make a more definite

statement pursuant to Fed. R. Civ. P. 12(e).   A motion for a

more definite statement is “typically disfavored by the courts,”

Rahman v. Johanns, 501 F. Supp. 2d 8, 19 (D.D.C. 2007), and

properly filed only “where a plaintiff’s complaint is

‘unintelligab[le],’ not where a complaint suffers for ‘lack of

detail.’”    Lindsey v. United States, No. 05-1761, 2009 WL

1110900, at *3 (D.D.C. April 27, 2009) (quoting Towers Tenant

Ass’n v. Towers Ltd. P’ship, 563 F. Supp. 566, 569 (D.D.C.

1983)).   Courts have found that if the information sought by the

5
  Defendant also alleges that Plaintiff has failed to state a
claim upon which relief can be granted. Defendant argues that
Plaintiff “has failed to allege any infringing activity, and has
failed to allege any imminent infringing activity in the United
States[,]” and has thus, failed to state a claim. Despite the
use of a different Federal Rule, Defendant’s argument for
dismissal under Fed. R. Civ. P. 12(b)(6) is exactly the same as
its argument under 12(b)(1). Having determined that this
argument fails and that the Court does in fact possess subject
matter jurisdiction over Plaintiff’s claims, the Court will also
deny the motion under rule 12(b)(6).

                                 11
motion is obtainable through discovery, the motion should be

denied.    See, e.g., Towers (denying motion for a more definite

statement because details such as “dates, times, names and

places” are “the central object of discovery, and need not be

pleaded”).

     Plaintiff’s pleading is not confusing and does not violate

Fed. R. Civ. P. 8(a)’s requirement of “a short and plain

statement of the claim showing that the pleader is entitled to

relief.”   The counts at issue in this case revolve around the

Plaintiff’s allegation that it does not directly or indirectly

infringe any of the four patents at issue and that those patents

are invalid and unenforceable.   Compl. ¶ 23-46.   Given that

Defendant has sent a letter stating that it believes that

Plaintiff’s digital pen infringes the patents at issue, it is

safe to say that Defendant can deny these claims in its answer

without prejudice to itself.   Specific facts are not necessary

in a Complaint, instead, the statement need only “give the

defendant fair notice of what the . . . claim is and the grounds

upon which it rests.”   Bell Atlantic v. Twombly, 550 U.S. 544,

555 (2007).   In this case, any additional details can be

revealed though discovery.




                                 12
     For the foregoing reasons, Defendant’s motion to dismiss,

or in the alternative, for a more definite statement, will be

denied.   A separate order will issue.

                                       /s/_________________
                               William M. Nickerson
                               United States District Judge

Dated: July 20, 2009




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