Plaintiff's Declaratory Action Not Anticipatory Litigation Due To Patentee's Delayed Response To Licensing Request

The Central District of California denied a defendant's motion to dismiss or transfer plaintiff's first-filed declaratory judgement action based on defendant's later-filed patent infringement suit in Wisconsin. Though suit was seemingly imminent when defendant advised plaintiff it might be infringing defendant's patents, plaintiff responded by requesting a licensing agreement in lieu of litigation. The court found that plaintiff's action was not anticipatory forum-shopping litigation because plaintiff only filed suit after defendant neglected to respond to its licensing offer.

Plaintiff and defendant are both tool manufacturers. Defendant sent a letter notifying plaintiff that some of plaintiff's products may infringe defendant's tooling patents. When the parties could not resolve the dispute, defendant informed plaintiff that it would sue plaintiff for patent infringement and indicated that it was preparing both state and federal complaints. In response, plaintiff