United States: Declaratory Judgment Claimants: Which Products Are You Saying Don’t Infringe?

Declaratory judgment plaintiffs and counterclaimants in patent cases have long been accustomed to filing boilerplate claims that either do not identify an accused technology, or that do so in a cursory manner. Noninfringement pleadings typically read something like this: "We are entitled to declaratory judgment that we have not infringed any valid claim of the '123 patent." In many cases, this form of pleading goes unchallenged because there is no confusion about the identity of the product or process that has been accused of infringement. Recently, however, district courts have become increasingly inclined to dismiss noninfringement claims that do not sufficiently identify the technology that supposedly does not infringe. As discussed below, even Form 18-style pleadings may prove inadequate if the description of the accused product or process is too vague to create an "actual controversy" within the meaning of the Declaratory Judgment Act.

Iqbal-Twombly, Form 18, and the Declaratory Judgment Act

As has become well-known, the Supreme Court's rulings in Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009) hold that Rule 8(a) requires a case-initiating pleading to state sufficient facts to make the claim plausible. Thus, "labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do." Twombly, 550 U.S. at 555. A separate source of authority is Form 18 of the Federal Rules of Civil Procedure, which explicitly endorses the following example of a patent infringement pleading: "The defendant has infringed and is still infringing the Letters Patent by making, selling, and using electric motors that embody the patented invention." The Federal Circuit has recently made clear that "to the extent any conflict exists between Twombly (and its progeny) and the Forms regarding pleadings requirements, the Forms control." K-Tech Telecomms., Inc. v. Time Warner Cable, Inc., 714 F.3d 1277, 1283 (Fed. Cir. 2013). Although Form 18 provides an example of an affirmative infringement claim, district courts have held that it applies to declaratory judgment claims as well. See, e.g., Microsoft Corp. v. Phoenix Solutions, Inc., 741 F. Supp. 2d 1156, 1163 (C.D. Cal. 2010).

In the context of a declaratory judgment action, however, the Declaratory Judgment Act itself must also be considered. 28 U.S.C § 2201 provides that the existence of an "actual controversy" is an absolute predicate for subject matter jurisdiction. The Federal Circuit has held that in the context of a patent action, an actual 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 Corp. v. STMicroelectronics, Inc., 480 F.3d 1372, 1381 (Fed. Cir. 2007) (emphasis added).

Many Courts Are Requiring that Accused Technology be Identified, Even in Counterclaims

In light of the above, it is not surprising that district courts have recently made clear that declaratory judgment plaintiffs must identify an allegedly noninfringing product or method in order to avoid dismissal. For example, in Wistron Corp. v. Phillip M. Adams & Assocs., No. 10-4458, 2011 U.S. Dist. LEXIS 46079, at *38-39 (N.D. Cal. Apr. 28, 2011), the court explained: "It is true that...because Defendants threatened suit against the [declaratory judgment] Plaintiffs over the patents sub judice, we should presume that Defendants know which products infringe. Nonetheless, without identifying the accused products, there simply is no way to adjudicate an infringement claim. Absent identification of the products accused of infringement, there is no concrete case or controversy of sufficient specificity to satisfy Twombly and Iqbal."

What may be more surprising, however, is that courts have also held declaratory judgment counterclaimants to the same standard, even where the complaint already identifies accused products or processes. For example, as explained by the court in InfineonTechs. Ag v. Volterra Semiconductor Corp., No. 11-6239, 2013 U.S. Dist. LEXIS 17501, at *3-4 (N.D. Cal. Feb. 7, 2013), "[a]lthough the scope of such declaratory relief arguably is defined by the claims as set forth in [the] Second Amended Complaint, Volterra bears the burden of proof on its counterclaims, and, accordingly, the Court finds Volterra is required to set forth, in accordance with Iqbal and Twombly, the parameters of its claims." The trend is not confined to the Northern District of California. InPPS Data, LLC v. Allscripts Healthcare Solutions, Inc., No. 11-273, 2012 U.S. Dist. LEXIS 8367, at *11-12 (M.D. Fla. Jan. 25, 2012), the court explained that "Defendant's claim...seeks a generalized holding of non-infringement — relief which is not cabined by conduct, an accused product, or a relevant time period. This Court will not give Defendant a judicial imprimatur that all of its products, services, and conduct are 'ok.'"

In view of the risk that a noninfringement counterclaim may itself be dismissed without regard to the scope of the allegations in a patent holder's complaint, defendants facing vague claims for patent infringement might consider moving to dismiss such claims before seeking declaratory judgment relief.

Why Form 18's "Electric Motor" Example Doesn't Always Work

Form 18 expressly approves of a sample pleading that identifies "electric motors" as the accused product. That only makes any sense, however, if both parties know which electric motors are at issue. Problems arise in two scenarios: (1) if the party seeking declaratory judgment sells multiple varieties of the product, only some of which might be accused of infringement; and (2) if the allegedly noninfringing technology is not accessible to the public and its existence, though suspected, cannot be confirmed by the patentee.

An example of the first variety of case is Xilinx, Inc. v. Invention Inv. Fund I LP, No. 11-0671, 2011 U.S. Dist. LEXIS 81986 (N.D. Cal. July 27, 2011). In Xilinx, the declaratory judgment plaintiff sought a declaration that its "integrated circuits" did not infringe. The court dismissed the complaint, finding "integrated circuits" to be too broad a category, and holding that the complaint "fail[ed] to identify a single accused product that would provide defendants with sufficient notice of what products or product components are in contention and why they do not infringe on the patents at issue." Id. at *19-20.

Cases of the second variety arise when a declaratory judgment plaintiff sells a product or performs a process that cannot be observed or analyzed by the general public, and the plaintiff is reluctant to provide any details of its technology in its complaint. A case of this kind was recently decided by the court in Essai, Inc. v. Delta Design, Inc., No. 13-2356, 2013 U.S. Dist. LEXIS 170450 (N.D. Cal. Dec. 2, 2013). In that case, Delta Design, a manufacturer of thermal control units for integrated circuits, alleged that a published patent application belonging to Essai claimed technology already covered by Delta Design's patents. Essai's products were only available to a private group of customers, so Delta Design wrote to Essai inquiring as to whether Essai was actually making and selling the technology claimed in its patent application. Essai responded by filing a lawsuit seeking a declaratory judgment of noninfringement of its "thermal control units," but not clarifying whether those units actually embodied the designs from Essai's patent application that Delta Design had accused of infringement. Essai's approach backfired. Delta Design filed a motion to dismiss, and the court granted it, holding:

Here, despite the lengthy correspondence between the two companies, none of the letters identify any particular product sold or offered for sale by Essai. Nor does Essai identify any particular product in its complaint for declaratory relief...the Court finds that the facts asserted under all of the circumstances do not demonstrate a substantial controversy between parties having adverse legal interests of sufficient immediacy and reality to warrant the issuance of a declaratory judgment. (id. at *10)

In sum, despite the language of Form 18, identifying a general category of "electric motors" will not save a declaratory judgment claim from dismissal if the patentee does not know which technology is at issue, or whether that technology is implemented in a manner that the patentee would deem infringing. The Essai case further shows that declaratory judgment plaintiffs may need to balance their desire not to disclose information about their technology with the realities of formal pleading requirements.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.