The Middle District of Florida recently dismissed a declaratory judgment claim for non-infringement, holding that cease-and-desist demands made before the patent issued, without more, did not establish a case or controversy under Article III.
The patent at issue concerned a flood panel system used to protect residential and commercial properties during hurricanes. Before the patent issued, the defendant sent two cease-and-desist letters demanding that the plaintiffs stop selling their flood panels. The second letter identified a provisional patent application and indicated that the defendant had retained legal counsel, but the defendant sent no further demands after the patent issued. Six months after the patent issued, the plaintiffs filed a complaint seeking, among other things, a declaration that the patent was not infringed.
The defendant moved to dismiss the non-infringement claim alleging that no ongoing controversy supported declaratory relief. The plaintiffs argued that the defendant’s threats of legal action created an actual controversy. In evaluating whether an actual controversy existed, the court applied a two-part test articulated by the Federal Circuit. First, the defendant must have engaged in conduct that created a reasonable apprehension that the declaratory plaintiff would face an infringement suit if it commenced or continued the alleged activity. Second, the plaintiff must have actually produced, or prepared to produce, the accused device. The court held that the plaintiffs’ claim failed at the first step.
The court concluded that no actual controversy existed because the cease-and-desist letters threatening legal action were sent before the patent issued. It also noted that the plaintiffs identified no other conduct by the defendant that restrained them regarding the flood panels beyond the threats before the patent issued. The court therefore dismissed the non-infringement claim without prejudice but without leave to amend.
Practice Tip: Pre-issuance cease-and-desist demands, without more, may not create the actual controversy required to maintain a declaratory judgment action for patent non-infringement. Litigants evaluating such an action should consider whether the patent holder made additional threats of enforcement after the patent issued. Conversely, patent holders should recognize that a post-issuance threat of infringement litigation may support declaratory judgment jurisdiction.
Valdez v. Hamilton, No. 2:26-CV-234-SPC-KRH, 2026 WL 2444675 (M.D. Fla. Aug. 20, 2026)
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