NEXANS INC. and BERK-TEK LLC, Plaintiffs,
BELDEN INC., BELDEN TECHNOLOGIES, INC., and BELDEN TECHNOLOGIES, LLC, Defendants.
Steven J. Balick, Esquire, Tiffany Geyer Lydon, Esquire, and Andrew C. Mayo, Esquire of Ashby & Geddes, Wilmington, Delaware. Counsel for Plaintiffs. Of Counsel: James S. Blank, Esquire, and David Soofian, Esquire of Kaye Scholer LLP.
Adam W. Poff, Esquire, and Pilar G. Kraman, Esquire of Young Conaway Stargatt & Taylor, LLP. Counsel for Defendants. Of Counsel: Matthew B. Lowrie, Esquire, and Aaron W. Moore, Esquire of Foley & Lardner LLP.
SUE L. ROBINSON, District Judge.
Plaintiff Nexans Inc. ("Nexans") filed this declaratory judgment and patent infringement action against Belden Inc., Belden Technologies, Inc., and Belden Technologies, LLC (collectively, "Belden"). (D.I. 5) Nexans seeks declaratory judgment of noninfringement and invalidity of U.S. Patent Nos. 6, 074, 503 ("the '503 patent"), 7, 135, 641 ("the '641 patent"), and 7, 977, 575 ("the '575 patent") ( Id. at ¶¶ 27, 29, 31-35, 38-43) and affirmatively asserts infringement of U.S. Patent No. 5, 796, 046 ("the '046 patent"). ( Id. at ¶¶ 37, 46-49) In an amended complaint, Nexans also seeks declaratory judgment of noninfringement and invalidity of U.S. Patent No. 7, 663, 061 ("the '061 patent"). ( Id. at ¶¶ 36-37)
Currently before the court is Nexans' motion to enjoin Belden from prosecuting a related action filed in another district, Belden's motion to dismiss the declaratory judgment claims in this action in favor of that related action, and Belden's motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(1) or, in the alternative, strike the amended complaint. (D.I. 12; D.I. 18, D.I. 24) The court has jurisdiction over this matter pursuant to 28 U.S.C. §§ 1331, 1338(a), 2201, and 2202.
Nexans and Belden are Delaware corporations that use, make, and/or sell data cables. (D.I. 5 at ¶¶ 1-4) On April 3, 2012, Belden sent a letter ("the warning letter") to Berk-Tek LLC ("Berk-Tek"), a division of Nexans, accusing Berk-Tek of using Belden's patented technology. ( Id. at ¶¶ 13-14) In the warning letter, Belden also referenced previous litigation against Superior Essex Inc. and Superior Essex Communications LP (collectively, "Superior Essex"), explaining that, at the conclusion of that litigation, Superior Essex elected to enter into a license agreement, including payment of a royalty. ( Id. at ¶ 16)
Following receipt of the warning letter, Nexans and Belden entered into a Protected Communications and Standstill Agreement ("the Standstill Agreement") on June 25, 2012. ( Id. at ¶ 19) On September 21, 2012 counsel for the parties met in New York City. ( Id. at ¶ 20) The parties then kept in contact until the Standstill Agreement expired on October 31, 2012. ( Id. at ¶¶ 21-23)
Nexans filed the instant suit on November 19, 2012, with claims for declaratory judgment of noninfringement and invalidity of the '503, '641, and '575 patents and claims for infringement of the '046 patent. Two days later, on November 21, 2012, Belden filed a parallel suit against Nexans in the Southern District of Indiana ("the Indiana action") alleging infringement of the '503, '641, and '575 patents, as well as the '061 patent (collectively, "the Belden patents"). (D.I. 13 at 2) On the same day, Belden filed a separate action against Hitachi Cable America Inc. and Hitachi Cable Manchester, Inc. in the Southern District of Indiana alleging infringement of the Belden patents ("the Hitachi litigation"). ( Id. ) On December 2, 2012, Nexans filed an amended complaint in the instant action to add the '061 patent to its claims for declaratory judgment. ( Id. )
III. STANDARD OF REVIEW
A. Motion to Dismiss for Lack of Subject Matter Jurisdiction
Not only may the lack of subject matter jurisdiction be raised at any time, it cannot be waived and the court is obliged to address the issue on its own motion. See Moodie v. Fed. Reserve Bank of NY, 58 F.3d 879, 882 (2d Cir. 1995). Once jurisdiction is challenged, the party asserting subject matter jurisdiction has the burden of proving its existence. See Carpet Grp. Int'l v. Oriental Rug Imps. Ass'n, 227 F.3d 62, 69 (3d Cir. 2000).
Under Rule 12(b)(1), the court's jurisdiction may be challenged either facially (based on the legal sufficiency of the claim) or factually (based on the sufficiency of jurisdictional fact). See 2 James W. Moore, Moore's Federal Practice § 12.30 (3d ed. 1997). Under a factual attack, the court is not "confine[d] to allegations in the... complaint, but [can] consider affidavits, depositions, and testimony to resolve factual issues bearing on jurisdiction." Gotha v. United States, 115 F.3d 176, 179 (3d Cir. 1997); see also Mortensen v. First Fed. Say. & Loan Ass'n, 549 F.2d 884, 891-92 (3d Cir. 1977). In such a situation, "no presumptive truthfulness attaches to plaintiffs allegations, and the existence of disputed material facts will not preclude the trial court from evaluating for itself the merits of jurisdictional claims." Carpet Grp., 227 F.3d at 69 (quoting Mortensen, 549 F.2d at 891). Although the court should determine subject matter jurisdiction at the outset of a case, "the truth of jurisdictional allegations need not always be determined with finality at the threshold of litigation." 2 Moore § 12.30. Rather, a party may first establish jurisdiction "by means of a nonfrivolous assertion of jurisdictional elements and any litigation of a contested subject-matter ...