IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE

COMBA TELECOM, INC.,

Plaintiff,
v.
ANDREW LLC and COMMSCOPE, INC.,
Defendants.

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Civil Action No. 12-311-GMS

ORDER
WHEREAS, on April 30, 2012, pursuant to Federal Rule of Civil Procedure 12(b)(l),
defendants Andrew LLC and CommScope, Inc. (collectively "the defendants" 1) filed a Motion to
Dismiss the Complaint (D.I. 11);
WHEREAS, on March 11, 2013, the court granted-in-part and denied-in-part the
defendants' Motion to Authorize Jurisdictional Discovery (D.I. 39);
WHEREAS, the court granted the Comba Telecom's ("Comba") Motion to Amend the
Complaint (D.I. 38);
WHEREAS, following jurisdictional discovery both parties filed supplemental briefing
and the defendants' renewed their motion to dismiss (see D.I. 47, 48, 49); and
WHEREAS, having considered the parties' positions as set forth in their papers;
IT IS HEREBY ORDERED that the defendants' Motion to Dismiss Under Federal Rule
of Civil Procedure 12(b)(l) (D.I. 11) is GRANTED. 2

CommScope, Inc. acquired Andrew LLC in 1997. (D.I. 1, ~ 7.) As such, the court will refer to the parties
collectively as "the defendants."
2
Comba seeks a declaratory judgment that U.S. Patent Nos. 6,198,458; 6,538,619; 6,600,457; 6,567,051;
6,590,546; 6,603,436; 6,346,924 and 7,518,522 are invalid. (D.I. 40, ~ 1.) The patents relate to remote-controlled
electrical tilt antennas, commonly known in the industry as RET antennas. (Id.) Comba asserts that it has taken
"significant, meaningful, and concrete steps to begin in engaging in activities" that would subject it to allegations of
1

infringement in the United States if the patents are not declared invalid. (Id.) Further, Comba claims that the
defendants have taken "affirmative action" toward defending their patents in the United States. (Id.)
The Declaratory Judgment Act requires that a "case of actual controversy" exist between the parties before a
federal court may exercise jurisdiction. 28 U.S.C. 220l(a). In determining whether there is subject matter
jurisdiction over declaratory judgment claims, a court should ask "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 judgment." Medlmmune, Inc. v.
Genentech, Inc., 549 U.S. 118, 127 (2007) (internal quotation marks and citation omitted) (noting that the
Declaratory Judgment Act's requirement that a "case of actual controversy" exist is a reference to the types of cases
and controversies that are justiciable under Article III); see also Prasco, LLC v. Medicis Pharm. Corp., 537 F.3d
1329, 1335-36 (Fed. Cir. 2008). A case or controversy must be "based on a real and immediate injury or threat of
future injury that is caused by the defendants -an objective standard that cannot be met by a purely subjective or
speculative fear of future harm." Prasco, LLC, 537 F.3d at 1339 (emphasis in original). Thus, in the patent context,
"jurisdiction generally will not arise merely on the basis that a party learns of the existence of a patent owned by
another or even perceives such a patent to pose a risk of infringement, without some affirmative act by the patentee."
Id. (internal quotation marks and citation omitted). When the conduct of the patentee can be "reasonably inferred as
demonstrating intent to enforce a patent" against the declaratory judgment plaintiff, subject matter jurisdiction will
arise, even when that intent is demonstrated implicitly. Hewlett-Packard Co. v. Acceleron LLC, 587 F.3d 1358,
1363-64 (Fed. Cir. 2009). A decision as to whether an actual controversy exists in the context of a patent
declaratory judgment claim "will necessarily be fact specific and must be made in consideration of all the relevant
circumstances." W.L. Gore & Assocs., Inc. v. AGA Med. Corp., Civil No. 11-539 (JBS-KMW), 2012 WL 924978, at
*4 (D. Del. Mar. 19, 2012) (citing Medimmume, Inc., 549 U.S. at 127). The burden is on the party asserting
declaratory judgment jurisdiction to establish that an Article III case or controversy existed at the time that the claim
for declaratory relief was filed and that it has continued since. Danisco US. Inc. v. Novozymes AIS, 744 F.3d 1325,
1329 (Fed. Cir. 2014); Butamax Advanced Biofuels LLC v. Gevo, Inc., Civ. No. 12-1301-SLR, 2013 WL 1856308, at
*2 (D. Del. May 2, 2013).
Comba argues that dismissal would be improper because ( 1) the defendants have taken steps to legally
enforce U.S. patents in foreign litigation and by way of public and private threats; and (2) Comba has moved past
the preparatory stage of marketing to the United States and is ready to sell to consumers. (D.1. 18 at 7, 17.) Comba
asserts that the patents-in-suit present a barrier to Comba's entering the US market. (D.1. 1, ~ 37.)
In support, Comba asserts that the United States is "the next inevitable installment of [the] ongoing patent
battle" as a result of ongoing litigation in Brazil and China. (Id. at 9.) The defendants respond that foreign
proceedings brought by defendants in foreign jurisdictions do not create a real or immediate controversy in the
United States. (D.1. 24 at 5.) The patent laws and regulations in other countries are different from the United States
and, as such, are not a persuasive means of authority in this court. The mere existence of foreign litigation does not
create a real and immediate threat. Next, Comba claims that the defendants have taken a substantial step toward
litigation in the United States by sending direct and veiled threats. (D.1. 18 at 13-16.) Specifically, Comba points to
a 2011 press release in which the defendants announced their intent to defend their patents from infringement. (Id.
at 13.) The press release directly addressed Comba and stated that "[the defendants'] intend[] to take all necessary
additional steps to enforce [their] rights against Comba and any unauthorized user." (Id. at 14.) The defendants
concede that the press release was addressed to Comba but clarify that the press release was in regard to the ongoing
disputes in Brazil and China, and made no mention of a controversy, potential or otherwise, in the United States.
(D.1. 24 at 3.) Comba also cites a letter from the defendants to a third manufacturer as a "veiled threat" meant to
foreshadow the defendants' intention to file a lawsuit against Comba in the United States because the letter discusses
RET antenna technology. (D.1. 18 at 16.) The defendants deny the letter as issued provides any support to Comba's
claim as it is not addressed to Comba or its affiliates, does not accuse Comba or other companies mentioned in the
letter of infringement, and does not mention any of the defendants' patents. (D.1. 47 at 4.)
The court concludes that the press release and letter from the defendants do not establish an actual
controversy. Implied threats such as the type alleged by Comba cannot be considered a substantial step toward legal
action for patent infringement. See Innovative Therapies, Inc. v. Kinetic Concepts, Inc., 599 F.3d 1377, 1381 (Fed.
Cir. 2010). There is no record in either the press release or the letter that shows defendants saw or have seen the
allegedly infringing Comba products related to those patented by the defendants in the United States. As such, the
court concludes that Comba has not presented sufficient evidence to establish an affirmative act, because neither the
requisite immediate threat nor substantial step have been established.

Dated: July

tJ, 2015

Even if the court were to find Comba had established an affirmative act under the first prong, the court
concludes that Comba has not taken meaningful steps to conduct patent-infringing activity as required under the
second prong.
Comba asserts that it is past the preparatory stage and is ready to sell products in the United States. (D.I. 18
at 17.) Comba argues that it has introduced RET antennas to U.S. consumers through its presence at trade shows.
(D.I. 49 at 2.) Comba also alleges it has a presence in the United States through offices and retailers, though its
presence is not specifically dedicated to antennas. (Id.) Furthermore, Comba argues that it has expanded and
upgraded its manufacturing facilities to prepare for the U.S. market, including a testing system to test the radiation
pattern of the antennas. (Id. at 3.) In contrast, the defendants argue that Comba has not taken meaningful steps to
conduct patent-infringing conduct in the United States because its preparation is not specific to the United States, to
RET antennas, or both. (D.I. 47 at 7.) First, the defendants argue that Comba has not specified which RET antennas
it intends to sell in the United States, nor correlated the exact antennas that would infringe on the defendants'
patents. (Id. at 8.) The defendants argue that Comba's attempts to simply state the antennas are "substantially
similar" to the patents-in-suit does not establish patent-infringing activity. (Id.) The defendants also claim that
Comba's intensive upgrading and expansion of its facilities does not expressly relate to the United States. (Id.) For
instance, Comba claims its China facility can produce 800,000 units per year, but does not supply evidence to show
that the units are intended for export to the United States. (Id.)
The court is not persuaded that Comba has taken meaningful steps to conduct patent-infringing activity.
Comba presented no evidence that supports a finding that it has meaningfully prepared to sell RET antennas in the
United States. See Benetic Aust/., Ltd. v. Nucleonics, Inc., 495 F.3d 1340, 1346 (Fed. Cir. 2007). Further, Comba
has not specified the products that would allegedly infringe the defendants' patents. See United Marine Marketing
Group, LLC v. Jet Dock Systems, Inc., No. 8:10-CV-02653-T-30, 2011 WL 3897950, at *3 (M.D. Fla. Sept. 6,
2011 ). In addition, only one of the five RET antennas that appeared at a trade show intended to be introduced to the
United States. (D.I. 47 at 8.) Further, Comba's marketing materials do not establish the company's immediate
intention to sell these specific RET antennas within the United States because Comba admitted that it would have
prepared in this manner whether or not it intended to enter the U.S. market. (Id. at 6.) Comba also points to its
deputy manager of antenna and subsystems unit, Carol Ye, who testified that it is "crucial" for Comba to enter the
United States. (Id.) Even so, if Comba is engaging with the U.S. market, Ms. Ye's testimony does not point
specifically to the placement of RET antennas. As such, the court does not find sufficient evidence of meaningful
preparation to find an actual controversy in this case.
For the foregoing reasons, the court grants the defendants' motion to dismiss.