Intellectual Property – Court dismisses declaratory judgment suit

Where a party sought a declaratory judgment about the validity of certain patents, but there was no “immediacy and reality” to establish a sufficient controversy, the lawsuit was dismissed.

Background

Kuraray Co. Ltd. sued Sekisui Chemical Co. Ltd., seeking a declaratory judgment of the invalidity of six U.S. patents. Sekisui has filed a motion to dismiss.

Controversy

Under the Declaratory Judgment Act, or DJA, “[i]n a case of actual controversy within its jurisdiction . . . any court of the United States, upon the filing of an appropriate pleading, may declare the rights and other legal relations of any interested party seeking such declaration.” Kuraray America alleges that a substantial controversy exists between the parties because of (1) the warning letter and (2) Sekisui’s 2024 patent infringement lawsuits in Germany and Korea and because (3) Sekisui “has made no commitment to forego patent enforcement actions in the United States.” Kuraray America represents that it filed its complaint “to continue its domestic operations without the fear of litigation.”

Without additional context, the warning letter could have been enough at the time it was sent to confer subject matter jurisdiction under the DJA. Sekisui contends that the warning letter was “too generic to constitute an identification of any specific patents that would give rise to a substantial controversy” and that the “reference to ‘our patents’ did not mean, and should not objectively be interpreted as, ‘all of our patents’ or ‘all of our patents filed in various countries under WO2007/132777.’”

But the letter’s reference to “various countries under WO2007/132777” undisputedly includes the U.S. The letter “identifies a specific patent family” that includes five U.S. patents, as well as specific products that Kuraray America sold. In other words, the letter “identifies [] specific patents[,] . . . products[,] . . . and [] demands,” and “unambiguously gives Kuraray [] the option of either ceasing sales of the [specific products] or fac[ing] legal action.”

However, the timeline and the history of litigation between the parties here show that there is no “immediacy and reality” to establish a sufficient controversy. Within two months of sending the warning letter to Kuraray Co., Sekisui filed enforcement actions in Korea and Germany; but since then (September 2024) it has not brought any additional related enforcement actions. The complaint does not allege any affirmative actions by Sekisui against any Kuraray entity—let alone Kuraray America specifically—since September 2024, and Kuraray America’s conclusive assertion that Sekisui’s actions in Germany and Korea “make[] the United States the next step” is devoid of support.

Kuraray America does not allege that Sekisui has a history of litigating its patents in the U.S., that it has directed any actions toward Kuraray America as distinct from Kuraray Europe or Korea nor that it has communicated with or alluded to Kuraray America in any communications apart from the July 2024 warning letter to Kuraray Co. referencing “various countries under WO2007/132777.”

Furthermore, International Patent Publication No. WO2007/132777, which covers Patent Family A, contains 20 patents in 16 jurisdictions, of which Sekisui only chose to enforce three patents (15 percent) in two jurisdictions (12.5 percent). Given Sekisui’s limited enforcement effort almost two years ago, the reference to ‘various countries under WO2007/132777’ is not alone enough to establish immediacy or reality.

Finally, that Sekisui has not “provided any assurance” such as “a covenant not to sue or a declaration of invalidity” in the United States does not impact the jurisdictional analysis because Kuraray America has not alleged that it has asked for such an assurance.

Discretion

Kuraray America argues that the action “will serve a useful purpose in clarifying and settling the legal relations in issue” because Sekisui’s conduct has “infected Kuraray America’s business with uncertainty and insecurity.” However, the complaint is devoid of allegations that Kuraray America faces a real choice between “either abandoning its [] products or running the risk of being sued for infringement.” Therefore, even if this case satisfied subject matter jurisdiction under the DJA, the court would exercise its discretion to decline to hear it because “courts should exercise their discretionary jurisdiction with caution when doing so would raise serious questions about Article III jurisdiction, as this case does.”
Defendant’s motion to dismiss granted.

Kuraray America, Inc. v. Sekisui Chemical Co., Ltd., Case No. 2:25-cv-589, May 12, 2026. EDVA at Norfolk (Walker). VLW 026-3-213. 11 pp.

Full-Text Opinion
VLW 026-3-213