2:23-cv-00483
D. Nev.Feb 27, 2024Background
- Peritas Brands, LLC (Peritas) sued Leaphigh Animals, LLC (Leaphigh) after Leaphigh complained to Amazon that Peritas was infringing three patents by selling pet products, resulting in Amazon removing 21 of Peritas’s products from sale.
- Leaphigh owns U.S. Patent No. D930,268, 10,966,405, and 11,129,357; its complaint to Amazon referenced infringement by Peritas’s products, particularly their Bamboo Carbon Disposable Cage Liner.
- After eight months, Peritas sought a covenant not to sue or more detail on the basis of infringement, but Leaphigh did not withdraw its Amazon complaint or clarify its claims.
- Peritas filed suit seeking declaratory judgments of non-infringement and invalidity as to the three patents, plus state law claims for deceptive trade practices, defamation, and business disparagement.
- During litigation, Leaphigh executed a covenant not to sue regarding the '357 patent (claims 1 and 15) and affirmed that the accused products do not infringe the other claims or patents. As such, Defendant moved to dismiss the federal claims as moot.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Mootness via Covenant Not to Sue | Covenant is too narrow, does not cover planned future products | Comprehensive for accused products, thus moots the present claims | Claims as to accused products are moot; Plaintiff may amend for new ones |
| Declaratory Relief for Anticipated Products | Plans to launch new products are stymied by risk of future infringement | Covenant does not address future/planned products | Court grants leave to amend to address claims for new products |
| State Law Claims Dismissal (Anti-SLAPP) | State law governs; Anti-SLAPP/litigation immunity inapplicable | Anti-SLAPP applies; state claims preempted by patent law | Plaintiff given leave to file a surreply on new preemption argument |
| Preemption by Federal Patent Law | Not fully argued (court awaits briefing) | Raised in defendant's reply, arguing patent law preempts state claims | Awaiting further briefing (leave for surreply granted) |
Key Cases Cited
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (pleading standard for Rule 12(b)(6) motions)
- Ashcroft v. Iqbal, 556 U.S. 662 (facial plausibility standard for complaints)
- Kokkonen v. Guardian Life Ins. Co. of Am., 511 U.S. 375 (federal courts' limited jurisdiction)
- MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (actual controversy standard under Declaratory Judgment Act)
- Preiser v. Newkirk, 422 U.S. 395 (actual controversy must exist at all times of litigation)
- Already, LLC v. Nike, Inc., 568 U.S. 85 (covenant not to sue can moot declaratory judgment claims)
- Dow Jones & Co. v. Ablaise Ltd., 606 F.3d 1338 (covenant not to sue divests jurisdiction for invalidity claims)
- Friends of the Earth, Inc. v. Laidlaw Env’t Servs., 528 U.S. 167 (mootness due to voluntary cessation of behavior)
- Foman v. Davis, 371 U.S. 178 (standard for granting leave to amend complaint)