MEMORANDUM AND ORDER
Plаintiffs bring this lawsuit against defendants Monsanto Company and Monsanto Technology LLC (together “defendants” or “Monsanto”), seeking declaratory judgments that plaintiffs are not infringing various of defendants’ patents, that those patents are invalid and unenforceable, and that, regardless, defendants would be entitled to no remedies against plaintiffs. Presently before us is defendants’ motion
For the reasons set forth herein, defendants’ motion is granted.
BACKGROUND
I. Pre-Suit Facts
The relevant facts are largely uncontested. Plaintiffs are farmers and seed businesses, both organic and non-organic, as well as related membership organizations. Plaintiffs do not want to use, grow crops raised from, or sell transgenic seed, which is seed that has had genetic code of another species introduced to it. Defendants develop, manufacture, license, and sell chemicals and agricultural biotechnology, including transgenic seed.
Defendants produce, in particular, transgenic seed known as “Roundup Ready,” which is resistant to the herbicide glyphosate, the active ingredient in defendants’ product “Roundup.” This resistance trait and related technologies are covered by a variety of patents held by defendants.
Growers who wish to use defendants’ seeds must obtain limited-use licenses to do so. Because subsequent generations of plants grown from these seeds will also contain the glyphosate-toleranee trait, these licenses authorize growers to use the seed only to grow a single crop; growers are not authorized to harvest and plant the second-generation seed produced from the original planting, or to sell seeds eontaining the patented trait outside authorized channels of distribution.
Despite these restrictions, some unlicensed — and unintended — use of transgenic seeds is inevitable. Like any othеr seeds, transgenic seeds may contaminate non-transgenic crops through a variety of means, including seed drift or scatter, crosspollination, and commingling via tainted equipment during harvest or post-harvest activities, processing, transportation, and storage. Seed businesses and farmers may, at some expense, test their seeds and crops to ensure that no contamination has occurred, and non-transgenic farmers may establish buffer zones between themselves and farmers using transgenic seed in order to reduce the risk of cross-transmission.
No plaintiffs claim that contamination has yеt occurred in any crops they have grown or seed they have sold. However, one plaintiff farmer claims that seed he considered purchasing in 2010 was contaminated with genetically engineered seed, (Decl. of Chuck Noble in Supp. of Pis.’ Mem. ¶ 5), and one plaintiff seed distributor claims that it received shipments contaminated with genetically modified seed in each of 2005, 2008, 2009, and 2010, (Decl. of C.R. Lawn in Supp. of Pis.’ Mem. ¶ 4). Neither plaintiff asserts that the offending seeds were covered by defendants’ patents.
Additionally, inadvertent growth of crops with patented traits may potentially subject a farmer to liability for patent infringement. While defendants investigate hundreds of possible patent infringers each year, between 1997 and April 2010 they filed just 144 lawsuits to enforce their patent rights against farmers. Defendants, moreover, have never filed a patent-infringement suit against a certified organic farm or handling operation over the presence of patented traits in its operations, and they stated at oral argument that they have never sued a party who did not “want to make use of the traits that are manifested in [defendants’] transgenic products.” (Oral Arg. Tr. at 10:2-9; see also id. at 34:23-35:14.) Indeed, defendants have expressly declared that it is not their policy “to exercise [their] patent rights where trace amounts of our seed or traits are present in [a] farmer’s fields as a result of inadvertent means.” (Chachkin Deck, Ex. 0, Monsanto’s Commitment: Farmers and Patents.) Nevertheless, plaintiffs allege without specification that defendants have aсcused certain non-intentional users of Monsanto’s seed of patent infringement and threatened them with litigation. No plaintiffs claim to have been so threatened.
II. Post-Suit Facts
On March 29, 2011, plaintiffs filed a complaint seeking declaratory judgments that twenty-three of defendants’ patents are invalid, unenforceable, and not infringed by plaintiffs, and that, regardless, defendants would be entitled to no remedy against plaintiffs. That same day, defendants republished on their blog their commitment not to exercise their patent rights over inadvertently acquired trace amounts of patented seed or traits. (FAC, Ex. 2, Monsantoco, “PUBPAT Allegations Are False, Misleading and Deceptive” (Mar. 29, 2011).)
Shortly thereafter, plaintiffs ' wrote to defendants and emphasized a point asserted in their filing: “none of [the plaintiffs] intend[s] to possess, use or sell any transgenic seed, including any transgenic seed potentially covered by Monsanto’s patents.” (FAC, Ex. 3, Letter from Daniel B. Ravicher, Public Patent Found., to Todd Zubler, Esq., WilmerHale (Apr. 18, 2011).) Nonetheless, the letter professes a fear of being sued by defendants for patent infringement and “request[s] that Monsanto expressly waive any claim for patent infringement it may ever have against [plaintiffs] and memorialize thаt waiver by providing a written covenant not to sue.” (Id.) Plaintiffs asserted that defendants’ failure to respond to the letter would make it “reasonable for [plaintiffs] to feel they
■ In response to plaintiffs’ letter, defendants reiterated that it is not their policy to exercise their patent rights against farmers whose fields inadvertently contain trace amounts of patented seeds or traits. In particular, thе reply letter referenced plaintiffs’ claim that they do not have any intention of using any transgenic seed and noted that, “[t]aking [that] representation as true, any fear of suit or other action is unreasonable, and any decision not to grow certain crops unjustified.” (FAC, Ex. 4, Letter from Seth P. Waxman, Wilmer-Hale, to Ravicher (Apr. 28, 2011).)
Plaintiffs filed the FAC on June 1, 2011, seeking the same declaratory judgment relief' as in the original complaint while adding a number of new plaintiffs and including a description of the events that transpired after the original complaint was filed. Defendants made this motion the following month, moving to dismiss the FAC fоr lack of subject matter jurisdiction.
DISCUSSION
I. Legal Standards
The Declaratory Judgment Act provides, “In a case of actual controversy within its jurisdiction, ... any court of the United States ... may declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought.” 28 U.S.C. § 2201(a). The jurisdiction of courts to issue judgments is limited by the justiciability of “cases” or “controversies” under Article III of the Constitution. See Prasco, LLC v. Medicis Pharm. Corp.,
Although “there is no bright-line rule for dеtermining whether an action satisfies the case or controversy requirement,” id. at 1336, and “the analysis must be calibrated to the particular facts of each case,” Cat Tech LLC v. TubeMaster, Inc.,
The first element is intended to ensure that the parties have adverse legal interests, which may be established “where a patentee asserts rights under a patent based on certain identified ongoing or planned activity of another party, and where that party contends that it has the right to engage in the accused activity without license.” SanDisk,
With respect to the second element, “[i]f a declaratory judgment plaintiff has not taken significant, concrete steps to conduct infringing activity, the dispute is neither ‘immediate’ nor ‘real’ and the requirements for justiciability have not been met.” Cat Tech,
II. Declaratory Judgment Jurisdiction
A. Defendants ’ Affirmative Acts
Plaintiffs do not allege that defendants have ever demanded royalty payments from plaintiffs, identified any of plaintiffs’ conduct as potentially infringing, or even initiated any contact with plaintiffs whatsoever. Instead, plaintiffs posit the existenсe of an actual case or controversy based on: (1) defendants’ pattern of enforcing their patent rights against non-plaintiff farmers through litigation or threats of litigation; (2) plaintiffs’ assertion of the “implicit threat” in defendants’ statement that it is not their policy to enforce their patent rights against farmers whose crops inadvertently acquire trace amounts of patented seeds or traits; and (3) defendants’ refusal to provide plaintiffs with a blanket covenant not to sue.
In the absence of other conduct by the patentee indicative of adverse legal interests, the patеntee must have asserted its rights against the declaratory judgment plaintiff. See AMP,
In connection with other activities supporting an inference of adverse legal interests, suits brought by the patentee against parties other than the declaratory judgment plaintiffs may suffice to establish a case or controversy, but only if those suits are sufficiently similar to the one the patentee may potentially bring against the declaratory judgment plaintiffs. See AMP,
Plaintiffs argue that defendants’ 144 patent-infringement lawsuits filed against farmers between 1997 and April 2010 create a reality of the threat of injury. Plaintiffs, however, overstate the magnitude of defendants’ patent enforcement. This average of roughly thirteen lawsuits per year is hardly significant when compared to the number of farms in the United States, approximately two million. (Chachkin Decl., Ex. N, U.S. E.P.A., Demographics.)
Moreover, there is no suggestion that these suits were brought against “similarly situated parties.” AMP,
Thus there is no evidence that defendants have commenced litigation against anyone standing in similar stead to plaintiffs. The suits against dissimilar defendants are insufficient on their own to satisfy the affirmative acts element, and, at best, are only minimal evidence of any objective threat of injury to plaintiffs. Plaintiffs’ alternative allegations that defendаnts have threatened, though not sued, inadvertent users of patented seed, are equally lame. These unsubstantiated claims do not carry significant weight, given that not one single plaintiff claims to have been so threatened.
2. Defendants’ “Implicit Threat”
Plaintiffs contend that the ambiguous language in defendants’ statement regarding unintentional use of patented seeds “implicitly threatenfs] all farmers and seed businesses who are not [defendants’] customers.” (Pis.’ Mem. 19.) In its entirety, the purportedly threatening language reads: “It has never been, nor will it be [,] Monsanto policy to exercise its patent rights where trace amounts of our patented seeds or traits are present in [a] farmer’s fields as a result of inadvertent means.” (Chachkin Deck, Ex. 0.) It is objectively unreasonable for plaintiffs to read this language as a threat.
Plaintiffs expressly allege that they “do not want to use or sell transgenic seeds.” (FAC ¶ 2.) They specifically communicated the same to defendants. (Id., Ex. 3, Letter to Zubler from Ravicher (“[N]one of [the plaintiffs] intend[s] to possess, use or sell any transgenic seed, including any transgenic seed potentially covered by Monsanto’s patents.”).) Assuming the truth of these representations, the presence of patented traits in plaintiffs’ seeds could only be inadvertent. And, while we grant that the phrase “trace amounts” is susceptible of differing interpretations, the notion that plaintiffs, who are actively attempting to avoid the use of transgenic seed, may nevertheless find themselves unknowingly utilizing it in significant quantities strains credulity.
Regardless, the negative inference plaintiffs wish to draw from defendants’ statement is unwarranted. The statement is an expression of defendants’ intention not to pursue their patent rights against certain farmers. Yet plaintiffs want the Court to read the statement not as a limitation on whom defendants will sue, but rather as a positive indicаtion of whom defendants will bring suit against. No such inference is permissible. The plain meaning of defendants’ statement is clear, and we cannot adopt plaintiffs’ deliberate misreading.
Indeed, plaintiffs’ letter to defendants seems to have been nothing more than an attempt to create a controversy where none exists. This effort to convert a statement that defendants have no intention of bringing suit into grounds for maintaining a case, if accepted, would disincentivize patentees from ever attempting to provide comfort to those whom they do not intend to sue, behavior which should be countenanced and encouraged. In contrast, plaintiffs’ argument is baseless and their tactics not to be tolerated.
3. Defendants’ Refusal to Sign a Covenant Not to Sue
In their April 18, 2011 letter to defendants, plaintiffs asked defеndants to “expressly waive any claim for patent infringement [they] may ever have against [plaintiffs] and memorialize that waiver by providing a written covenant not to sue.” (FAC, Ex. 3.) Defendants, rather unsurprisingly, declined to provide plaintiffs with the requested “blanket” waiver. (Pis.’ Mem. 21.) Rather, they represented that they were “unaware of any circumstances that would give rise to any claim for patent infringement or any lawsuit against [plaintiffs]” and that they had “no intention of asserting patent-infringement claims against [plaintiffs].” (Id., Ex. 4.)
This exchange occurred in the same post-filing letters discussed above, and, as before, plaintiffs’ argument is groundless and their tactics unacceptable. The fact that defendants declined to provide plaintiffs with a written covenant not to bring any claims they might ever have does not meaningfully add to plaintiffs’ case. As the Federal Circuit has noted, “though a defendant’s failure to sign a covenant not to sue is one circumstance to consider in evaluating the totality of the circumstances, it is not sufficient to create an actual controversy .... ” Prasco,
B. Plaintiffs’Preparatory Conduct
Plaintiffs contend that they need not undertake any further actions in order to have “meaningfully] prepared] to conduct
To the extent the test considers plaintiffs’ conduct, it is useful because it focuses the analysis on the immediacy and reality of the dispute. See Cat Tech,
Plaintiffs have not alleged that any of them have actually grown or sold contaminated seed, and they have in fact professed a desire to specifically avoid any such use. At most they allege that they “could ... be accused of patent infringement in the near future if and when they become contaminated by Monsanto’s transgenic seed.” (FAC ¶ 3.) This is the same sort of intangible worry, unanehored in time, that the Federal Circuit has found “insufficient to support an ‘actual or imminent’ injury for standing without any specification of when the some day will be.”
“[U]nder all the circumstances” outlined above, the plaintiffs have not “show[n] 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.” AMP,
Defendants’ . patent-infringement suits against other, dissimilar parties cannot by themselves create subject matter jurisdiction, and the diaphanous allegations that defendants have threatened but not sued unintentional infringers do not add much weight to the substantiality of the dispute. Nor have plaintiffs pointed to any other circumstances that bolster the objective reasonableness of their claims of threat of injury. Defendants’ statement regarding the exercise of their patent rights against inadvertent infringers is, if anything, a source of comfort rather than worry. Their actions subsequent to the filing of the comрlaint cannot reasonably be construed as threatening and, regardless, are simply the product of plaintiffs’ transparent effort to create a controversy where none exists. Even were there credible threats of suit from defendants, there is no
evidence that plaintiffs are infringing defendants’ patents, nor have plaintiffs suggested when, if ever, such infringement will occur.
Taken together, it is clear that these circumstances do not amount to a substantial controversy and that there has been no injury traceable to defendants. We therefore do not have subject matter jurisdiction over this action, and it is, accordingly, dismissed.
CONCLUSION
For the foregoing reasons, the motion (docket no. 19) is granted.
Notes
. These facts are drawn from the First Amended Complaint (the "FAC”) and the numerous declarations submitted in connection with the Memorandum of Law in Support of Monsanto Company and Monsanto Technology LLC’s Motion to Dismiss for Lack of Subject-Matter Jurisdiction ("Defs.’ Mem.”), Plaintiffs’ Memorandum of Law in Opposition to Defs.’ Mem. ("Pis.’ Mem.”), and the Reply Memorandum in Support of Monsanto’s Motion to Dismiss for Lack of Subject-Matter Jurisdiction. In assessing subject matter jurisdiclion, we are permitted to look beyond the pleadings. See Hunter v. Colonial Park,
. The patents at issue in this action are U.S. Patent Nos. 5,322,938, 3,532,605, 5,362,865, 5,378,619, 5,424,412, 5,463,175, 5,530,196, 5,554,798, 5,593,874, 5,641,876, 5,659,122, 5,717,084, 5,728,925, 5,750,871, 5,859,347, 6,025,545, 6,040,497, 6,051,753, 6,083,878, 6,753,463, and 6,825,400, and U.S. Reissue Patent Nos. RE38825 and RE39247.
. We also note, parenthetically, that organic certification is only of concern to certain plaintiffs; other plaintiffs eschew use of transgenic seed but are not organic farmers or seed businesses.
. “Whether an actual case or controversy exists so that a district court may entertain an action for a declaratory judgment of non-infringement and/or invalidity is governed by Federal Circuit law.” MedImmune, Inc. v. Centocor, Inc.,
. Despite placing heavy emphasis on the Federal Circuit's holding that there can be "no bright-line rule ... for determining whethеr a declaratory judgment action satisfies Article Ill’s case-or-controversy requirement,” AMP,
. Plaintiffs have essentially already conceded that their fear of suit was not reasonable at the time the original complaint was filed. Their letter to defendants of April 18, 2011— after the original complaint was filed-notes that, "[i]f we do not receive a response from Monsanto within a reasonable amount of time, ... then [it would] be reasonable for our clients to feel they would be at risk of having Monsanto assert claims of pаtent infringement against them should they ever become contaminated by transgenic seed potentially covered by Monsanto's patents.” (FAC, Ex. 3, Letter from Ravicher to Zubler (Apr. 18, 2011) (emphasis added).) The letter is an implicit recognition that any anticipated risk of suit was not objectively reasonable when the case was filed.
. Plaintiffs’ allegations with respect to defendants’ repetition of their statement pertain only to conduct after the filing of the initial complaint and, as such, do not bear on our decision, which must be an "evaluation] [of] whether a controversy existed at the time the original complaint was filed.” Innovative Therapies,
. Plaintiffs contend that they are facing immediate injury because some of them have stopped farming certain crops for fear of patent infringement suits brought by defendants. (See, e.g., Oral Arg. Tr. at 20:10-25; Decl. of Bryce Stephens in Supp. of Pis.’ Mem. ¶ 11; Decl. of Frederick Kirschenmann in Supp. of Pis.’ Mem. ¶ 13.) That "injury” is of plaintiffs' own making and, as discussed above, is not reasonable based on "the objective words and actions of the patentee.” Hewlett-Packard,
Moreover, as AMP makes clear, the relevant concern is of infringement, not simply altered behavior. See
. At oral argument, plaintiffs asked the Court to consider a number of cases not dealing with declaratory judgments in the patent context when evaluating whether the contrоversy at bar is sufficiently immediate to support subject matter jurisdiction. (Oral Arg. Tr. at 3:10-5:1.) Those cases, however, are wholly inapposite because they dealt with plaintiffs seeking pre-enforcement review of criminal statutes, not private parties engaged in civil litigation. See Holder v. Humanitarian Law Project, - U.S. -,
Plaintiffs also drew our attention to Aetna Life Insurance Co. v. Haworth,
. Plaintiffs' attempt to distinguish Prasco on the basis of a footnote that declines "to consider whether similar facts would be sufficient to establish jurisdiction if, instead, [plaintiff] had conceded infringement and was only arguing invalidity,”