SUE L. ROBINSON, District Judge.
At Wilmington this 3rd day of March 2016, having considered defendant My Health, lnc.'s motion to dismiss for lack of subject matter jurisdiction and the papers submitted therewith;
IT IS ORDERED that the motion (D.I. 24) is denied, as follows:
1.
2. Draeger is a Delaware corporation with operations in Massachusetts and Pennsylvania. (Id. at ¶ 2) Through its Infinity M300 system, Draeger provides diagnostic ambulatory devices that help patients self-manage and improve their health through technology. (Id. at ¶ 8) My Health is a non-practicing entity incorporated in Delaware and headquartered in Plano, Texas. (Id. at ¶ 3; D.I. 26 at 2) My Health engaged Patent Licensing Alliance ("PLA"), a non-party, to identify and solicit companies whose products and services may benefit from the technology covered by the '985 patent. (D.I. 25 at 2)
3. In February 2015, the Chief Executive Officer of Draeger received a letter from PLA stating that its "research group and legal team have thoroughly reviewed the Infinity M300 system and believe that it utilizes the technology claimed and disclosed in the ['985 patent]." (D.I. 27-4) The letter explained that due to "improper use without a license, My Health has been enforcing its intellectual property rights."
4. The letter was accompanied by a binder that contained: (1) a notice "Re: Infringement of the U.S. Patent No. 6,612,985;" (2) a copy of the '985 patent; and (3) a "Pre-filing Investigation Claim Chart" that explains on an element-by-element basis the allegedly infringing nature of the "Accused Product." (D.I. 27) The notice states that My Health "reserves all rights ... to seek damages anytime within the last six years," and warns that "You should not rely on any communication ... from My Health as a relinquishment of any of My Health's rights." (D.I. 27-1) The claim chart contains a header on each page stating "Rule 408 confidential communication — subject to confidentiality agreement." (D.I. 27-3)
5. No one from Draeger responded to PLA or contacted My Health regarding the letter, the binder, or its contents before filing the declaratory judgment action. (D.I. 25 at 3) My Health seeks to dismiss the complaint for lack of subject matter jurisdiction on the grounds that Draeger has failed to identify actions sufficient to give rise to an actual case or controversy, as required by Article Ill of the U.S. Constitution.
6.
7. The Declaratory Judgment Act requires an actual controversy between the parties before a federal court may exercise jurisdiction. 28 U.S.C. § 2201 (a). An actual controversy exists where "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) (quoting Maryland Gas. Co. v. Pac. Coal & Oil Co., 312 U.S. 270, 273 (1941)).
8.
9. PLA sent Draeger a letter stating that its "legal team" believes the Infinity M300 system uses technology claimed in the '985 patent and, therefore, Draeger "requires a license" if it intends to continue to sell its products, pursuant to 35 U.S.C. § 271 (sale of a patented invention without authority infringes the patent). (D.I. 27-4) PLA supported the infringement accusation with, among other things, a detailed and studied claim chart prepared with input from legal counsel. These same facts were sufficient to support subject matter jurisdiction in the Federal Circuit's seminal case on this issue. See Sandisk, 480 F.3d at 1382 (finding jurisdiction where defendant provided a "thorough infringement analysis" prepared by legal experts, stated that plaintiff's conduct infringed its patents, and claimed that plaintiff would need to pay a royalty for its infringing product).
10. PLA's letter also informed Draeger that My Health "has been enforcing its intellectual property rights," confirmed by the fact that My Health has filed complaints against at least 24 other companies alleging infringement of the '985 patent. (D.I. 1 at ¶ 13; D.I. 27-4) A patentee's prior enforcement litigation is a factor supporting jurisdiction where a patentee has directly asserted infringement allegations against a declaratory judgment plaintiff, as My Health has done here.
11. My Health claims that its other enforcement activities are irrelevant because it "does not have a history of filing lawsuits against potential business partners with which it has entered into licensing negotiations." (D.I. 25 at 10) As evidence of its intent to not sue, My Health relies heavily on a statement in the letter that it is "interested in reaching a direct, negotiated (and
12. Regardless, a real controversy would exist between the parties even if My Health had unequivocally promised not to sue Draeger. A "statement by a patent holder promising not to sue the plaintiff does not eliminate the justiciable controversy created by the patent holder's actions." Echostar Satellite LLC v. Finisar Corp., 515 F.Supp.2d 447, 452 (D. Del. 2007); Sony Elecs., Inc. v. Guardian Media Techs., Ltd., 497 F.3d 1271, 1284 (Fed. Cir. 2007) (declining to hold that a patentee's statement that it had "absolutely no plan whatsoever to sue" eliminates the controversy needed to maintain a declaratory judgment suit).
13. Under the totality of these circumstances, it does not weigh against jurisdiction that Draeger did not engage in licensing negotiations before initiating a lawsuit or that My Health remains interested in a negotiated resolution. "The possibility of negotiation is not a sufficient reason to refuse jurisdiction." Saberi Corp. v. Waddington N. Am., Inc., 2007 WL 2705157, at *5 (D.N.J. Sept. 14, 2007) (finding subject matter jurisdiction where the parties had not engaged in negotiations even though patentee offered); Sandisk, 480 F.3d at 1382 n. 3 ("[A] party to licensing negotiations is of course within its rights to terminate negotiations when it appears that they will be unproductive.").
15.