ORDER DENYING DEFENDANTS' MOTION TO DISMISS AND DENYING PLAINTIFFS' MOTION TO CONSOLIDATE
Defendants' motion to dismiss is DENIED for the following reasons:
1. Defendants' motion is based heavily on Mr. Gillman's declaration in which he concludes that whether an installation of a sports field infringes on the '412 patent depends on many variables which will be unique to that installation. These installations characteristics, defendants argue, preclude the Court from declaring whether plaintiffs' products as a general matter infringes the '412 patent.
2. To the extent that defendants have moved under Rule 12(b)(6), their reliance on Mr. Gillman's declaration is impermissible. Nor is the Court prepared at this early stage to treat the motion as one for summary judgment since it addresses the heart of the controversy between the parties.
3. To the extent that defendants justify their reliance on Mr. Gillman's declaration by contending that their motion is made under Rule 12(b)(1), which permits the consideration of evidence, they are mistaken. The issue defendants present is not one of subject matter jurisdiction. Defendants no where claim that this Court lacks subject matter jurisdiction over the second cause of action which seeks a declaration that the '412 patent is invalid. As I appreciate defendants arguments, they wish me to exercise my discretion under the Declaratory Judgment Act, 28 U.S.C. § 2201, not to entertain this lawsuit. I decline their invitation. It is difficult to understand how defendants contend that plaintiffs lack a reasonable apprehension that they or their customers will be sued if they continue to install their artificial turf sports fields given that defendants have already sued plaintiffs customers at least twice and have told one customer that "[b]ased on Fieldturf's knowledge of the Sportexe products, Fieldturf cannot see how any Sportexe product will avoid infringing at best the '112 patent."
4. What defendants are really saying is that if they prevail on their view of the technology, even if they do not prevail, the declaratory judgment on infringement that the Court will enter will be much narrower than what plaintiff seeks. The defendants have cited no authority, and the Court is aware of none, for the proposition that a declaratory relief action should be dismissed merely because there is a possibility that if plaintiff prevails, it may not get all the relief which it seeks.
In view of the Court's order entered at the status conference on January 24, 2005, coordinating the Fieldturf actions before me, plaintiffs' motion to consolidate this action with Fieldturf International v. Granite Construction Company, C04-2952, is DENIED without prejudice. The benefits plaintiffs seek should come from the coordination the court has ordered. If that does not occur and plaintiffs continue to see the need for consolidation, they have leave to renew their motion. Otherwise, the issue of consolidation shall be reconsidered following the Markman hearing.
Bernard Zimmerman United States Magistrate Judge
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