The opinion of the court was delivered by: Honorable Barry Ted Moskowitz United States District Judge
ORDER DENYING DEFENDANT'S MOTION TO DISMISS AND DENYING PLAINTIFF'S MOTION FOR SANCTIONS
The Court has before it two motions in this case. First, Defendant Fein Power Tools, Inc. ("Fein") moves to dismiss the Complaint for a lack of subject matter jurisdiction. Second, Plaintiff Jens Erik Sorenson, Trustee of the Sorenson Development and Research Trust ("Sorenson"), moves for sanctions under Federal Rule of Civil Procedure 11 on the basis that Defendant's Motion to Dismiss is frivolous and brought for an improper purpose. For the reasons discussed below, Defendant's Motion to Dismiss is DENIED and Plaintiff's Motion for Sanctions is DENIED.
On March 18, 2009, Sorenson filed its Complaint against Fein and C. & E. Fein GMBH & Co, alleging infringement of United States Patent No. 4,935,184 (the "'184 patent"). This case is one of many pending patent infringements suits brought by Plaintiff in this district. On July 30, 2007, a third party request for reexamination of the validity of the '184 patent was filed with the United States Patent and Trademark Office (the "PTO"). The Court has stayed the majority of the cases involving the '184 patent pending the completion of the reexamination process by the PTO, which remains ongoing.
On October 31, 2008, the PTO issued an Office Action rejecting claims 1 and 6--10 under 35 U.S.C. § 103(a), and confirming as patentable claims 2 and 4. (Oberdick Decl., Ex. 7.)
On March 20, 2009, the PTO issued an Ex Parte Examination Interview Summary. (Oberdick Decl., Ex. 8.) The Examiner indicated that he would withdraw the Section 103 rejections. (Id.)
On May 4, 2009, Fein filed its Motion to Dismiss. On June 5, 2009, Sorenson filed its Motion for Sanctions Pursuant to Fed. R. Civ. P. 11.
On August 21, 2009, the PTO issued an Office Action rejecting claims 1, 2, 4, and 6--10 under 35 U.S.C. §§ 102(b) and 103(a). (Notice of Action Taken by PTO [Docket No. 40]).
Defendant's and Plaintiff's Motions are interrelated. The Court first considers Defendant's Motion to Dismiss. Because the Court declines to dismiss Plaintiff's Complaint for a lack of subject matter jurisdiction, it next assesses Plaintiff's Motion for Sanctions.
Fein moves to dismiss Plaintiff's Complaint for a lack of subject matter jurisdiction under Federal Rule of Civil Procedure 12(b)(1). Fein argues that Sorenson's patent infringement claims seek an advisory opinion by the Court because the '184 patent claims remain in reexamination by the PTO. Sorenson responds that since an issued patent is presumed valid, district courts retain subject matter jurisdiction over patent infringement suits even where they involve patents already in the process of reexamination.
The jurisdiction of federal district courts is limited to actual cases or controversies.
U.S. Const. art. III, § 2. "A jurisdictional challenge under Rule 12(b)(1) may be made either on the face of the pleadings or by presenting extrinsic evidence." Warren v. Fox Family Worldwide, Inc., 328 F.3d 1136, 1139 (9th Cir. 2003). Plaintiff bears the burden of establishing subject matter jurisdiction. Kokkonen v. Guardian Life Ins. Co. of America, 511 U.S. 375, 377 (1994). Defendant's Motion relies solely on the allegations in Plaintiff's Complaint and other documents of which the Court may take judicial notice.*fn1 The Court "accept[s] all ...