On April 1, 2025, United States District Judge Jed S. Rakoff granted Defendants Marut Enterprises LLC and Brett Marut’s (collectively, “Defendants”) motion to dismiss and entered final judgment against Foto Electric Supply Co., Inc. (“Plaintiff”).
Plaintiff filed a declaratory judgment action, asserting that its back-shaver device products do not infringe certain of Defendants’ patents and trade-dress rights, and that the patents are invalid. The action was filed on the same day that the parties settled an action in the United States District Court for the Eastern District of New York (“the EDNY Action”) regarding United States Patent No. 7,856,725 (“the ’725 patent”).
During the pendency of the immediate lawsuit, Defendants offered Plaintiff a covenant not to sue for infringement of the ’725 patent by Plaintiff’s recently re-designed back-shaver products (the “New Products”). Plaintiff, however, demanded that Defendants’ design patent, No. 611,653 (the “Design Patent”) be included in the covenant. Defendants rejected the demand and filed a motion to dismiss the complaint. For its part, Plaintiff amended the complaint to include an assertion that the New Products also do not infringe the Design Patent. Plaintiff argued that it “continues to have a reasonable apprehension that it will face another infringement suit” for infringement of the Design Patent even though it expired on March 9, 2024. As support, Plaintiff pointed to a May 26, 2023 cease-and-desist letter sent by Defendants.
The Court found that the cease-and-desist letter was “insufficient to establish” a substantial controversy between the parties because there is “no prospect that future conduct in the U.S. could lead to an infringement suit regarding” the Design Patent, and therefore any possible conflict was “purely hypothetical.” Further, the Court found that a “nearly two-year old letter” is “at most a tentative assessment of a potential patent infringement.” The Court noted that if the parties’ interests were so adverse, Defendants would have asserted such claims in the EDNY Action, or Plaintiff would have upgraded its product design when it made the other changes. “That neither party did so suggests that the claims bearing on the products’ design were not particularly strong and that the parties’ interests were not sufficiently adverse.”
The Court thus held that it “lacks jurisdiction to issue declaratory relief” with respect to those claims. Plaintiff’s argument that the threat of litigation remains because the Design Patent was not included in the covenant was unavailing. The Court first noted that it could not consider those facts because they were “plead[ed] after the filing” and such facts “cannot be used to support subject matter jurisdiction.” The Court also found that such evidence was “insufficient to sustain jurisdiction over this matter.” “A patentee has no duty to expand efforts to assure its competitors that it will not bring an infringement suit.”
The case is Foto Elec. Supply Co., Inc. v. Marut Enters. LLC, Case No. 24-cv-05540 (JSR) (S.D.N.Y. Apr. 1, 2025).
