NCR Corporation v. Automated Transactions LLC et al

Filing 28

MEMORANDUM ORDER granting (13 in 1:14-cv-00779-SLR) MOTION to Dismiss for Lack of Jurisdiction Over the Subject Matter filed by Automated Transactions LLC, Transaction Holdings Ltd. LLC, (8 in 1:14-cv-01189-SLR) MOTION to Dismiss for Lack of Jurisdiction Over the Subject Matter filed by Automated Transactions LLC, Transaction Holdings Ltd. LLC. Signed by Judge Sue L. Robinson on 3/30/2015. Associated Cases: 1:14-cv-00779-SLR, 1:14-cv-01189-SLR(fms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

)

NCR CORPORATION,

)

Plaintiff,

)

)
) Civ. No. 14-779-SLR

v.

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AUTOMATED TRANSACTIONS, LLC )
and TRANSACTION HOLDINGS LTD., )
)
LLC,
)
)
Defendants.

NAUTILUS HYOSUNG AMERICA,
INC.,
Plaintiff,

)
)

)
)
)

v.

) Civ. No. 14-1189-SLR
)

)
AUTOMATED TRANSACTIONS LLC
and TRANSACTION HOLDINGS LTD., )
)
LLC,
)
)
Defendants.

MEMORANDUM ORDER
At Wilmington this 30th day of March, 2015, having reviewed defendants'
motions to dismiss for lack of subject matter jurisdiction, and the papers filiad in
connection therewith;
IT IS ORDERED that said motions (Civ. No. 14-779, D.I. 13; Civ. No. 14-1189,
D.I. 8) are granted, for the reasons that follow:

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1. Background. Plaintiffs NCR Corporation ("NCR") and Nautilus Hyosung
America ("NHA") (collectively, "plaintiffs") have filed declaratory judgment actions
against defendants Automated Transactions, LLC and Transaction Holding::; Ltd.
(collectively, "ATL" or "defendants") in an effort to invalidate 14 of the 28 patents in
ATL's patent family portfolio which relate to automated teller machines ("ATMs"). 1 The
above captioned lawsuits were filed at about the same time that ATL moved to dismiss
all of its pending infringement cases, which an MDL Order had consolidated before this
Court. (Civ. No. 13-MD-2429-SLR). 2 There is no dispute that the MDL litigation
resulted from ATL's patent enforcement campaign against scores of ATM users,
including banks, financial service providers, credit unions, and restaurants. Plaintiffs
both manufacture ATMs, and contend that ATL's infringement contentions in the MDL
cases were based on the functionality of plaintiffs' ATMs as disclosed in

th1~ir

documents produced in the MDL cases. Both plaintiffs have had customers sued by
ATL and, according to NCR, "there are thousands of them in the United States using
the same accused ATMs with the same accused functionality." (D.I. 16 at 2) Although
"ATL has offered to grant covenants not to sue any NCR customer that has ever
received a letter alleging any infringement of ATL's patents NCR alleges is an imminent

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lronically, these declaratory judgment plaintiffs (unlike the typical corporate
defendant) are pursuing litigation, and it is the declaratory judgment defendants who
are suggesting that the instant litigation be dismissed in favor of the administrative
remedies available through the Patent & Trademark Office. Where, as here, the validity
of the patents-in-suit will be the focus of the litigation, it actually would make more
sense for the PTO to take the laboring oar in this regard.
2

All of the cases initiated by ATL have been dismissed by joint stipulation of the
parties and the MDL has been terminated.

2

threat" (Civ. No. 14-779, D.I. 15, 1] 8), ATL has not offered to NCR itself (or to NHA)
covenants not to sue. A TL has attempted to sell the patents-in-suit, 3 thus far
unsuccessfully, and its managing member (also the named inventor on the patents) has
represented that "ATL has no plans to initiate any legal proceedings related to its patent
portfolio." (Id. at 116)
2. Standard of review. Under the Supreme Court's controlling decision in

Medlmmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007), the test to be applied by this
court in deciding ATL's motions to dismiss is "whether 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 judgement." Id. at 127 (citation omitted). The Supreme Court
acknowledged that this inquiry will necessarily be fact specific and must be made in
consideration of all the relevant circumstances. Consequently, the cases in this area
"do not draw the brightest of lines between those declaratory judgment actions that
satisfy the case-or-controversy requirement and those that do not." Id.
3. Contentions. Defendants argue that both declaratory judgment complaints
should be dismissed pursuant to Fed. R. Cic. P. 12(b)(1) because,
in light of the totality of the circumstances, there is no immediacy to any
threat posed by ATL to [plaintiffs or their customers]. ATL has wound
down its litigation efforts. The defendants in all pending ATL litigation
have received covenants not to sue from ATL. ATL has offered to !~rant
covenants not to sue to any [of plaintiffs'] customers who may have
3

ATL has asserted that it has "converted its business model and itself from being
an entity that asserts patents to one that is in the market to sell its patents. Because
ATL is now a seller of patents, ATL and NCR do not presently have 'adverse legal
interests that warrant judicial resolution.'" (Civ. No. 14-779, D.I. 14 at 4)

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received threatening letters from ATL in the past. Most importantly, ATL
has decided to sell its patent portfolio rather than engage in any further
enforcement efforts.
(Civ. No. 14-779, D.I. 14 at 3-4) Plaintiffs counter that "the undisputed and indisputable
facts demonstrate a longstanding, unresolved, substantial controversy betV\reen ATL
and [plaintiffs] concerning the patents-in-suit as applied to [ATMs] manufactured and
sold by" plaintiffs. (/d., D.I. 16 at 1)

4. Conclusion. In light of the totality of the circumstances, 4 and consistent with
the need to preserve scarce judicial resources, 5 defendants' motions to dismiss the
pending declaratory judgment actions are granted, without prejudice to plaintiffs'
renewal of this litigation should defendants (or any other owner of the patents-in-suit)

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choose to again enforce these patents against NCR, NHA, or any of their customers.

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4

Which would leave the court to determine the validity of the patents-in-suit
without a true adversarial governor.
5

There truly is no way of predicting whether any one will ever attempt to enforce
these patents again.

4