UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF MICHIGAN

AUTOMOTIVE BODY PARTS §

ASSOCIATION, §

§ CIVIL ACTION NO.

Plaintiff, §

v. § 2:15-CV-10137-LJM-MJH

 §

FORD GLOBAL TECHNOLOGIES, § Hon. Laurie Michelson

LLC, §

 § 

Defendant. §

BRIEF IN RESPONSE TO ORDER TO BRIEF 

WHETHER THIS CASE IS MOOT

Dated: May 25, 2017

Respectfully submitted,

Robert G. Oake, Jr. Paul M. Kittinger (P72754)

Texas State Bar No. 15154300 CARDELLI LANFEAR, P.C.

Oake Law Office 322 W. Lincoln

700 S. Central Expy., Suite 400 Royal Oak, MI 48067

Allen, Texas 75013 (248) 544-1100

(214) 207-9066 pkittinger@cardellilaw.com

rgo@oake.com

Attorney for ABPA Attorney for ABPA

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In Organic Seed Growers & Trade Ass’n v. Monsanto Co., 718 F.3d 1350, 

1357–59 (Fed. Cir. 2013), the Court held that because Monsanto “unequivocally”

disclaimed any intent to sue for certain activities, there was no case or controversy 

to be decided in a declaratory judgment action. In a case decided just last week, 

Arcelormittal v. AK Steel Corp., 2016-1357 (Fed. Cir., May 16, 2017), the Court 

stated that declaratory judgment jurisdiction was retained because “[a]t no time 

before the court entered summary judgment did ArcelorMittal unconditionally

assure Defendants and their customers that it would never assert RE'153 claims 24 

and 25 against them.” The court distinguished Organic Seed Growers, stating “[t]he 

conditional nature of the covenant's delivery here differentiates this case from others 

where we have found jurisdiction defeated by less than a fully executed covenant 

not to sue. See, e.g., Organic Seed Growers & Trade Ass'n v. Monsanto Co., [citation 

omitted] (finding that a party's "representations unequivocally disclaim[ing] any 

intent to sue appellant[s]" were, as a matter of judicial estoppel, sufficient to bind 

the representing party (emphasis added)).” Id. at 10, 11.1 

As this Court notes, in Doc. 112, n. 4, FGTL states “FGTL is not asserting 

infringement of the two patents in the ABPA case.” This statement is not an 

																																																						 1 In reaching its decision, the court referenced the “all circumstances” test from 

MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007) and explained that it 

was making its decision “[t]aking into account ‘all the circumstances,’ ... on the 

particular, unusual facts of this case. Arcelormittal at 5, 8.

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unequivocal statement that it, e.g., will never assert these two patents against any 

member of the ABPA or their customers. Therefore, under the Federal Circuit case 

law cited above, the statement does not affect the declaratory judgment standing of 

the ABPA in this case. Further, it is not necessary that FGTL assert infringement in 

the case for there to be declaratory judgment standing. Rather, if FGTL charged a 

member of the ABPA with patent infringement (as FGTL did, see Doc. 46, Case 

4:13cv00705, EDTX), then declaratory judgment standing exists. See 3M Company 

v. Avery Dennison Corp., 673 F.3d 1372, 1379 (Fed. Cir. 2012) (citing Cardinal 

Chem. Co. v. Morton Int’l, 508 U.S. 83, 96 (1993) (“[a]nd, of course, if ‘a party has 

actually been charged with infringement of the patent, there is, necessarily, a case or 

controversy adequate to support [declaratory judgment] jurisdiction.”)).

 Finally, the issue of mootness has been addressed by New World in briefing 

in a related case. See New World v. FGTL, Case No. 3:15-cv-01121(NDTX), (Doc. 

26, pgs. 16-18, Doc. 36-1, pgs. 3, 4). If FGTL makes enforcement representations 

beyond that referred to by this Court, ABPA requests additional briefing to respond.

Respectfully submitted,

/s/ Robert G. Oake, Jr. /s/ Paul M. Kittinger

Robert G. Oake, Jr. Paul M. Kittinger (P72754)

Texas State Bar No. 15154300 CARDELLI LANFEAR, P.C.

Oake Law Office 322 W. Lincoln

700 S. Central Expy., Suite 400 Royal Oak, MI 48067

Allen, Texas 75013 (248) 544-1100

(214) 207-9066, rgo@oake.com pkittinger@cardellilaw.com

Attorney for ABPA Attorney for ABPA

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CERTIFICATE OF ELECTRONIC SERVICE

I hereby certify that on May 25, 2017, I electronically filed the foregoing 

Document with the Clerk of the Court for the Eastern District of Michigan using the 

ECF System which will send notification to the registered participants of the ECF 

System as listed on the Court's Notice of Electronic Filing. 

I also certify that I have mailed by United States Postal Service the paper to 

the following non-participants in the ECF System: None. 

/s/ Robert G. Oake, Jr.

Attorney for Defendants

Texas State Bar No. 15154300

Oake Law Office

700 S. Central Expy., Suite 400

Allen, Texas 75013

(214) 207-9066

rgo@oake.com

Attorney for ABPA

2:15-cv-10137-LJM-SDD Doc # 57 Filed 05/25/17 Pg 4 of 4 Pg ID 1067