IN THE UNITED STATES DISTRICT COURT

 FOR THE EASTERN DISTRICT OF PENNSYLVANIA

AFP ADVANCED FOOD :

PRODUCTS LLC, : CIVIL ACTION

Plaintiff :

:

v. : NO. 05-3006

:

SNYDER’S of HANOVER :

MANUFACTURING, INC :

Defendant :

 MEMORANDUM

STENGEL, J. May 31, 2006

Plaintiff, AFP Advanced Food Products, Inc. (“AFP”), brings this motion to

dismiss its own case with prejudice. The defendant, Snyder’s of Hanover Manufacturing,

Inc. (“Snyder’s”), filed a response objecting to the motion in an effort to keep alive its

counterclaims. For the reasons stated below, I will grant the plaintiff’s motion and

dismiss this case.

I. BACKGROUND

 On June 23, 2005, AFP filed this patent infringement suit seeking a temporary

injunction against Snyder’s. AFP averred that Snyder’s willfully infringed upon their

valid patent (#6,873,675 filed on May 17, 2005 and named “Acidified Imitation Cheese

Sauce and Pudding Compositions and Method for Producing Such Compositions”)

through its production and sale of “Eatsmart Salsa Con Queso.” Snyder’s counterclaimed

requesting a declaratory judgment that the AFP patent (“675”) is invalid and

unenforceable. 

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On March 2, 2006, this case was stayed to allow for testing of an alleged prior art

product. During a March 31, 2006, conference call AFP reported the alleged prior art test

results, as well as more recent independent lab test results on Synder’s product, and

advised that it wanted to move to dismiss this matter. AFP had already dismissed a

related cause of action against Snyder’s co-packer, Durrset Amigos, and provided a

covenant not to sue to Snyder’s. 

II. PLAINTIFF’S MOTION TO DISMISS STANDARD

AFP moves this court to dismiss their complaint pursuant to Federal Rule of Civil

Procedure 41(a)(2). That rule provides: 

(2) By Order of Court. Except as provided in paragraph (1) of

this subdivision of this rule, an action shall not be dismissed

at the plaintiff’s instance save upon order of the court and

upon such terms and conditions as the court deems proper. If

a counterclaim has been pleaded by a defendant prior to the

service upon the defendant of the plaintiff’s motion to

dismiss, the action shall not be dismissed against the

defendant’s objection unless the counterclaim can remain

pending for independent adjudication by the court. Unless

otherwise specified in the order, a dismissal under this

paragraph is without prejudice. 

Fed. R. Civ. P. 41(a)(2); see also Glaxo Group Ltd. v. Dr. Reddy’s Labs., Ltd., 325 F.

Supp. 2d 502, 506-07 (D.N.J. 2004) (dismissing defendant’s counterclaims without 

prejudice for lack of jurisdiction after parties jointly filed a motion pursuant to Fed. R.

Civ. P. 41(a)(2)).

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It is uncontested that AFP’s patent infringement action should be dismissed with prejudice. 

3

In this case, AFP argues that after its patent infringement claim is dismissed with

prejudice, the court will no longer have jurisdiction over Snyder’s counterclaim.1 Further, 

AFP has provided a covenant not to sue Snyder’s for infringement of the 675 patent.

III. DISCUSSION

The Federal Circuit has addressed the situation in which a plaintiff has filed a

lawsuit for patent infringement and then attempted to dismiss the lawsuit and the

counterclaims against it. See Super Sack Mfg. Corp. v. Chase Packaging Corp., 57 F.3d

1054 (Fed. Cir. 1995) (affirming district court’s dismissal of defendant’s counterclaims

for lack of jurisdiction after plaintiff withdrew his suit). When addressing the

jurisdictional component for this type of case, a court begins by looking at the type of

relief being sought. In both Super Sack and this case the defendants moved the court for

a declaration that the plaintiffs’ patents are invalid. 

In order for the court to have jurisdiction over a declaratory judgment

counterclaim, an actual controversy between the parties must exist. 28 U.S.C. § 2201(a);

see Super Sack, 57 F.3d at 1058; North Carolina v. Rice, 404 U.S. 244, 246 (1971). 

Further, the “actual controversy must be extant at all stages of review, not merely at the

time the complaint is filed.” Preiser v. Newkirk, 422 U.S. 395, 401 (1975). The burden

of establishing the actual controversy requirement rests solely upon the party seeking the 

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declaratory relief. Super Sack, 57 F.3d at 1058 (citing International Med. Prosthetics

Research Assocs. v. Gore Enter. Holdings, Inc., 787 F.2d 572, 575 (Fed. Cir. 1986)).

In the domain of suits for declarations of patent rights and

relationships, a two-part test for determining justiciability has

evolved. As we stated in BP Chemicals:

There must be both (1) an explicit threat or other action by the

patentee, which creates a reasonable apprehension on the part

of the declaratory plaintiff that it will face an infringement

suit, and (2) present activity which could constitute

infringement or concrete steps taken with the intent to

conduct such activity.

4 F.3d at 978, 28 U.S.P.Q.2D (BNA) at 1126. Again, the

“purpose of the two-part test is to determine whether the need

for judicial attention is real and immediate,” in which case the

federal courts have jurisdiction, or whether it is “prospective

and uncertain of occurrence,” in which case they do not. Id.

Super Sack, 57 F.3d at 1058 (quoting BP Chems. Ltd. v. Union Carbide Corp., 4 F.3d

975, 978 (Fed. Cir. 1993)). 

In this case, Snyder’s poses three separate arguments regarding why its counter

claims remain “an actual controversy.” I will address each argument individually.

A. Snyder’s Argues AFP’s Covenant Not to Sue is Insufficient

According to Snyder’s, AFP’s offered covenant not to sue is not sufficient to

eliminate Snyder’s “reasonable apprehension that it will face another infringement suit by

AFP.” In particular, Snyder’s contends the covenant is insufficient because: (1) it only

addresses Snyder’s products manufactured before July, 2006; (2) it only addresses

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products containing more than 0.85% protein; and (3) it offers no protection to third

parties. AFP conversely argues that none of Snyder’s contentions are necessary or

required under Federal Circuit law.

As described above, and in Super Sack, the burden of establishing that an actual

controversy exists rests solely upon Snyder’s shoulders. However, given AFP’s original

claim for patent infringement will be dismissed with prejudice, Snyder’s cannot have a

reasonable apprehension of suit based upon the conduct stated in AFP’s complaint. 

Moreover, AFP has gone on to promise that it “will not assert that [Snyder’s has] any

liability, past or future, based on a cheese sauce or con queso product having greater than

zero point eight five percent (0.85%) protein.” Through this agreement, AFP has not only

limited its ability to enforce its presumably valid patent by decreasing its protected protein

range from less than 1.0% protein to less than 0.85% protein, but AFP has also extended

that covenant indefinitely. The combination of the present case being dismissed with the

covenant not to sue should reasonably protect Snyder’s from further claims from AFP on

this patent. 

B. Snyder’s Argues AFP’s Admissions are Sufficient to Maintain Claim

Snyder’s argues that statements made in AFP’s complaint that it was violating the

675 patent are enough to make them reasonably apprehensive of suit. As discussed 

above, however, because the parties have agreed to dismiss this case with prejudice, any 

apprehension of a suit based upon language in the original complaint is unreasonable. 

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2AFP’s complaint in that case was voluntarily dismissed before Amigos filed an answer.

6

C. Snyder’s Argues They Will be Unduly Prejudiced by the Dismissal

Snyder’s does not manufacture the Eatsmart Product, rather it is dependent upon

others to supply the product. During the course of this litigation AFP brought an action

against Snyder’s supplier, Durrset Amigos, seeking an injunction to stop them from

suppling Snyder’s with the product.2 Snyder’s therefore argues that by not including third

parties in AFP’s covenant not to sue, Snyder’s will be unduly prejudiced if and when AFP

again sues one of its suppliers. Read as a whole, however, the clear import of the

covenant is that AFP will not sue anyone based on product “made for” Snyder’s. Thus, in

view of AFP’s covenant, which extends to products “made for” Snyder’s, Snyder’s

cannot have a reasonable apprehension of suit or be unfairly prejudiced by AFP’s

treatment of the suppliers. 

IV. CONCLUSION

AFP has agreed to dismiss its original suit with prejudice. AFP’s covenant not to

sue provides Snyder’s with additional protection and extends to anyone producing

product for Snyder’s. It appears that there is no actual controversy in this case. This

court lacks jurisdiction over Snyder’s counterclaims and this case will be dismissed. An

appropriate order follows.

Case 2:05-cv-03006-LS Document 36 Filed 06/01/06 Page 6 of 7
IN THE UNITED STATES DISTRICT COURT

 FOR THE EASTERN DISTRICT OF PENNSYLVANIA

AFP ADVANCED FOOD :

PRODUCTS LLC, : CIVIL ACTION

Plaintiff :

:

v. : NO. 05-3006

:

SNYDER’S of HANOVER :

MANUFACTURING, INC :

Defendant :

 OPINION

AND NOW, this 31st day of May, 2006, upon consideration of plaintiff’s Motion

to Dismiss (Docket # 33), it is hereby ORDERED that the Motion is GRANTED. This

case shall be dismissed with prejudice. Defendant’s Motion for Leave to File an

Amended Answer (Docket # 25) is DISMISSED as moot. The Clerk of Court shall mark

this case as closed for all purposes. 

BY THE COURT:

 s/ Lawrence F. Stengel 

LAWRENCE F. STENGEL, J.

Case 2:05-cv-03006-LS Document 36 Filed 06/01/06 Page 7 of 7