PAGE 1 – OPINION AND ORDER

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF OREGON

BOYDSTUN EQUIPMENT 

MANUFACTURING, LLC, an Oregon 

limited liability company

Plaintiff,

v.

Cottrell, Inc., a Georgia corporation,

Defendant.

Case No. 3:16-cv-790-SI

OPINION AND ORDER

Stephen J. Joncus, JONCUS LAW LLC, P.O. Box 838, Clackamas, Oregon 97015. Of Attorneys 

for Plaintiff.

J. Peter Staples, CHERNOFF VILHAUER LLP, 111 SW Columbia Street, Suite 725, Portland, 

Oregon 97201. Of Attorneys for Defendant.

Michael H. Simon, District Judge.

This patent dispute concerns the design of ratcheting tie-down systems used as part of, or 

with, car-hauling and cargo trailers. Plaintiff Boydstun Equipment Manufacturing, LLC brings 

an action seeking a declaratory judgment that it is not infringing on a patent owned by Defendant 

Cotrell, Inc. Defendant moves to dismiss Plaintiff’s claim for lack of subject matter jurisdiction. 

For the reasons discussed below, Defendant’s motion is DENIED. 

Case 3:16-cv-00790-SI Document 19 Filed 12/20/16 Page 1 of 8
PAGE 2 – OPINION AND ORDER

BACKGROUND

The parties’ dispute stems from a series of correspondence that took place between 

Plaintiff and Defendant. On March 31, 2016, Defendant sent Plaintiff a demand letter, in which 

Defendant accused Plaintiff’s Rapid RatchetTM winch of infringing on Defendant’s Patent 

No. 7,585,140 (the “’140 Patent”). The letter demanded that Plaintiff “immediately cease 

advertising, promoting, manufacturing, selling, or installing the ‘Rapid Ratchet winch’ as part of, 

or for use with, any car-haul or cargo trailers.” ECF 10 at 4. The letter further stated that if 

Plaintiff did not agree to cease and desist by April 15, 2016, Defendant “reserves the right to 

pursue all available remedies, including past damages.” Id. at 5. 

Plaintiff responded to Defendant’s letter on April 11, 2016, explaining why Plaintiff 

believed the Rapid WrenchTM did not infringe on the ’140 Patent. Defendant responded in a letter 

dated April 18, 2016, disagreeing with Plaintiff’s assertion that its product does not infringe on 

the ’140 Patent. In this letter, Defendant welcomed any evidence Plaintiff was willing to provide 

to support its assertion of non-infringement. The letter also reiterated Defendant’s demand that 

Plaintiff cease and desist advertising, manufacturing, selling, and installing its allegedly 

infringing product. Plaintiff did not respond to this letter. 

On May 6, 2016, Plaintiff brought this suit pursuant to the Declaratory Judgment Act

(“Act”), 28 U.S.C. § 2201, seeking a declaration that the Rapid WrenchTM does not infringe on 

Defendant’s ’140 Patent. On August 2, 2016—the same day Defendant received service of 

process—Defendant sent Plaintiff another letter (the “third letter”). In that letter, Defendant 

restated its hope that the matter could be resolved without the need for litigation, but also 

reiterated Defendant’s belief that Plaintiff’s product infringed on claims one and eight of the 

’140 Patent. Defendant also offered to “enter into a stipulated protective order with enforcement 

Case 3:16-cv-00790-SI Document 19 Filed 12/20/16 Page 2 of 8
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provisions, similar to the one previous [sic] entered by the parties, where product information 

provided by Boydstun is outside attorneys’ eyes only.” ECF 15 at 4 (quotation marks omitted).

Plaintiff filed a First Amended Complaint (“FAC”) on September 12, 2016. ECF 10. On 

October 28, 2016, Defendant filed a Motion to Dismiss (ECF 15) pursuant to Federal Rule

Civil 12(b)(1) for lack of subject matter jurisdiction.

STANDARDS

Federal courts are courts of limited jurisdiction. Gunn v. Minton, 133 S. Ct. 1059, 1064 

(2013) (citation omitted). As such, a court is to presume “that a cause lies outside this limited 

jurisdiction, and the burden of establishing the contrary rests upon the party asserting 

jurisdiction.” Kokkonen v. Guardian Life Ins. Co. of Am., 511 U.S. 375, 377 (1994) (citations 

omitted); see also Robinson v. United States, 586 F.3d 683, 685 (9th Cir. 2009); Safe Air for 

Everyone v. Meyer, 373 F.3d 1035, 1039 (9th Cir. 2004). A motion to dismiss under Federal 

Rule of Civil Procedure 12(b)(1) for lack of “subject-matter jurisdiction, because it involves a 

court’s power to hear a case, can never be forfeited or waived.” United States v. Cotton, 535 

U.S. 625, 630 (2002). An objection that a particular court lacks subject matter jurisdiction may 

be raised by any party, or by the court on its own initiative, at any time. Arbaugh v. Y&H 

Corp., 546 U.S. 500, 506 (2006); Fed. R. Civ. P. 12(b)(1). The Court must dismiss any case over 

which it lacks subject matter jurisdiction. Fed. R. Civ. P. 12(h)(3).

A Rule 12(b)(1) motion to dismiss for lack of subject matter jurisdiction may be either 

“facial” or “factual.” See Safe Air for Everyone, 373 F.3d at 1039. A facial attack on subject 

matter jurisdiction is based on the assertion that the allegations contained in the complaint are 

insufficient to invoke federal jurisdiction. Id. “A jurisdictional challenge is factual where ‘the 

challenger disputes the truth of the allegations that, by themselves, would otherwise invoke 

federal jurisdiction.’” Pride v. Correa, 719 F.3d 1130, 1133 n.6 (9th 2013) (quoting Safe Air for 

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Everyone, 373 F.3d at 1039)). When a defendant factually challenges the plaintiff’s assertion of 

jurisdiction, a court does not presume the truthfulness of the plaintiff’s allegations and may 

consider evidence extrinsic to the complaint. See Terenkian v. Republic of Iraq, 694 F.3d 1122, 

1131 (9th Cir. 2012); Robinson, 586 F.3d at 685; Safe Air for Everyone, 373 F.3d at 1039. A 

factual challenge “can attack the substance of a complaint’s jurisdictional allegations despite 

their formal sufficiency.” Dreier v. United States, 106 F.3d 844, 847 (9th Cir. 1996) (citation and 

quotation marks omitted).

DISCUSSION

Defendant argues that this Court lacks subject matter jurisdiction because the facts 

existing at the time Plaintiff filed the FAC do not give rise to a justiciable “case or 

controversy”—a requirement of the Act. The Act provides, “In a case of actual controversy

within its jurisdiction . . . any court of the United States, upon the filing of an appropriate 

pleading, may declare the rights and other legal relations of any interested party seeking such 

declaration, whether or not further relief is or could be sought.” 28 U.S.C. § 2201. In discussing 

the case or controversy requirement of the Act, the Court of Appeals for the Federal Circuit has 

noted: 

The Declaratory Judgment Act is not an independent basis for 

subject matter jurisdiction. Rather, it provides a remedy available 

only if the court has jurisdiction from some other source. Such 

jurisdiction is limited by Article III of the Constitution, which 

restricts federal judicial power to the adjudication of “Cases” or 

“Controversies.” U.S. Const. art. III, § 2. The Declaratory 

Judgment Act's requirement of “a case of actual controversy” 

simply affirms this Constitutional requirement, having long been 

interpreted as referring to any case and controversy that is 

justiciable under Article III. Thus, as long as the suit meets the 

case or controversy requirement of Article III, a district court may 

have jurisdiction over a declaratory judgment action.

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Prasco, LLC v. Medicis Pharm. Corp., 537 F.3d 1329, 1335 (Fed. Cir. 2008) (citations and 

footnote omitted). 

In arguing that no case or controversy exists, Defendant asserts that “an actual 

controversy must exist not only at the time the complaint is filed, but through all stages of the 

litigation.” ECF 15 at 5 (quoting Already, LLC v. Nike, Inc., 133 S. Ct. 721, 726 (2013)). 

Defendant further argues that it is the complaint under consideration, even if amended, that is the 

proper focus for determining jurisdiction. See Prasco, 537 F.3d at 1337; GAF Bldg. Materials 

Corp. v. Elk Corp., 90 F.3d 479, 483 (Fed. Cir. 1996); see also Rockwell Int'l Corp. v. United 

States, 549 U.S. 457, 473-74 (2007) (noting that when a plaintiff withdraws allegations it can 

defeat jurisdiction “unless [the allegations] are replaced by others that establish jurisdiction. 

Thus, when a plaintiff files a complaint in federal court and then voluntarily amends the 

complaint, courts look to the amended complaint to determine jurisdiction”). Based on its 

argument that the focus should be on the facts existing at the time of the FAC, Defendant asserts 

that the third letter it sent to Plaintiff—which was sent to Plaintiff before the FAC was filed—

removes any case or controversy between the parties. Defendant notes that the third letter was 

“quite different in tone and content” from the first two letters, and thus Defendant’s offer of a 

stipulated protective order and repeated expressions of hoping to avoid litigation have evaporated 

any case or controversy that might have existed. ECF 18 at 7. 

In response, Plaintiff asserts that Defendant’s understanding of the law is incorrect. 

Plaintiff argues that the Court should look to the facts existing at the time it filed its original 

complaint, because “[i]t has long been the case that the jurisdiction of the court depends upon the 

state of things at the time of the action brought,” and “[t]his time-of-filing rule is hornbook law 

(quite literally) taught to first-year law students in any basic course on federal civil procedure.” 

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ECF 17 at 2-3 (quoting Matthews Int’l v. Biosafe Eng’g, 695 F.3d 1322, 1331 (Fed. Cir. 2012)

and Grupo Dataflux v. Atlas Global Grp., L.P., 541 U.S. 567, 570-71 (2004)). Thus, the state of 

things at the time of the original filing—Defendant sending Plaintiff two strongly worded 

demand letters—indicate that a case or controversy is present. Plaintiff argues in the alternative

that even if the Court considers the third letter in its analysis, a finding of an active case or 

controversy is still warranted. 

The dispute of whether the Court should look to the state of things at the time of the 

original complaint or at the time of the FAC to determine whether a case or controversy exists 

need not be resolved at this time. The Court finds that, even considering Defendant’s third letter, 

a case or controversy exists between the Parties sufficient to confer jurisdiction to the Court. 

In analyzing whether a case or controversy exists when a declaratory judgment plaintiff 

brings a claim in a patent dispute, “the question in each case 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 judgment.” MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007) (quoting 

Maryland Casualty Co. v. Pacific Coal & Oil Co., 312 U.S. 270, 273 (1941)). “Generally, the 

Supreme Court has affirmed declaratory judgment jurisdiction when the parties had taken 

adverse positions with regard to their obligations, each side presenting a concrete claim of a 

specific right prior to the suit.” Prasco, 537 F.3d at 1339 (quotation marks citation omitted). The 

parties have done so in this case. 

Considering the totality of the circumstances, Defendant’s demand letters, including the 

third letter, unequivocally accused Plaintiff of infringing on the ’140 Patent. In response to 

Defendant’s first demand letter, Plaintiff explained why it believed that the Rapid WrenchTM is

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not infringing on Defendant’s ’140 Patent. In doing so, Plaintiff presented a concrete claim that it 

has the right to manufacture, market, and sell the Rapid WrenchTM. The fact that after Defendant 

became aware of Plaintiff filing suit, Defendant offered to stipulate to a protective order and took 

a more conciliatory tone in its third letter does not belie the fact that there remains a substantial

controversy of sufficient immediacy between the parties. Defendant's first two demand letters

unambiguously sounded the bell of a patent dispute and Defendant cannot unring that bell by 

claiming it has now softened its tone toward Plaintiff. Although written in a less adversarial tone, 

Defendant’s third letter does not erase the allegations made in the first two letters.

Seemingly, Defendant “is engaging in the kinds of extra-judicial patent enforcement with 

scare-the-customer-and-run tactics that the Declaratory Judgment Act was intended to obviate.”

SanDisk Corp. v. STMicroelectronics, Inc., 480 F.3d 1372, 1383 (Fed. Cir. 2007) (quotation 

marks omitted). Moreover, Defendant’s stated hope that its patent dispute with Plaintiff can be 

resolved without the need for litigation does not remove the controversy between Plaintiff and 

Defendant. See id. (finding that a party’s promise not to sue over a patent dispute “does not moot 

the actual controversy created by [that party’s] acts”). 

Defendant’s third letter claims that “the video on Boydstun’s website demonstrates that 

Boydstun’s ‘Rapid Ratchet’ meets every element of claim 1 [and] . . . claim 8 of the ’140 

Patent.” ECF 16-4 at 1. Thus, in this letter Defendant has not abandoned its charge of patent 

infringement. Accordingly, Defendant’s argument is without merit. See SanDisk, 480 F.3d at 

1381 (holding that “where a patentee asserts rights under a patent based on certain identified 

ongoing or planned activity of another party, and where that party contends that it has the right to 

engage in the accused activity without license, an Article III case or controversy will arise”); 

Cardinal Chem. Co. v. Morton Int'l, 508 U.S. 83, 96 (1993) (“If . . . a party has actually been 

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charged with infringement of the patent, there is, necessarily, a case or controversy adequate to 

support jurisdiction of a complaint . . . .” (emphasis in original)). 

CONCLUSION

Defendant’s motion to dismiss (ECF 15) is DENIED. 

IT IS SO ORDERED.

DATED this 20th day of December, 2016.

/s/ Michael H. Simon

Michael H. Simon

United States District Judge

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