Lex Computer & Management Corp., Plaintiff-appellant, v. Cbs, Inc., Defendant-appellee, 871 F.2d 1096 (Fed. Cir. 1989)

DECISION

Lex Computer & Management Corp. appeals from the final order of the District Court for the Southern District of New York, reported at 684 F. Supp. 811, 7 USPQ2d 1505 (1988), granting defendant's motion to dismiss the complaint in a declaratory judgment action for lack of subject matter jurisdiction, as required under 28 U.S.C. § 2201 (1982). We affirm.

OPINION

Lex did not allege and does not assert that CBS charged Lex with infringement or threatened any action against the company. Nor did it allege or otherwise put forth facts which would give rise to a reasonable apprehension of an infringement suit by CBS against Lex. Lex's status as licensor of a third party who may be charged with infringement does not in itself raise such reasonable apprehension. Nor was this alleged in any event.

Lex asserts that the district court erred in assuming that it had not sold devices like those CBS charged were infringements. However, the burden is on Lex to establish or at least allege facts before the district court, not this court, which would show the presence of an actual controversy.

Because the relationship of Lex to the third parties was not adequately developed, or the scope of Lex's possibly infringing activities made of record, we conclude that the dismissal must be treated as essentially on the pleadings alone. We do not need to address the elements of Lex's possible claim to affirm on this basis. However, to preclude the use of Judge Lasker's opinion or order as a basis for claim or issue preclusion, we hold that the order of dismissal is without prejudice, and that the analysis of the court shall have no effect, if there are further proceedings in this case or in other litigation, except with respect to the inadequacy of the complaint here in issue. On that basis, we affirm.

The request of CBS for attorney fees is denied.

Each party shall bear its own costs.