INGLESE

v.

BLACK SWAN TECHNOLOGIES, LLC

Defendant. /

ORDER1

Before the Court is Plaintiff Paul Inglese’s Response (Doc. 22) to Judge Mizell’s Show Cause Order (Doc. 21). The Order explained Inglese only brings claims under the Declaratory Judgment Act. Aside from the Act, Inglese alleges no other jurisdictional basis. This is an issue because the Act does not confer jurisdiction on its own. California v. Texas, 141 S. Ct. 2104, 2115 (2021) (“The Declaratory Judgment Act, 28 U.S.C. § 2201, alone does not provide a court with jurisdiction.”). So Judge Mizell ordered Inglese to show cause why the Court should not dismiss for lack of subject-matter jurisdiction.

According to Inglese, there is a dispute over whether he assigned the IP to Defendant Black Swan Technologies, LLC (a defunct company Inglese helped form). Since pending patents protect the IP, says Inglese, there is federalquestion jurisdiction.

To the extent that Inglese lobs a half-hearted attempt at showing Grable jurisdiction, the Court disagrees.² Grable applies to “a special and small category of cases.” Gunn v. Minton, 568 U.S. 251, 258 (2013) (cleaned up). Leaving aside the fact Inglese has no state-law claims (i.e., the category of actions to which Grable applies), the Court still has little trouble concluding this is not a Grable case. The word “patent” doesn’t automatically unlock the door to federal court. Id. at 258-59 (holding state-law “claims based on underlying patent matters will rarely, if ever, arise under federal patent law”).

Plaintiff must show more. And the Response does not come close to establishing Grable jurisdiction. See generally Damaso v. Costco Wholesale Corp., No. 2:19-cv-574-FtM-38NPM, 2019 U.S. Dist. LEXIS 182453 (M.D. Fla. Oct. 22, 2019) (analyzing Grable in detail).

controversy requirement. MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 137 (2007). And parties may seek anticipatory declarations when “a coercive action brought by the declaratory judgment defendant . . . would necessarily present a federal question.” Medtronic, Inc. v. Mirowski Family Ventures, LLC,

571 U.S. 191, 197 (2014) (cleaned up). This doctrine “allows parties to precipitate suits that otherwise might need to wait for the declaratory relief defendant to bring a coercive action.” Fastcase, Inc. v. Lawriter, LLC, 907 F. 3d 1335, 1340 (11th Cir. 2018) (cleaned up). “The question under the coercive-

action doctrine is ‘whether or not the cause of action anticipated by the declaratory judgment plaintiff arises under federal law.’” Mullins v. Securian Life Ins., No. 2:21-cv-247-SPC-NPM, 2021 WL 4991519, at *2 (M.D. Fla. Oct. 27, 2021) (quoting Fastcase, 907 F. 3d at 1340).

Here, the anticipated federal action is patent infringement—something federal courts have exclusive jurisdiction over.³ 28 U.S.C. § 1338(a). Yet this

§ 2751 (4th ed. Apr. 2022 update) (The Act “gives a means by which rights and obligations may be adjudicated in cases involving an actual controversy that has not reached the stage at which either party may seek a coercive remedy and in cases in which a party who could sue for coercive relief has not yet done so.”). The purpose of the Act is efficiency and eliminating the need for delay or multiple actions. E.g., Dish Network, L.L.C. v. Am. Broadcasting Cos., No. 12 Civ. 4155(LTS)(KNF), 2012 WL 2719161, at *3 (S.D.N.Y. July 9, 2012); 10B Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure § 2751 (4th ed. Apr. 2022 update). Rather than serve that purpose, this suit frustrates it by multiplying the Christoff litigation and unnecessarily seeking uncontested declarations that go to the heart of that dispute. Even if the Court had jurisdiction, it will not make any declarations. See Mullins, 2021 WL 4991519, at *3. The Court has discretion to declare rights.

Nat’l Tr. Ins. v. S. Heating and Cooling, Inc., 12 F. 4th 1278, 1281 (11th Cir. 2021). In weighing its discretion, courts may consider “equitable, prudential, and policy” concerns. MedImmune, 549 U.S. at 136. Whether a dec action will “interfere with or frustrate the other party’s pursuit of claims elsewhere,

is one of the equitable considerations a court may weigh.” Cephalon, Inc. v. Travelers Cos., 935 F. Supp. 2d 609, 613 (S.D.N.Y. 2013) (citation omitted). When faced with parallel cases, courts may decline to make declarations in favor of the coercive action. Mullins, 2021 WL 4991519, at *3.4

At bottom, Inglese failed to remedy the jurisdictional defect. So the Court dismisses this action. Morrison v. Allstate Indem., 228 F. 3d 1255, 1261 (11th Cir. 2000) (When “a court determines that there has been no grant that covers a particular case, the court’s sole remaining act is to dismiss the case for lack of jurisdiction.”); Travaglio v. Am. Express Co., 735 F. 3d 1266, 1268 (11th Cir. 2013) (Federal “courts are constitutionally obligated to dismiss the action altogether if the plaintiff does not cure the [jurisdictional] deficiency.”). Even if there is jurisdiction, the Court declines to make any requested declarations and dismisses in favor of Christoff. Accordingly, it is now ORDERED:

1. This action is DISMISSED without prejudice.

2. The Clerk is DIRECTED to enter judgment, terminate all deadlines, deny any pending motions as moot, and close the case. DONE and ORDERED in Fort Myers, Florida on May 38, 2022.

, Lh platrathe 7

UNITED STATES DISTRICT JUDGE

Copies: All Parties of Record