Rakuten Medical, Inc. v. Illumina, Inc.

Background

Rakuten Medical sued Illumina for declaratory judgments concerning the ILLUMINOX-related marks. The requested declarations addressed non-infringement of federal trademarks, non-infringement of trademarks and unfair competition, a right to register the marks, and absence of dilution.

Rakuten Medical alleged that it used ILLUMINOX for an anti-cancer technology platform and related products and services. It applied to register ILLUMINOX, ILLUMINOXHIKARI, and a Katakana version of ILLUMINOX for pharmaceutical preparations and medical devices used to treat and prevent cancer. Illumina owned the ILLUMINA trademarks and had opposed Rakuten Medical’s applications before the Trademark Trial and Appeal Board.

Illumina’s Motion

Illumina moved to dismiss under Federal Rule of Civil Procedure 12(b)(1), arguing that the court lacked subject-matter jurisdiction because there was no actual case or controversy. Illumina also argued that the court should decline to exercise jurisdiction over the declaratory-judgment action. It emphasized that Rakuten Medical did not currently use ILLUMINOX directly on a drug or medical device and argued that Illumina had objected only to that proposed use.

Rakuten Medical argued that Illumina’s objection extended beyond drugs and medical devices. It relied on Illumina’s opposition filing, statements by Illumina’s counsel during discussions connected to the trademark proceeding, and Illumina’s rejection of a proposed settlement that would have addressed use of ILLUMINOX on services.

Court’s Analysis

The Declaratory Judgment Act allows a federal court to declare the parties’ rights only when there is an actual controversy. For trademark disputes, the court considered whether Rakuten Medical had a real and reasonable apprehension that Illumina would sue or otherwise pursue a claim based on use of the mark.

The court described the issue as close and found that each piece of evidence, standing alone, likely would have been insufficient. But it considered the allegations together. The court concluded that Illumina’s opposition, its alleged objections during party discussions to uses beyond drugs and medical devices, and its rejection of the proposed settlement were sufficient to establish a real and reasonable apprehension of suit. The court therefore found an actual case or controversy.

The court then considered whether to exercise jurisdiction. It found no state-law issues, no evidence of duplicative litigation, and concluded that the action could resolve the controversy and clarify the parties’ legal relationship. The court decided to exercise jurisdiction over the trademark infringement, right-to-register, and dilution claims.

Disposition

Judge Lucy H. Koh denied Illumina’s motion to dismiss. The order did not decide whether Rakuten Medical’s marks actually infringed, could be registered, or diluted Illumina’s marks; it decided that the declaratory-judgment action could proceed in federal court.