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August 18, 2008



You're right that the Federal Circuit is a bit "gun shy" with regard to SCOTUS. I think the DJ standard in MedImmune is one issue that the Federal Circuit didn't want to buck too much with SCOTUS (unlike the TSM test which the Federal Circuit has come back with in it's "flexible" version). At least the Federal Circuit has said here and in the earlier case of Benitec Australia v. Nucleonics that there has to be some action from the patentee that provides a "reasonable" basis for the DJ plaintiff to believe that it might soon be in the cross-hairs of the patentee. Otherwise, the standard for DJ would be watered to simply the patentee having a patent.

Dear EG:

Funny you should mention TSM, because I was thinking that the CAFC was treating its reasonable apprehension of suit test much like TSM (or function-way-result in the DOE context) - as one test, not exclusive, that can be used (here) to interrogate the "totality of the circumstances." This seemed a change in thinking by the court, since for TSM at least SCOTUS had given its imprimatur to a test developed by the CAFC and never before affirmed by the Supremes. That message has gotten a bit lost in the general focus on the negative consequences of SCOTUS review of CAFC cases over the past 10 years or so.

But in Prasco for the first time since Medimmune the CAFC appeared to be rehabilitating their earlier test. Admittedly, the scope of the test has been severely narrowed, since a patentee can do much less than previously and still be susceptible to a DJ action. Underneath it all, it seems that the case stands for the proposition that the patentee has to take some affirmative action to be sued, and that at least sets a lower limit on jurisdiction.

It will be interesting to see what happens as the scope of activities expands from reasonable apprehension-demand for royalties-creating a regulatory barrier that confers jurisdiction (on the one hand) and patent marking-refusing a covenant not to sue that does not confer jurisdiction (on the other). Over time, as the lists expand, what is and is not sufficient for jurisdiction should become clearer.

The jurisdictional issue illustrates the inherent difference between the "jigsaw puzzle," "totality of the circumstances" methods employed by SCOTUS, and the "bright line rule," business-certainty, patent law harmonization methods favored (until recently) by the CAFC. In view of the court's Congressional mandate for patent harmonization, the real question becomes at what point does a difference in approach rise to the level of SCOTUS properly trumps Congressional intent.

Thanks for the comment.


Very thoughtful comments on what's happening as MedImmune is developed by the Federal Circuit (BTW, SCOTUS in MedImmnue shows no grip on the reality of negotiating patent licenses or maintaining them). You may be right that the Federal Circuit is gently (and carefully) trying to reclaim at least some of the discarded "reasonable apprehension" test (like the Federal Circuit has done with TSM). After the SanDisk case came down, it wasn't clear to me (and may still be unclear) as to what a patentee can do in trying negotiate a license without fear of the prospective licensee running to court if the negotiation didn't proceed to their satisfaction (what I called "walking softly without any stick"). We'll just have to see how this develops, I guess.

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