By Michael H. Baniak & Suresh B. Pillai --
I. INTRODUCTION
Patent owners enjoy most of the same benefits, including the right to exclude and the freedom to contract, as the owners of other types of personal property. Balanced with these ordinary rights, however, is Congress's concern that the property rights of the patent owners do not conflict with the underlying purpose of patent grants: "[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."(1) At times, this allowance for inventors to enjoy their exclusive rights is in opposition to the right of the public to enjoy the benefits of new technology. This conflict becomes most apparent in situations where a patent may have been issued erroneously due to undisclosed prior art or inequitable conduct during the course of prosecution. In these instances, courts step in and attempt to rectify the situation accordingly. These trial determinations of patent validity can either result in invalidation of the claims at issue or an affirmation by the court that the patent is valid as claimed. In either case, the public wins because the quid pro quo of patent law has been maintained.
This balancing of patent owner rights with the rights of the public becomes even more precarious in instances where the party challenging the patent is a licensee. Patent licensing represents a merger of contract and property law whereby the patent owner grants a licensee the right to make or use the patented invention during the patent term for some present or future consideration. Problems can arise when issues pertaining to patent validity surface during the term of such licenses. In granting a license, the patent owner has allowed another party to also benefit from the exclusive nature of the patent term, but this exclusive nature is valuable only so long as the patent is valid. When issues of patent validity arise during the course of the patent term, licensees are rightfully concerned because they may be getting a reduced benefit of return on the consideration paid. On the other hand, patent owners, having contracted in good faith with the licensees, expect the licensees to honor the terms of the contract. It is here where the public interest aspect of patent law separates itself from conventional contract and property law.
Until the Supreme Court's decision in Medimmune, Inc. v. Genentech, Inc., the process whereby a licensee could challenge a patent's validity during the term of the licensing agreement was quite clear: the licensee could seek a declaratory judgment of patent validity under the provisions of the Declaratory Judgment Act so long as the case met the requirements of a case or controversy.(2) Under the test established by the Court of Appeals for the Federal Circuit, a case or controversy existed where the patent owner's conduct created on the part of the licensee a reasonable apprehension of suit if the licensee continued its infringing activity.(3) In the case of a licensee, infringing activity would include continuing to make or use the patented invention without the payment of the contracted consideration. This prong of the test also took into account the "totality of the circumstances" surrounding the patent owner's actions where the court would consider all actions on the part of the patent owner where the patent owner had not expressly threatened to file suit for infringement.(4) Under the second part of the test, the court would look to see if the licensee actually produced or was preparing to produce the infringing device.(5) This second prong required that the licensee have a "true interest to be protected by the declaratory judgment."(6) Following the Federal Circuit's formulation of the test, the lower district courts and the Federal Circuit all used it in their determinations of whether declaratory judgment actions brought by patent licensees reached the threshold of case or controversy required by the Declaratory Judgment Act.(7)
In Medimmune, however, the Supreme Court effectively invalidated the Federal Circuit's two-prong test for the Article III case-or-controversy determination in declaratory judgment ("DJ") actions. As a result, in the wake of Medimmune, many district courts are arriving at disparate conclusions regarding the threshold requirements for cases or controversies appropriate for declaratory judgment actions. One approach has been the adoption of the Federal Circuit's standing test, first adopted in the Federal Circuit's decision in Teva v. Novartis, under which a licensee must meet the strict requirements of standing and ripeness in order for the court to recognize an actual case or controversy.(8)
This paper will examine the history of Declaratory Judgment Act jurisprudence in patent cases. Part Two of the paper will provide a general background on the Declaratory Judgment Act as well as how declaratory judgments were applied in patent cases. Part Three will focus on the Federal Circuit's declaratory judgment jurisprudence and the development of its two-part case or controversy test. Part Four will examine the Supreme Court's decision in Medimmune as well as the ensuing Federal Circuit cases establishing the new Federal Circuit test. Part Five will be an examination of district court trends in the determination of case or controversy thresholds following Medimmune.
This paper stands for the proposition that the new test for Article III jurisdiction will create an uneven body of law due to differing interpretations of the requirements for the finding of a case or controversy. This proposition has been demonstrated in recent district court decisions that have defined the doctrines of standing and ripeness in various ways based upon the courts' insular interpretation of the individual case-specific facts.
II. PATENTS AND THE DECLARATORY JUDGMENT ACT BEFORE MEDIMMUNE
A. Defining Cases and Controversies: Generally
The Declaratory Judgment Act provides a remedy by which parties involved in an actual case or controversy can have their issues resolved in an Article III court.(9) It is a procedural device whereby an Article III court examines the purported dispute in order to "define the rights and legal relations of adverse parties."(10) The burden of showing the existence of an actual case or controversy rests with the plaintiffs.(11) Once the plaintiff has satisfied its burden, thereby establishing federal question jurisdiction, the court then decides whether or not to exercise its jurisdiction to adjudicate the issue.(12) Thus, the grant of a declaratory judgment, even in the face of an established case or controversy, is not an absolute right; it is at the discretion of the court.(13)
The Supreme Court first defined cases or controversies for the purposes of declaratory judgment jurisdictional determination in the case of Aetna Life Insurance Co. v. Haworth.(14) Under the Court's reasoning in Haworth, a justiciable controversy for the purposes of declaratory judgment actions must be "definite and concrete, touching the legal relations of parties having adverse legal interests."(15) The case or controversy also has to be "real and substantial . . . admitting of specific relief through a decree of conclusive character" rather than merely an advisory opinion on the law under a "hypothetical state of facts."(16) The Court concluded that "where there is such concrete case admitting of an immediate and definitive determination of the legal rights of the parties in an adversary proceeding upon the facts alleged," an Article III court of competent jurisdiction could hear the case.(17) Thus, Haworth set out the requirements of: (1) a real, non-hypothetical controversy; (2) a legal controversy where the rights of the parties under the law are in dispute; and (3) that the controversy is capable of specific relief that can be granted by the adjudicating court.
The Supreme Court further refined its test for case or controversy determinations in Maryland Casualty Co. c. Pacific Coal & Oil Co.(18) Under this refined test, courts must look at all of the facts on the record and determine "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.(19) The Court introduced the "all circumstances" facet as a means for courts to avoid narrowly viewing a set of facts to construe a case or controversy where none might exist. The Court also introduced the immediacy aspect for declaratory judgments, echoing the Court's desire to avoid the adjudication of hypothetical controversies. At the same time, the Court also avoided the creation of a bright-line rule, leaving threshold determinations to the discretion of the lower federal courts so long as the Court's requirements were met.
B. Defining Cases and Controversies: Patents
The Supreme Court first considered the existence of cases or controversies in patent law in the case of Lear, Inc. v. Adkins.(20) In Lear, a licensee refused to pay royalties for a patented invention on the grounds that the licensee believed the patent to be invalid.(21) The inventor immediately filed suit for patent infringement, and the licensee sought to have the patent declared invalid.(22) The Supreme Court of California found for the inventor, citing the doctrine of licensee estoppel as the primary reason why the licensee could not challenge the validity of the patent.(23)
The Supreme Court of the United States, however, invalidated the doctrine of licensee estoppel in patent cases, stating that "the equities of the licensor do not weigh very heavily when they are balanced against the important public interest in permitting full and free competition in the use of ideas which are in reality a part of the public domain."(24) The Court feared that an adherence to the doctrine of licensee estoppel might force the public to pay for the right to use something that should already be in the public domain.(25) The Court viewed the ability of the licensee to challenge patent validity, even under the term of the license, as a valuable check for the good of the public. Indeed, the court stated that, as the "only individuals with enough economic incentive to challenge the patentability of an inventor's discovery," licensees served an important public policy role.(26) The Court feared that allowing licensee estoppel would "muzzle" licensees and possibly require the public to "continually . . . pay tribute to would-be-monopolists without need or justification."(27) The Court concluded that, within the specific field of patent licensing, "the technical requirements of contract doctrine must give way before the demands of the public interest."(28)
The Court also addressed the issue of whether the licensee was required to pay royalties during the course of its challenge of patent validity. The Court ruled that licensees who are challenging patent validity need not pay royalties during the course of the challenge.(29) The Court reasoned that requiring payment would be adverse to the "aims of federal policy," as the enforcement of the royalty provisions would "give the licensor an additional economic incentive to devise every conceivable dilatory tactic in an effort to postpone the day of final judicial reckoning."(30)
The Court's decision was remarkable in its demarcation of patent property rights as unique from other property rights. The public policy considerations inherent in the grant of patent rights, as cited by the Court, suggest that the Court viewed any challenges to a patent's validity as ultimately being good for the public in general. In this case, the patent owner sued the repudiating licensee, thereby establishing the presence of an actual case or controversy. The Court, however, did not rule on whether a licensee had to be under threat of legal action for it to be able to assert the defense of patent invalidity via a declaratory judgment action. Furthermore, the Court failed to establish guidelines for determining the rights of non-repudiating licensees seeking declaratory judgments of patent invalidity.
In Arrowhead Industrial Water, Inc., the Federal Circuit established a balancing test, a two-part analysis for the determination of declaratory judgment jurisdiction.(31) This conduct-based two-part test took into consideration the conduct of both the plaintiff and the defendant.(32) The first part of the test looked to the defendant's conduct to see whether it created a reasonable apprehension of suit on the part of the plaintiff.(33) The second part of the test looked to the plaintiff's conduct to determine whether the plaintiff was producing or preparing to produce the infringing device.(34) This test became the standard for the Federal Circuit and the lower district courts in case or controversy determinations for declaratory judgment actions.
The Federal Circuit applied the test to a patent licensee issue in Gen-Probe Inc. v. Vysis, Inc.(35) In Gen-Probe, a licensee sought a declaratory judgment on patent invalidity while refusing to repudiate the licensing agreement.(36) Unlike Lear, the licensee continued to pay royalties as provided for under the licensing agreement.(37)
The Federal Circuit held that because the licensee maintained royalty payments to the patent owner, the licensee was under no reasonable apprehension of suit. Therefore, there was no case or controversy suitable for Article III adjudication. The court stated that licensees could not "invoke the protection of the Lear doctrine [against licensee estoppel] until it (i) actually ceased payment of royalties, and (ii) provides notice to the licensor that the reason for ceasing payment of royalties is because it has deemed the relevant claims to be invalid."(38) The court reasoned that this balanced out the risk for all parties, as the licensee should not expect to reap the benefits of the valid license by paying royalties while at the same time attempting to challenge the patent's validity.(39) A repudiation of the licensing agreement, in some way, represents the licensee's good faith belief of the patent's invalidity, for the licensee has much to lose in the event a court affirms a patent's validity.
The Federal Circuit later refined their two-part test to require a reasonable apprehension of imminent suit on the part of the declaratory judgment plaintiff.(40) This refinement echoed the Supreme Court's guidelines for jurisdiction first articulated in Haworth and followed throughout all of the Supreme Court's subsequent declaratory judgment decisions. The requirements for declaratory judgment standing for plaintiff mirrored the Supreme Court's elucidated standards for standing as well.(41)
III. THE MEDIMMUNE DECISION
A. Facts and Analysis
In Medimmune v. Genentech, the Supreme Court effectively invalidated the Federal Circuit's two-prong test for Article III case or controversy determination in declaratory judgment actions.(42) In Medimmune, a potential patent owner entered into a licensing agreement that covered a pending patent application.(43) When the patent issued, the patent owner claimed that, due to the fact that the drug manufactured by the licensee was covered by the newly-issued patent, the licensee owed royalties; the patent owner duly sent the licensee a letter informing them of this assertion.(44) Though the licensee asserted that the patent was invalid and that no royalties, therefore, were due, the licensee viewed the letter as a threat of litigation on the part of the patent owner.(45) The licensee summarily chose to continue to pay the royalty under protest and filed a declaratory judgment action seeking a finding of patent invalidity.(46) As the Federal Circuit's Gen-Probe decision had only been reached the year before adjudication of the Medimmune decision, Medimmune provided the Supreme Court with an opportunity to further define the rights of parties seeking declaratory judgment actions where a non-repudiating licensee is seeking a judgment of patent invalidity.
The Supreme Court in Medimmune discarded the Federal Circuit's decision in Gen-Probe by broadened the reach of the Lear doctrine, holding that the case or controversy threshold can be met by a licensee seeking a declaratory judgment on patent invalidity even where the licensee has not first repudiated the licensing agreement.(47) The Court focused on the coercive nature of forced licensing payments and held that the coercive nature of the forced royalty payments provided a case or controversy suitable for Article III adjudication.(48)
In Footnote Eleven of the Medimmune decision, the Supreme Court also overruled the Federal Circuit's 2-part test for determination of the existence of a case or controversy suitable for declaratory judgment jurisdiction.(49) The Court held that the two-part test was in conflict with its own precedents that found the existence of a case or controversy even in the absence of a reasonable threat of imminent suit.(50) Although the Court specifically invalidated the Federal Circuit's test, the Court failed to provide an alternative test by which lower courts might consistently determine whether a plaintiff has met its burden of showing the existence of a real case or controversy.
B. Impact
Medimmune injected further uncertainty into the field of patent licensing. Under the Lear doctrine, a licensee was forced to repudiate the license prior to challenging a patent's validity. In the wake of Lear, contract clauses that precluded the licensee's right to challenge the patent were considered illegal, as courts considered such clauses to be contrary to public policy that favored a licensee's right to seek a declaratory judgment on a patent's invalidity. While the Federal Circuit's Gen-Probe decision appeared to reign in the Lear doctrine by only finding a justiciable case or controversy where the licensee repudiated the license, the Medimmune Court expanded the power of licensees by allowing them to sue for declaratory judgments of invalidity without first requiring repudiation.
The Court did not, however, address the legality of non-challenge clauses, so-called "auto-repudiation" clauses, whereby the licensor could consider any challenges to a patent's validity on the part of the licensee an act of repudiation. It is here where the lines between the public policy interests underlying the Court's Lear decision and the property owner interests underlying the Federal Circuit's decision in Gen-Probe blur. If the public policy concerns espoused by the Court in Lear, that the "technical requirements of contract doctrine must give way before the demands of the public interest," remains a valid boundary for the strength of a patent grant, there is no reason to expect that these concerns would be based on whether or not a licensee repudiates the contract: the public policy concerns remain the same.
Although Medimmune lowered the bar for licensees seeking patent invalidations, the Court stopped short of providing licensees with a wholly independent cause of action. A claim of patent invalidity is still considered an equitable defense that can be raised by any party, including a licensee, being sued for infringement. While the Court allowed that an action could proceed even in cases where the licensee is not under a reasonable apprehension of imminent suit, the Court limited justiciability by only allowing those licensees who could meet the burden for showing a pattern of conduct on the part of the patent owner that would suggest the existence of a case or controversy suitable for Article III adjudication. Rather than requiring a so-called "smoking gun" in the form of a threat of litigation, the Court reasoned that a case or controversy could be established by a fact-specific evaluation of the totality of the circumstances. The inherent danger in such an analysis is a disparate weighing of similar facts within different cases by different federal district courts. In the wake of Medimmune, district courts have struggled to define the type of conduct on the part of the patent owner that could be considered foundational for determinations of case or controversy thresholds.
IV. FEDERAL CIRCUIT DECISIONS AFTER MEDIMMUNE
A. SanDisk Corp. v. STMicroelectronics(51)
In the Federal Circuit's first case following the Medimmune, the court established its new standard for case or controversy determination. In SanDisk, a patent owner met with a competitor to discuss the competitor's possible cross-licensing of the patent owner's patents.(52) During the course of the meeting, the competitor gave a presentation that was an infringement analysis of fourteen patents, with experts at the meeting referring to the competitor's literal infringement of the patents at issue.(53) Representatives of the patent owner claimed, however, that they had no intention of suing the competitor for infringement.(54) Prior to Medimmune, such a declaration would likely have denied the competitor case or controversy standing, for the competitor would not have been under a "reasonable apprehension of imminent suit." Indeed, such statements were likely designed to have the effect of mooting any claim on the part of a plaintiff of the existence of a case or controversy. Under the pre-Medimmune case or controversy standard, the District Court dismissed the competitor's declaratory judgment action due to a lack of a reasonable apprehension of imminent suit on the part of the plaintiff.(55)
During the appeal, however, and prior to the Federal Circuit's ruling, the Supreme Court ruled on Medimmune. The Federal Circuit abandoned the case or controversy rubric of their precedents and relied instead on the Supreme Court's Medimmune analysis.(56) The court held that a case or controversy existed between the two parties.(57) The court reasoned that the conduct of the patent owner in asserting their rights, through their meetings with the competitors, met the threshold in spite of the fact that the patent owner vocally expressed a disinclination to sue for infringement.(58) Under the totality of the circumstances, the court found that the patent owner's conduct established its belief that the competitors were infringing.(59) Furthermore, the court found that the competitor's conduct established its belief that the competitor had a right to manufacture its products without licensing the patent owner's technology.(60)
The Federal Circuit's test, therefore, was still based on balancing the conduct of the patent owner defendant and the allegedly infringing plaintiff, and the test still required that patent owner take some action in which the patent owner manifested some intent to assert his patent rights.(61) On the part of the plaintiff, the court required some sort of affirmative act demonstrating the plaintiff's belief that they could produce or prepare to produce the infringing device without a license. In essence, the Federal Circuit's new test, with the exception of the "reasonable apprehension of imminent suit" requirement, appeared to be very similar to the older test.
B. Benitec Australia, Ltd. v. Nucleonics, Inc.(62)
In Benitec, the Federal Circuit further defined and refined its new threshold test for cases and controversies. In this case, the declaratory judgment plaintiff was preparing to manufacture a product covered under defendant's patents, but the product had not been produced at the time the patent owner filed his suit for infringement.(63) During the course of litigation, the patent owner sought a dismissal of their infringement action and issued a covenant not to sue for the plaintiff's infringement activities "occurring on or before the date dismissal was entered in this action."(64) The District Court, citing a lack of a current case or controversy, dismissed the plaintiff's declaratory judgment action.(65)
On appeal, the Federal Circuit upheld the lower court ruling.(66) Although the court reiterated its rejection of the "reasonable threat of imminent suit" requirement from SanDisk, the court held that the plaintiff must still meet its burden of showing the existence of a case or controversy of "sufficient immediacy and reality."(67) The court also emphasized that meeting the jurisdictional requirements was just the first step of the plaintiff's ongoing burden to show the existence of a case or controversy.(68) The court established that the plaintiff must meet this burden at the time they are making the claim in addition to all times subsequent to the filing of the action during the ongoing course of litigation.(69) If at any time during the litigation the subject matter of the controversy is eliminated, the court reasoned the plaintiff should lose its declaratory judgment standing.(70) In this case, the court found that the controversy was to be years in the future; therefore, the court concluded that the requisite "sufficient immediacy and reality" for declaratory judgment jurisdiction was lacking on the part of the plaintiff.(71) Although the plaintiff had standing to seek a declaratory judgment at the time of filing, the court concluded that the defendant's subsequent promise not to sue mooted the controversy.(72)
The Federal Circuit's decision in Benitec further refined the Medimmune test by emphasizing the standing requirements of both ripeness and mootness as necessary for declaratory judgment plaintiffs. In Benitec, the controversy was not yet ripe, as the alleged infringing activity was to occur years in the future. Furthermore, the controversy was mooted with regard to other patents because the defendant provided the plaintiff with an indemnification from suit over the disputed patents. Therefore, though the defendant created the case or controversy by filing suit for infringement, they avoided potential adjudication on patent validity by issuing a promise not to sue.
This decision appears to be contrary to the Federal Circuit's decision in SanDisk in at least one way. In SanDisk, the Federal Circuit noted the defendant's affirmative actions in asserting its patent rights in a meeting disconnected from litigation, yet they found the meeting to provide enough proof of affirmative conduct to create a case or controversy. Here, the defendant actually filed an infringement suit against the plaintiff, and the defendant was able to moot the case or controversy with a comprehensive promise not to sue. The lesson from Benitec is that, while there must be some affirmative act on the part of the patent owner to assert its rights, there is no so-called "point of no return" beyond which a case or controversy cannot be mooted. Here, the case was already in litigation by the time the defendant offered its promise not to sue, and this effectively negated both the defendant's suit for infringement as well as the plaintiff's declaratory judgment action seeking patent invalidity. The impact of this ruling is two-fold. First, this ruling provides a way for patent owners to prevent declaratory judgment actions where they may have doubts about their own patents' validity. While this might not serve the public interests as intended, this ability of the patent owner to roll back the litigation clock may provide patent owners with pause before filing suit against each and every possible infringer. Secondly, this ruling provides declaratory action plaintiffs with a sword with which to exact promises from the patent owners not to sue. In the event that an alleged infringer is sued for infringement, the logical recourse under Benitec would be to file a declaratory judgment action seeking invalidity. This could be viewed as a valuable stopgap for infringement action that would, in theory, provides a means to advance efficient results and prevent frivolous lawsuits. Patent owners would pause before filing suit for infringement without adequate evidence in support of their position because the alternative would be a prolonged and presumptively expensive defense of their patents' validity. Therefore, the threat of a declaratory judgment of invalidity might be enough to dissuade patent owners from enforcing their patent rights by indemnifying the plaintiffs from future infringement actions.
IV. DISTRICT COURT TRENDS FOLLOWING MEDIMMUNE
A. Introduction
Thus, neither the Supreme Court not the Federal Circuit has articulated a clear test for courts to apply in deciding on the threshold for existence of cases or controversies suitable for adjudication in patent cases. This gap has led to differing interpretations among the district courts concerning the elements that a party seeking declaratory judgments needs to show in order to establish standing.
One of the issues faced by the courts is how to define the presence of an "actual or imminent injury caused by the patent owner that can be addressed by judicial relief" while reconciling such a finding with the Supreme Court's dismissal of the Federal Circuit's "reasonable apprehension of imminent suit" test.(73) Courts have interpreted the Medimmune decision as not requiring the patent owner to file suit before a declaratory judgment plaintiff can file for a finding of invalidity; therefore, any steps taken by a patent owner that speaks to any sort of intent to enforce its rights can be construed as an "actual or imminent injury."(74) At the same time, the past or present conduct of a patent owner regarding defense of patent rights will not be considered where a plaintiff will only be infringing in the future. In Benitec, the plaintiff did not intend to manufacturer allegedly infringing product until years into the future. Similarly, where a patent has not issued, courts are reluctant to find standing for plaintiffs who are seeking to invalidate it, as the controversy is not yet ripe and is, therefore, unsuitable for adjudication.(75)
Another issue concerns the mooting effect of covenants not to sue included in patent licensing agreements. In Benitec, the Federal Circuit enforced such covenants as valid and held that such a covenant mooted the case or controversy and, by extension, the plaintiff's declaratory judgment action.(76) District courts have been forced to construe such covenants to determine whether they provide enough protection for the plaintiff that the patent owner can never create a case or controversy in the future. For example, covenants not to sue for all instances of infringement up until the date of the grant of the covenants have been deemed to be insufficient, as such covenants would not prevent the patent owner from filing suit for later instances of infringement. Therefore, some district courts have held that cases or controversies are still active where the convenants not to sue do not protect the declaratory judgment plaintiff from future infringement actions by the patent owner.(77)
A third trend addresses the conduct of the patent owner under the "all the circumstances" rubric and the fact specific analysis that accompanies such cases. District courts have considered the conduct of patent owners by looking at the zeal with which they enforce their patent rights through litigation, conduct outside the litigation arena, and conduct concerning patents that are not at issue.(78)
A. Defining an Imminent Injury
In Judkins v. HT Window Fashions Corp., the District Court for the Western District of Pennsylvania considered the issue of whether an alleged infringer can meet the case or controversy threshold in a declaratory judgment action where they are not yet infringing.(79) In Judkins, the patent owner of a window covering patent sued a competitor for infringement, and the competitor promptly filed an action seeking a declaratory judgment of patent invalidity. Prior to the litigation, the patent owner had sent a letter to the competitor advising them that the competitor's products may be infringing on the patent owner's patents. As a result, the competitor altered its products in a manner such that the products no longer infringed upon the patents at issue, yet the patent owner persisted in filing suit for infringement.
The District Court held that the competitor had met its burden of showing the existence of an ongoing case or controversy for the purpose of declaratory judgment jurisdiction.(80) The court reasoned that the patent owner had caused an "actual and imminent injury" by forcing the competitor to change its products and placing the competitor in the position of "either foregoing production of a product or being sued for patent infringement."(81) The court concluded that the competitor's injury could be redressed via judicial relief, as a ruling from the court that the patent was invalid would remove the threat of litigation.(82) The court, citing an incriminating letter from the patent owner to the competitor, also concluded that the injury was "immediate and real."(83)
In essence, the District Court's conclusions rested on the test for Article III justiciability espoused in Lujan.(84) The fact that the competitor was no longer infringing did not dissuade the court from finding the presence of an actual or imminent injury. Similar to Benitec, the controversy itself was mooted during the course of the litigation; however, in this case the declaratory judgment plaintiff, not the defendant, was the party responsible. Through the plaintiff's alteration of his products to avoid infringement, the plaintiff eliminated the case or controversy. The defendant's own conduct renewed the case or controversy, as the court found the letter sent from the defendant to the plaintiff to be one that that warned of future litigation should the defendant choose to return to making its previous product. The court's decision should serve as a warning for patent owners with respect to conduct associated with assertion of patent rights. Here, the patent owner filed suit and persisted in pressing his claims in spite of the competitor's efforts to work around the infringement. Had the patent owner refrained from sending the threatening letter, the case or controversy threshold would have been mooted, and patent validity would not have been an issue.
The court made note of the patent owner's past conduct in filing suit against the competitor and, in doing so, conflated the "all circumstances" test with the justiciability doctrine of ripeness. Since the patent owner's past conduct suggested that the patent owner would file suit against a plaintiff in the near future, that past conduct might represent a present, definite and concrete threat to the plaintiff likely to result in future harm.
In Pfizer, Inc. v. Ranbaxy Labs, the District Court of Delaware considered the issue of whether a threat of litigation based on infringement of a patent that has not yet issued constituted a justiciable case or controversy suitable for a declaratory judgment.(85) In Pfizer, a patent owner brought an action against competitor, alleging that the competitor had infringed on the patent owner's drug patents. The competitor immediately filed suit seeking a declaratory judgment of invalidity. For one of the patents at issue, the patent owner was seeking a reissue, and the owner had granted a covenant not to sue within the original licensing agreement. In essence, the competitor was seeking a declaration that the covenant not to sue would be covered by the reissued patent as well.
The court, citing the Supreme Court's decision in Medimmune, held that the declaratory judgment plaintiffs had failed to meet their burden of establishing an actual case or controversy. The court stated that "[t]he existence of issued and presently enforceable patent claims against a declaratory judgment plaintiff is a necessary prerequisite to the continued litigation of a declaratory judgment action."(86) Here, the plaintiffs were attempting to assert their rights before the grant of the reissued patent; under the totality of the circumstances, the court concluded that there was no "current and concrete" controversy between the parties.(87) The plaintiff also argued that because the covenant not to sue did not cover any reissue of the patent at issue, the court still retained subject matter jurisdiction over the declaratory judgment counterclaim.(88) The court, however, considered the possibility of a reissued patent to represent a "speculative [and] purely hypothetical" case or controversy that was unripe for Article III adjudication.(89)
The court's decision in Pfizer may have ramifications for patent licensing agreements, with patent owners being more careful to craft agreements that would only cover licensees for those patents that have issued. Similarly, in many technological arts, patent families are closely interrelated to the point where the use of one may be construed as the use of all. For example, where a patent family includes a pharmaceutical compound and a method for creating the compound, claims to the method and the compound may be in separate patents, yet the method must be practiced in order to create the compound. Any company that infringes on one may be infringing on both. In these cases, licensees would want to protect themselves from future litigation and the uncertainty concerning their contract rights if patents from families currently licensed should undergo the reissue process. Licensees should incorporate protective clauses within their licensing agreements that would protect them from later claims of infringement should patents from a related family be issued.
One other aspect of the court's decision was its refusal to cite to Federal Circuit precedent. Since the Supreme Court's decision in Medimmune, the Federal Circuit had ruled in numerous declaratory judgment action cases, yet the District Court of Delaware failed to cite to any Federal Circuit cases. In the wake of the Supreme Court's Medimmune decision, it is possible that federal district courts are disinclined to follow the reasoning in Federal Circuit decisions that may bear on their own cases. This disinclination may be due to the Supreme Court's reversal of several key Federal Circuit decisions, including Medimmune and KSR.(90) District courts presumably do not want their decisions to be overturned. This may result in even more disparate court rulings across the many different federal circuits as each circuit attempts to formulate their own rules for establishing case or controversy threshold. Such a result would be antithetical to the purpose underlying the existence of the Federal Circuit, the final stop in the appeals process before the Supreme Court.
B. Covenants Not to Sue
In light of patent owners' attempts to issue covenants not to sue, many district courts are closely examining the substance of such covenants to insure that they provide enough protection to the potential licensees or alleged infringers. In FieldTurf USA v. Sports Construction Group, the District Court for the Northern District of Ohio considered such an indemnification and concluded that the covenant did not divest the court of jurisdiction over the patent invalidity declaratory action sought by the plaintiffs.(91) In FieldTurf, a patent owner sued a competitor for infringement, and the competitor filed counterclaims seeking declaratory judgments for non-infringement and patent invalidity.(92) During the course of litigation, the patent owner voluntarily dismissed their infringement claims without prejudice and gave the plaintiff a written covenant not to sue.(93) This covenant was to cover past and present infringement at one location where the plaintiff had used the patent owner's invention.(94) There was no language in the covenant that protected the competitor from future infringement actions.(95) Based on their dismissal of the infringement suit and issued covenant not to sue, the patent owner moved the court to dismiss the plaintiff's declaratory judgment counterclaims.(96)
Although the patent owner had provided a written covenant not to sue, the court held that such a covenant, as written, was insufficient to divest the court of jurisdiction over the plaintiff's counterclaims.(97) The court, having noted that the patent owners had not provided the court with the contents of the covenant, reasoned that both the limited nature of the covenant as asserted and the fact that the covenant did not "extend to all completed past uses, sales, offers of sale, and installations of" plaintiffs' allegedly infringing product rendered the covenant insufficient.(98) The court, citing the Medimmune standard, reasoned that unconditional covenants not to sue would divest courts of their declaratory judgment subject matter jurisdiction.(99) However, the court, citing Federal Circuit precedent from Sierra Applied Sciences, Inc. v. Advanced Energy Indus., Inc., noted that conditional covenants would not be sufficient to "eliminate an otherwise live controversy between the parties."(100) Although the Federal Circuit's decision was based on the now-defunct "reasonable apprehension of imminent suit" test, the district court reasoned that the outcome would be the same under the Medimmune standard.
The district court also distinguished the case from the Federal Circuit's decision in Benitec because the promise not to sue in the earlier case was unconditional. Furthermore, in Benitec, the declaratory judgment plaintiff had not engaged in any potentially infringing activities, such as offering to sell or the actual sale of a commercial product, at the time the suit was filed.(101) Under the district court's reasoning, the proper analysis for whether covenants not to sue divest Article III courts of declaratory judgment jurisdiction rests on whether the covenant is truly unconditional. Thus, the implication from the court's decision is that federal courts will only find the absence of a case or controversy where the patent owner unconditionally guarantees that they will not sue the alleged infringer, regardless of whether or not there is any conduct on the part of the patent owner suggesting that they will sue.
C. Past Conduct of Defendant's under the "All Circumstances" Test
One of the key determinants used by courts in establishing declaratory judgment jurisdiction is evidence of patent owners' conduct in enforcing their rights. The Federal District Court for the Eastern District of Wisconsin considered the issue of whether a justiciable case or controversy exists between a patent owner and an alleged infringer where the patent owner has sued other parties in the past in WS Packaging Group, Inc. v. Global Commerce Group, Inc.(102) In WS Packaging Group, a competitor sought a declaratory judgment of non-infringement after the patent owner threatened to sue the competitor's customers.(103) The patent owner brought a motion to dismiss for lack of jurisdiction.(104) The patent owner claimed the plaintiff did not possess the requisite declaratory judgment standing, as there was no current case or controversy between the two parties.(105) The patent owner also executed a waiver equivalent to a covenant not to sue in which the patent owner promised not to sue the competitor for any and all past infringement up until the date of the waiver's filing.(106) Upon execution of the waiver, the patent owner made it clear that the waiver was not intended to waive their right to sue for future acts of infringement.(107)
As the timing of the suit at its outset was prior to the Supreme Court's decision in Medimmune, the district court judge used the Federal Circuit test to conclude that the waiver was insufficient to remove the plaintiff's "reasonable apprehension of imminent suit."(108) The patent owner responded with a more expansive waiver that indemnified the plaintiff from any and all future infringement of the patent at issue.(109) The waiver was non-transferable and applied only to the plaintiff and not to any of the plaintiff's current or future sub licensees.(110) Once again, the district court refused to dismiss the suit on the grounds that the plaintiff was still under a "reasonable apprehension of imminent suit."(111) The court reasoned that the threat remained because the patent owner still had possible causes of action against the plaintiff's customers.(112) Following the court's ruling, the patent owner provided the court with another license that protected the plaintiff and plaintiff's customers from suit for infringement of the patent at issue, but this protective license was non-transferable to future sub licensees.(113)
The court once again found that the new license did not divest the court of jurisdiction.(114) Rather than basing their decision on the defunct Federal Circuit test, the court relied on the Medimmune standard for declaratory judgment jurisdiction.(115) The court noted that, though the patent owner had created a covenant not to sue the plaintiff and the plaintiff's current customers for infringement, the lack of protection for future customers and sub licensees established the requisite case or controversy for the plaintiff's declaratory judgment action.(116) The court found the lack of future waiver to be a type of indirect coercion meant to induce the plaintiff's customers to pressure the plaintiff for resolution.(117) The court concluded that these types of pressure tactics created an Article III case or controversy that could not be cured by the covenant not to sue offered by the patent owner.(118)
The case is notable for the repeated efforts of the patent owner to contract its way out of liability and the court's refusal to dismiss under both the defunct Federal Circuit test as well as the Medimmune test. Although the patent owner had not filed suit against the hypothetical future customers of the plaintiff, the court maintained that the threat was definite or concrete and, therefore, justiciable. The fact-based analysis focused not on the litigious conduct of the patent owner towards the plaintiff but instead on the past conduct of the patent owner and the manner and zeal with which the patent owner protected its intellectual property rights. On the basis of past conduct, the court found evidence of future harm and Article III jurisdiction. This finding goes against the Supreme Court's decision that, for a case to be sufficiently ripe for adjudication, the harm must be concrete and imminent. Here, the district court balanced the "future harm" ripeness with the "all circumstances" test in their finding that the past conduct of the patent owner established imminent future harm.
In contrast to the WS Packaging Group, the District Court for the Northern District of California has held that possible future litigious conduct on the part of a patent holder would not give rise to a case or controversy.(119) In Bridgelux, Inc. v. Cree, Inc., a patent holder selectively sued a competitor for infringement of some of its patents.(120) The competitor filed suit seeking a declaratory judgment on patent validity for all of the patents, not just the patents at issue.(121)
The district court analyzed the issue of declaratory judgment standing under the Medimmune rubric as established by the Federal Circuit in Teva Pharms. USA v. Novartis Pharms. Corp.(122) The plaintiff argued that a current case or controversy existed based upon declarations made by its chief executive officer concerning a conversation with a customer.(123) The customer allegedly stated that representatives of the patent owner had advised the customer of possible patent infringement if the customer were using the plaintiff's, and not the patent owner's, invention.(124) In addition, the customer had, later that same year, allegedly received a threatening letter from the patent owner accusing the customer of using products that infringed the patent owner's patents.(125) Subsequently, the patent owner filed suit on two out of the four patents at issue, and the plaintiff's chief executive officer stated that the patent owner had filed suit in the past against other alleged infringers.(126)
The patent owner argued that the plaintiff had not met its burden of showing a present case or controversy because the patent owners had never alleged infringement of the two patents not at issue.(127) The court agreed with the patent owner and held that the plaintiff had failed to meet its burden of showing an actual and imminent injury of "sufficient immediacy and relief to warrant the issuance of a declaratory judgment."(128) The court reasoned that much of the plaintiff's case was founded on hearsay, and the court found compelling the patent owner's failure to file suit over infringement of the two patents not at issue.(129) The court concluded that, even if the representations of the plaintiff's chief executive officer were not hearsay, the evidence would not be enough to establish that the patent owner had inflicted an "actual and imminent injury" on the plaintiff.(130) The court found that statements made by the patent owner to the press with regard to the patent owner's intent to defend its rights were unremarkable, as "[t]he same could be said [by] many patent-holders."(131)
The Bridgelux court's treatment and analysis of the patent owner's conduct under the Medimmune "all the circumstances" stands in stark contrast to that of the WS Packaging Group court. In WS Packaging Group, the patent owner's conduct with regard to filing suit against infringers provided enough proof for the court that an actual case or controversy existed, and the court concluded that the plaintiff had met its burden. In that case, the court referenced public comments made by the patent owner of its intent to litigate to protect its rights as evidence of conduct that gave rise to an actual case or controversy under Medimmune. In contrast, in Bridgelux, although the patent owner was concurrently suing the plaintiff for infringement of two other patents, the Northern District of California was reluctant to find an actual case or controversy where the patent owner had not specifically accused the plaintiff of infringement on the patents at issue. Even their treatment of evidence was in contrast. The "all the circumstances" test provides no guidance with respect to the weight the court can give various pieces of evidence based on their source. In WS Packaging Group, the District Court for the Eastern District of Wisconsin freely admitted hearsay evidence in the form of a magazine interview given by an agent of the patent owner. In contrast, the court in Bridgelux specifically discounted the witness testimony proffered by the plaintiff company's chief executive officer in its analysis of the patent owner's conduct. In both cases, the outcomes of the cases would have been significantly different had the courts chosen to adopt each other's analysis.
V. CONCLUSION
In the wake of Medimmune, neither the Supreme Court nor the Federal Circuit has articulated a clear bright line test for Article III courts to apply in deciding on the existence of cases or controversies suitable for Article III adjudication. This gap has led to differing interpretations among the district courts concerning the elements that plaintiffs seeking declaratory judgments need to show in order to meet their burden of standing.
As can be expected, one of the by-products of the Medimmune decision has been a renewed emphasis, on the part of patent owners, on the careful drafting of patent licenses. The doctrine of licensee estoppel met its demise in Lear, but that decision only addressed such clauses within the framework of a repudiating licensee. Neither the Supreme Court nor the Federal Circuit has provided any guidance concerning the legality of such clauses in cases where the licensees are non-repudiating. In light of the Supreme Court's emphasis on the public policy concerns underlying its disavowal of licensee estoppel in patent cases, it is likely that the Court would similarly hold that such no-contest clause would be invalid even in cases where the licensee is non-repudiating. The Lear court opined that "the technical requirements of contract doctrine must give way before the demands of public interest", but the court did not hold that this was only to be the case where the licensee repudiated the agreement.(132) Logically, the same public policy concerns underlying the Court's decision in Lear would hold true regardless of whether or not the licensee repudiated the agreement.
The Supreme Court's decision in Lujan established that, at all times during litigation, a declaratory judgment plaintiff should meet its burdens of standing.(133) Actions taken by the defendant can moot the controversy, however, the same logic does not necessarily hold true for actions of the plaintiff when viewed in balance with the actions of the defendant. In Judkins, for example, the plaintiff altered its products to avoid infringement during the course of litigation, yet the District Court for the Western District of Pennsylvania held that the case or controversy was not mooted due to the defendant's act of sending letters warning of future litigation. The lesson from Judkins is that declaratory judgment defendants should be careful to avoid actions that would renew a mooted case or controversy. Furthermore, conduct of both the plaintiff and the defendant can serve to moot a case or controversy at any time during the course of litigation, and the courts will look to the balancing of the conduct of both parties in their determinations of standing.
Patent owners have turned to the use of covenants not to sue as a means to prevent licensees or infringers from filing declaratory judgment actions seeking invalidity, but the issue in these cases appears to be the amount of protection these covenants provide to the alleged infringers in contemplation of future litigation. In Benitec, the Federal Circuit held that the patent owner's covenant covering past infringing activities up until the date of the filing of the indemnification sufficiently mooted the case or controversy between the parties.(134) However, in FieldTurf USA, Inc., the District Court for the Northern District of Ohio held that a covenant not to sue that failed to cover future infringing actions was insufficient to moot the case or controversy.(135) In light of the recent refusal of the Supreme Court to grant certiorari in the Benitec case, it is likely that the Federal Circuit's conclusions will be considered law. A covenant not to sue that covers alleged infringing activity up until the date of the covenant itself would sufficiently moot a present case or controversy. This approach would be logical, for covenanting for some alleged future harm would be akin to mooting a hypothetical controversy where none exists. The patent owner should have to take some concrete action before an alleged infringer would have standing for a declaratory judgment, and the approach of the Northern District of Ohio seemingly flies in the face of the Supreme Court's standing test in Lujan.
Some district courts had interpreted the Federal Circuit's decision in SanDisk as having articulated a new standard for Article III jurisdiction that relies on a more wide-open examination of the conduct of the patent owner. Where a patent owner takes any action that could be construed as a step towards the creation of a case or controversy, the SanDisk decision suggests that the Federal Circuit will find Article III jurisdiction. In WS Packaging Group, for example, the patent owner filed suit against the plaintiff's customers and not against the plaintiff, yet this action created a justiciable case or controversy between the patent owner and the plaintiff.(136) The WS Packaging Group court concluded that the patent owner's actions could be construed as a pressure tactic that would force the plaintiff to comply with the owner's demands.(137) WS Packaging Group therefore stands for the proposition that a court's subjective analysis of a patent owner's intent plays a part in establishing the presence of a case or controversy.(138) As shown by the Bridgelux district court, however, some federal courts are reluctant to adopt this more wide-open form of examination.(139)
Recent court decisions suggest that there is still much confusion regarding the establishment of declaratory judgment jurisdiction. As evidenced by the disparate findings from these cases, the Federal Circuit and the Supreme Court should provide guidance to the other Article III courts by defining the metes and bounds of the types of conduct and the evidence that can be used to show that, under "all the circumstances," standing is appropriate. In short, the world has become a little more uncertain for patent holders trying to enforce their rights.
ENDNOTES:
(1) U.S. CONST. art. I, § 8, cl. 8.
(2) Arrowhead Indus. Water, Inc. v. Ecolochem, Inc., 846 F.2d 731, 736 (Fed. Cir. 1988).
(3) Id.
(4) Michael A. Ladra and Lillian Ewing, Declaratory Judgment Practices After SanDisk v. STMicroelectronics, 24 SANTA CLARA COMPUTER & HIGH TECH. L.J. 185, 188 (2007).
(5) Id.
(6) Arrowhead Indus. Water, Inc., 846 F.2d at 736.
(7) See Ladra and Ewing, supra note 5, at 190.
(8) Teva Pharms. USA, Inc. v. Novartis Pharms. Corp., 482 F.3d 1330 (Fed. Cir. 2007).
(9) 28 U.S.C. § 2201 (2006). The Declaratory Judgment Act provides that:
28 U.S.C. § 2201(a) (2006).
(10) See supra note 3, p. 186.
(11) Cardinal Chem. Co. v. Morton Int'l Inc., 508 U.S. 83, 95 (1993).
(12) See supra note 3, p. 186.
(13) Id.
(14) Aetna Life Ins. Co. v. Haworth, 300 U.S. 227 (1937). Haworth was an insurance dispute wherein the plaintiff, Aetna, sued for a declaratory judgment that the insurance policies purchased by the defendant were invalid based upon the defendant's failure to pay the required premiums in a timely manner. The plaintiff claimed that a case or controversy existed due to the dispute over the existence of the defendant's permanent and total disability and as to the continuance of the plaintiff's obligations in spite of the defendant's failure to pay the required premiums. Id. at 238-239.
(15) Id. at 240.
(16) Id. at 241.
(17) Id.
(18) Md. Cas. Co. v. Pac. Oil & Coal Co., 312 U.S. 270 (1941). In Maryland Casualty Co., an insurance company brought an action seeking a declaratory judgment that the plaintiff need not indemnify nor defend an employee of the defendant insured. Id. at 271.
(19) Id. at 273.
(20) Lear, Inc. v. Adkins, 395 U.S. 653 (1969).
(21) Id.
(22) Id. at 655.
(23) Id. at 656. The Supreme Court cited the decision of the Supreme Court of California, which held that, even though manufacturers can freely challenge the validity of an inventor's patent:
Id. (citing Adkins v. Lear, Inc., 435 P.2d 321, 325-326 (1967)).
(24) Id. at 670.
(25) Lear, Inc., 395 U.S. at 664.
(26) Id.
(27) Id.
(28) Id. at 671.
(29) Id. at 670.
(30) Lear, Inc. v. Adkins, 395 U.S. 653, 673 (1969). The Court also feared that "the cost of prosecuting slow moving trial proceedings and defending an inevitable appeal might well deter many licensees from attempting to prove patent invalidity in the courts." Thus, the Court viewed licensee challenges as a positive means of strengthening patent grants through the elimination of invalid patents by the actions of licensees. Id.
(31) Arrowhead Indus. Water, Inc., 846 F.2d 731.
(32) Id. at 736.
(33) Id.
(34) Id.
(35) Gen-Probe Inc. v. Vysis, Inc., 359 F.3d 1376 (Fed. Cir. 2004).
(36) Id. at 1380.
(37) Id.
(38) Id. at 1381.
(39) Id. at 1382.
(40) Teva Pharms. v. Pfizer, Inc., 395 F. 3d 1354 (Fed. Cir. 2005).
(41) Lujan v. Defenders of Wildlife, 504 U.S. 555 (1992). In Lujan, the Supreme Court reiterated the requirements for Article III standing as the plaintiff having suffered "an "injury in fact"-an invasion of a legally protected interest which is (a) concrete and particularized [and] (b) "actual or imminent, not 'conjectural' or 'hypothetical." Id. at 560.
(42) Medimmune, Inc. v. Genentech, Inc., 127 S. Ct. 764 (2007).
(43) Id. at 768.
(44) Id.
(45) Id.
(46) Id.
(47) Id. at 777.
(48) Medimmune, Inc. v. Genentech, Inc., 127 S. Ct. 764, 773 (2007). Under the Court's precedent in Altvater v. Freeman, a case or controversy is found where "payment of a claim is demanded as of right and where payment is made, but where the involuntary or coercive nature of the exaction preserves the right to recover the sums paid or to challenge the legality of the claim." Altvater v. Freeman, 319 U.S. 359, 365 (1943).
(49) Medimmune, Inc., 127 S. Ct. at 774.
(50) Id.
(51) SanDisk Corp. v. STMicroelectronics, Inc., 480 F.3d 1372 (Fed. Cir. 2007).
(52) Id. at 1374.
(53) Id.
(54) Id. at 1375.
(55) Id. at 1376.
(56) Id. at 1381.
(57) Id. The Federal Circuit held:
Id. at 1381.
(58) SanDisk Corp. v. STMicroelectronics, Inc., 480 F.3d 1372, 1382-1383 (Fed. Cir. 2007).
(59) Id. at 1382.
(60) Id.
(61) Id. at 1380. The Federal Circuit reasoned that some sort of affirmative action on the part of the defendant was required to prevent declaratory judgment actions from arising "merely on the basis that a party learns of the existence of a patent owned by another or even perceived such a patent to pose a risk of infringement." Id.
(62) Benitec Austl., Ltd. v. Nucleonics, Inc., 495 F.3d 1340, 1345 (Fed. Cir. 2007), cert. denied 2008 WL 1775071 (April 21, 2008).
(63) Id. at 1342.
(64) Id. at 1343.
(65) Id.
(66) Id.
(67) Id. at 1349.
(68) Benitec Austl., Ltd. v. Nucleonics, Inc., 495 F.3d 1340, 1345 (Fed. Cir. 2007), cert. denied 2008 WL 1775071 (April 21, 2008).
(69) Id.
(70) Id.
(71) Id. at 1346.
(72) Id. at 1348.
(73) See Ladra and Ewin, supra note 5, at 194.
(74) Id.
(75) Id. at 203.
(76) Id. at 202.
(77) See FieldTurf USA, Inc. v. Sports Const. Grp, LLC, 507 F. Supp. 2d 801 (N. D. Ohio 2007).
(78) See WS Packaging Group, Inc. v. Global Commerce Group, Inc., 505 F. Supp. 2d 561 (E.D. Wis. 2007).
(79) Judkins v. HT Window Fashions Corp., 514 F. Supp. 2d 753 (W.D. Pa. 2007).
(80) Id. at 764. The court stated that:
Id. (citing Teva Pharms. USA, Inc. v. Novartis Pharms. Corp., 482 F.3d 1330, 1338 (Fed. Cir. 2007)).
(81) Judkins, 514 F. Supp. 2d at 764.
(82) Id.
(83) Id. The court stated that "[w]hen the [competitor] notified the [patentee] that it no longer sold [the infringing product], [the patentee] responded . . . 'should [the competitor] resume selling the [prior product] . . . they would be willfully infringing the claims of that patent.'" Id. at 764.
(84) See n. 32.
(85) Pfizer, Inc. v. Ranbaxy Labs. Ltd., 525 F. Supp. 2d 680 (D. Del. 2007).
(86) Id. at 686.
(87) Id.
(88) Id.
(89) Id. The court reasoned that "the possibility that a new patent may issue at some future point is insufficient to create the type of real and immediate legal case or controversy as required for declaratory judgment jurisdiction and standing under Article III." Id. at 687.
(90) See Medimmune, Inc., 127 S.Ct. 674 (2007); KSR Intern. Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007).
(91) FieldTurf USA, Inc. v. Sports Const. Grp, LLC, 507 F. Supp. 2d 801 (N. D. Ohio 2007).
(92) Id. at 803.
(93) Id.
(94) Id. at 804.
(95) Id.
(96) Id. at 803.
(97) FieldTurf USA, Inc., 507 F. Supp. 2d at 808.
(98) Id. at 804.
(99) Id. at 805.
(100) Id. at 805.
(101) Id. at 807.
(102) WS Packaging Group, Inc. v. Global Commerce Group, Inc., 505 F. Supp. 2d 561 (E.D. Wis. 2007).
(103) Id. at 563.
(104) Id.
(105) Id.
(106) Id.
(107) Id.
(108) Id.
(109) WS Packaging Group., Inc., 505 F. Supp. 2d at 563.
(110) Id.
(111) Id. at 564.
(112) Id.
(113) Id.
(114) Id.
(115) WS Packaging Group., Inc., 505 F. Supp. 2d at 564-565.
(116) Id. at 565. The court cited specifically cited the patentee's "bragg[ing] in a trade magazine of [the patentee's] habit of threatening to sue (or actually suing) the customers of allegedly infringing vendors or manufacturers, presumably as a means of pressuring the parties to cease their activities or sign a license agreement." Id. at 565-566.
(117) Id. at 566.
(118) Id.
(119) Bridgelux, Inc. v. Cree, Inc., 2007 WL 2022024 (N.D. Cal 2007).
(120) Id. at *1.
(121) Id.
(122) Id. at *4. The district court court's interpretation of the "all circumstances" test is:
Id. (quoting Teva Pharms. USA, Inc. v. Novartis Pharms. Corp., 482 F.3d 1330, 1338 (Fed. Cir. 2007).
(123) Bridgelux, Inc., 2007 WL 2022024 at *6.
(124) Id.
(125) Id. at *7.
(126) Id.
(127) Id. at *8.
(128) Id. at *9.
(129) Bridgelux, Inc., 2007 WL 2022024 at *9.
(130) Id.
(131) Id.
(132) Lear, Inc., 395 U.S. at 671.
(133) See Lujan v. Defenders of Wildlife, 504 U.S. 555 (1992).
(134) See Benitec Austl., Ltd. v. Nucleonics, Inc., 495 F.3d 1340, 1345 (Fed. Cir. 2007), cert. denied 2008 WL 1775071 (April 21, 2008).
(135) See FieldTurf USA, Inc. v. Sports Const. Group, LLC, 507 F. Supp. 2d 801 (N. D. Ohio 2007).
(136) See WS Packaging Group, Inc. v. Global Commerce Group, Inc., 505 F. Supp. 2d 561 (E.D. Wis. 2007).
(137) Id.
(138) Id.
(139) See Bridgelux, Inc. v. Cree, Inc., 2007 WL 2022024 (N.D. Cal 2007).
Don, Kevin,
This looks like it might be an interesting article, and I might even read it in the next week, as I'm curious about the approaches district courts have taken since Medimmune. But as a regular reader who enjoys the in-depth but focused nature of your posts, I ask that in the future you please link to articles like this rather than posting the whole text within the blog itself.
Posted by: Dan Feigelson | October 30, 2008 at 04:39 AM
Dan:
Thanks for the comment. Unfortunately, linking to the article was not an option since Patent Docs was the first to publish the article. However, I added a break, which should make the article easier to read.
Don
Posted by: Donald Zuhn | October 30, 2008 at 11:27 AM
Not to be critical, but only for completeness, there are several CAFC and D.Ct. decisions post-Medimmune that I think weren't discussed. I haven't had a chance to read the full article but a complete discussion would probably require some analysis of at least a few of these:
Caraco v. Forest (CAFC)
Merck v. Apotex (D. Del.)
Cat Tech v. Tubemaster (CAFC)
Eisai v. Mutual (D. NJ)
Impax v. Medicis (N.D. Cal.)
Janssen v. Apotex (CAFC)
Micron v. Mosaid (CAFC)
Prasco v. Medicis (CAFC)
Posted by: Sean | October 30, 2008 at 07:30 PM