Intellectual Property Law

Preparing Designs for Infringing Products Was Sufficient Preparation to Allow Declaratory Judgment Jurisdiction

The One Sentence Summary: The second prong of the Federal Circuit's declaratory judgment test survives after the Supreme Court's Medimmune decision, and was met here where the accused infringer had made preparations to infringe.

What They Were Fighting About: The Federal Circuit panel affirmed summary judgment of non-infringement for reactors that did not meet spacing requirements set out in claim language.

Federal Circuit Holdings:

• "[A]lthough MedImmune articulated a ?more lenient legal standard? for the availability of declaratory judgment relief in patent cases, the issue of whether there has been meaningful preparation to conduct potentially infringing activity remains an important element in the totality of circumstances which must be considered in determining whether a declaratory judgment is appropriate. If a declaratory judgment plaintiff has not taken significant, concrete steps to conduct infringing activity, the dispute is neither ?immediate? nor ?real? and the requirements for justiciability have not been met." Slip opinion at 12.
• Preparation of CAD drawings of 3 versions of devices, and production of one was sufficient "meaningful preparation to conduct potentially infringing activity" to allow declaratory judgment action.
• Design of four infringing configurations met "reality" test for declaratory judgment because the accused configurations were fixed and not fluid.
• District court properly exercised discretion in ruling on declaratory judgment in order to give certainty to accused infringer without requiring betting the farm.
• Claim language interpretation of "a spacing" smaller than a particle size required that all spacings be smaller.
• Prosecution history of parent application supported interpretation that all spacings must be smaller than the particle size.

Full post as published by IP Law Observer on May 28, 2008 (boomark / email).