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Second prong of declaratory judgment jurisdiction test survived MedImmune

By McKee, Voorhees & Sease, P.L.C.

In a decision yesterday, the Federal Circuit affirmed a district court's grant of summary judgment of noninfringement and its related finding that the court had declaratory judgment jurisdiction.  

The court, for the first time since the Supreme Court's MedImmune decision, addressed the second prong of its pre-MedImmune declaratory judgment test.  The court held this portion of the test, requiring "meaningful preparation" to conduct potentially infringing activity, is still relevant to the jurisdictional analysis.  As stated by the court (internal citations omitted):

We conclude that although 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.

Under this standard, it was clear to the court that a real and immediate controversy existed between the parties.  The party seeking the declaratory judgment was ready to produce the allegedly infringing products, but due to the nature of the products, did not actually begin production until an order was received.  As a result, there were sufficient "significant, concrete steps" taken, and the issuance of a declaratory judgment was appropriate.

On the merits, the court affirmed the district court's claim construction and the related finding of noninfringement.  The court rejected the plaintiff's proposed construction because it would render the limitation functionally meaningless, and described the plaintiff's position as "semantic antics."

More detail on CAT Tech. LLC v. TubeMaster, Inc. after the jump.

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Full post as published by FileWrapper on May 29, 2008 (boomark / email).