Intellectual Property Law

No case or controversy when patentee doesn't even know of potentially infringing product

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

In a decision last week, the Federal Circuit upheld a district court's decision that Article III jurisdiction did not exist in a case where a potential infringer was seeking a declaration of noninfringement.  The district court granted a motion to dismiss the under the Federal Circuit's pre-MedImmune reasonable apprehension of suit test, noting that there was no reasonable apprehension of suit.  In a footnote, the court noted that even if MedImmune v. Genentech had overruled this test, it would still conclude that there was no case or controversy because there was "no definite and concrete dispute that touches the legal relations of the parties."  To the district court's credit, its decision was made shortly after MedImmune and without the benefit of the Federal Circuit's interpretation of MedImmune.  Following the Federal Circuit's decision in Teva Pharmaceuticals USA, Inc. v. Novartis Pharmaceuticals Corp., the court reconsidered its ruling and decided under all the circumstances there was still not an Article III case or controversy.

The Federal Circuit affirmed.  The court noted that there was no actual present injury traceable to the defendants nor had the defendants asserted any rights or taken affirmative actions against the declaratory judgment plaintiff.  The court framed the issue of subject matter jurisdiction in the context of standing, ripeness, and lack of mootness, observing that "satisfying these doctrines represents the absolute constitutional minimum for a justiciable controversy."  Here, there was insufficient evidence of standing, as there was no injury-in-fact that was fairly traceable to the patentee's conduct.  When the case was filed, there had been no contact regarding the patent whatsoever between the patentee and the potential infringer.  While the potential infringer argued that prior assertions of unrelated patents were sufficient to confer jurisdiction, the court disagreed, noting jurisdiction cannot be conferred by "a purely subjective or speculative fear of future harm."  As a result, considering the totality of the circumstances, the court affirmed the district court's dismissal of the case.
 
More on Prasco LLC v. Medicis Pharm. Corp. after the jump.

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Full post as published by FileWrapper on August 21, 2008 (boomark / email).