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When DJ and infringement suits both filed, transfer factors determine appropriate forumFilewrapper®

In a decision Friday, the Federal Circuit decided a case addressing the requirements for a declaratory judgment action post-MedImmune.  The court reversed and remanded a district court's decision that there was no declaratory judgment jurisdiction applying the pre-MedImmune reasonable apprehension of suit standard rejected by the Supreme Court.

The Federal Circuit applied the MedImmune requirement for a showing of "whether the facts alleged under all the circumstances show that there is a substantial controversy between parties having adverse legal interest of sufficient immediacy and reality to warrant the issuance of a declaratory judgment."  The Federal Circuit clarified further in stating that "all of the circumstances" most show a controversy.  Here, there was no difficulty in finding a substantial controversy between the parties, as one day after the declaratory judgment suit was filed, a corresponding infringement suit was filed in another district court.  

In perhaps the most interesting aspect of the decision, the court noted that when both a declaratory judgment case and an infringement case have been filed, there really is no question as to whether the requirements for jurisdiction are met.  Instead, the question is really one of whether the court where the declaratory judgment action is pending should exercise its discretion to hear the case, as the real issue is where the case will be litigated.  Because of this, the Federal Circuit held that the relevant factors for a court to consider are the "convenience factors" considered in the context of transfer under § 1404(a).  Here, these factors weighed in favor of the suit proceeding in the declaratory judgment forum, so it was an abuse of discretion by the district court to decline to hear the case.

More detail of Micron Tech. Inc. v. Mosaid Techs., Inc. after the jump.

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Full post as published by IP Law Daily on March 05, 2008 (boomark / email).