The Federal Circuit holds if substantial controversy has not been established, there can be no declaratory judgment jurisdiction.
Results for subject matter jurisdiction
The Court specified an inquiry for determining whether a state law case related to patents is “arising under” federal jurisdiction. Specifically, the patent issue disputed in the case must be substantial and capable of resolution in federal court without disturbing the federal-state balance approved by Congress.
The Federal Circuit holds that representations to a third party that technological characteristics of a device are similar to an existing patented device and telephone conversations with uninformed, non-decisionmaking employees of the patentee do not create a controversy of sufficient immediacy to warrant declaratory jurisdiction.
A court has subject matter jurisdiction for a declaratory judgment suit when a patent owner has pursued similar defendants in the past, has publicly stated that they have an aggressive licensing strategy, and has sent a warning letter to potential infringers.
A licensee is not required to break or terminate a license agreement to create an actual case or controversy prior to seeking declaratory judgment that a patent covered by the license agreement is unenforceable, invalid, or not infringed.
Plaintiff’s action for declaratory judgment of noninfringement of defendants’ patent is dismissed for lack of justiciable controversy, since parties were engaged in licensing negotiations when plaintiff filed suit, and defendants’ correspondence with plaintiff did not create reasonable apprehension of infringement suit.