C.D. Cal.: Patentee Must Make Affirmative Act For DJ Jurisdiction

Panavise Products, Inc. v. National Products, Inc., CV 08-1300 ABC (May 30, 2008)

Panavise was releasing a product that they feared could infringe National Products (NP) patent. Viewing the litigation history of the patent, Panavise saw that they had sued other unrelated parties in the past (6 suits involving 12 entities), and made public statements declaring that the patent was "essential" to the technological area. Also, during a trade show in which the product was displayed, Panavise learned that NP personnel were also in attendance.

Accordingly, Panavise filed for a DJ action. NP moved to dismiss, claiming that (a) they never communicated with Panavise regarding the patent, and (b) they never saw the product, or even learned of it, until the DJ action. The district court agreed with NP and dismissed the action:

[I]t is clear that no case or controversy can exist in a patent action for declaratory relief in the absence of an act by the defendant. For example, in Sandisk, the court stated that “declaratory judgment jurisdiction generally will not arise merely on the basis that a party learns of the existence of a patent owned by another or even perceives such a patent to pose a risk of infringement, without some affirmative act by the patentee.” Sandisk, 480 F.3d at 1380-1381 (emphasis added). That is exactly the situation here: Plaintiff merely learned that Defendant owns a patent and is concerned that its own device may infringe Defendant’s patent, but Defendant has taken no affirmative act in relation to Plaintiff’s device; indeed, Defendant did not know of Plaintiff’s device and has yet to see it. Sandisk further states that “Article III jurisdiction may be met where the patentee takes a position that puts the declaratory judgment plaintiff in a position of either pursuing arguably illegal behavior or abandoning that which he claims a right to do,” id. (emphasis added), thereby reinforcing the notion that no case or controversy can exist where the defendant has taken no position. It is undisputed that Defendant has taken no position with respect to Plaintiff and/or the 811 series device.

That Defendant has sued other unrelated persons for infringement of the ‘420 patent does not constitute action toward this plaintiff and the 811 series device, and therefore does not contribute to the existence of a case or controversy between these parties. Without Defendant even knowing about Plaintiff’s device, it is not apparent that the parties have “adverse legal interest[s]” and that the dispute is “definite and concrete.” Rather, Plaintiff is seeking what MedImmune forbids: “an opinion advising what the law would be upon a hypothetical state of facts.” MedImmune, 127 S.Ct. at 77. Indeed, the cases Plaintiff cites in support of its position all involve a defendant communicating with the plaintiff about plaintiff’s device. Plaintiff has directed the Court to no case in which a case or controversy was found in the absence of any act by the defendant directed toward the plaintiff and/or plaintiff’s device.

Download the opinion here (link)

Hat tip: Patent Appeal Tracer