Jurisdiction upheld in declaratory judgment action
Farnan, J. Applying new jurisdictional test adopted by the Supreme Court and recent Federal Circuit case law, the Court finds actual controversy sufficient to warrant declaratory judgment action.
Plaintiffs brought this action seeking a declaration that defendants’ patents are invalid and not infringed by plaintiff. A few days later, defendants filed a patent infringement action against plaintiffs in the United States District Court for the Eastern District of Texas alleging infringement of the three patents-in-suit in this litigation as well as a fourth patent not at issue here. Defendant also named certain of plaintiffs’ affiliates in the Texas litigation. Plaintiffs followed suit and filed an amended complaint including the affiliates as parties to the Delaware action. Defendants filed motions to dismiss both the original and amended complaints for lack of subject matter jurisdiction. Defendants contend that plaintiffs did not have an objectively reasonable apprehension of litigation by defendants on the date this litigation was filed and contend that, without such apprehension, the Court is without jurisdiction to hear this matter. Citing to the Federal Circuit’s recent decision in Micron Tech., Inc. v. Mosaid Tech., Inc, wherein the Federal Circuit acknowledged a shift in the jurisdictional analysis following the Supreme Court’s recent holding in MedImmune, Inc. v. Genetech, Inc., the Court adopts the following test: the “reasonable apprehension of suit” test is no longer a necessary criterion for declaratory judgment jurisdiction. Instead, jurisdiction in a declaratory judgment action requires that the dispute be definite and concrete, touching the legal relations of parties having adverse legal interests and that it be real and substantial and admit of specific relief through a decree of conclusive character, as distinguished from an opinion advising what the law would be upon a hypothetical state of facts. The Court finds sufficient evidence to warrant a finding of an actual controversy between the parties under the standard set forth in MedImmune and its progeny. Declining to adopt defendants’ arguments that plaintiffs’ action was merely tactical and that ongoing settlement negotiations negated the presence of a controversy, the Court finds jurisdiction to be proper where an actual controversy exists and a declaratory judgment would settle the legal relations in dispute and afford relief from uncertainty.
A copy of the full opinion is available here.
