On March 26, 2012, in 3M Co. v. Avery Dennison Corp.,
No. 2011-1339 (Fed. Cir. March 26, 2012), the Federal Circuit
clarified the facts sufficient to establish subject matter
jurisdiction for declaratory judgment actions under the
post-MedImmune "actual case or controversy"
standard.
Several years ago, in MedImmune Inc. v. Genentech, Inc.,
549 U.S. 118, 127 (2007), the U.S. Supreme Court replaced the
Federal Circuit's "reasonable apprehension of suit"
standard for subject matter jurisdiction in patent cases with the
more general "actual case or controversy" standard
applied in other bodies of law. Since the MedImmune
decision, the Federal Circuit has developed several fact patterns
that are sufficient to establish subject matter jurisdiction in
patent-related declaratory judgment actions.
The 3M case represents a clear articulation of what may be
a near-minimum set of facts necessary to establish jurisdiction. In
3M, the declaratory judgment plaintiff alleged that the
patentee admitted to analyzing the product at issue, determined
that the plaintiff "may infringe," and offered the
plaintiff a license. The Federal Circuit stated that those facts,
if true, are sufficient to constitute a case or controversy between
the declaratory judgment plaintiff and patentee, thereby
establishing subject matter jurisdiction over the declaratory
judgment action. The Federal Circuit remanded the case to the
district court for further fact finding and a determination of
whether there is a case or controversy in view of those facts.
What This Means for You
Companies in licensing discussions with competitors should be aware of the 3M case and the potential to trigger jurisdiction for a declaratory judgment action. These facts — an infringement analysis of a party's product or service, an allegation that the product or service "may infringe," and an offer for a license — set a fairly low bar for meeting the "actual case or controversy" standard.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
