United States: Sufficient Controversy Exists For DJ Jurisdiction Where Patentee Had Accused DJ Plaintiff Of Misappropriating Same Technology In Related Litigation

In Arkema Inc. v. Honeywell International, Inc., No. 12-1308 (Fed. Cir. Feb. 5, 2013), the Federal Circuit held that the district court erred in its determination that there was no Article III case or controversy between the parties regarding the infringement and validity of the asserted patents. Accordingly, the Federal Circuit reversed the district court's denial of the plaintiffs' motion to supplement its complaint to add DJ claims with respect to the asserted patents.

Honeywell International, Inc. ("Honeywell") and plaintiffs Arkema Inc. and Arkema France (collectively "Arkema") compete in the manufacture and sale of automotive refrigerants, and have invested substantial resources in the manufacture of HFO-1234yf ("1234yf"), a refrigerant developed in response to new regulations in the European Union. Honeywell holds a number of patents directed to the refrigerant, including European Patent No. 1,716,216 ("the European patent") and U.S. Patent Nos. 7,279,451 ("the '451 patent") and 7,534,366 ("the '366 patent"). Honeywell sued Arkema in Germany for infringement of the European patent. In response, Arkema filed a DJ action in the United States over the '451 and '366 patents. While in discovery, Honeywell was granted U.S. Patent Nos. 8,033,120 ("the '120 patent") and 8,065,882 ("the '882 patent"). Both patents are directed to methods of using the refrigerant in automobile air conditioning systems. Arkema moved to supplement its complaint to seek DJ of noninfringement and invalidity as to the '120 and '882 patents, fearing liability under those patents arising from the sale of the refrigerant to U.S. automobile manufacturers. The district court denied Arkema's motion to supplement, finding that while there would be no undue prejudice to Honeywell if Arkema were permitted to supplement, the new claims did not present a "case or controversy" under Article III of the U.S. Constitution. Arkema appealed.

On appeal, the Federal Circuit reviewed the district court's conclusion that Arkema's supplemental claims were not justiciable. The Court explained that the proper test of when an action for DJ presents a justiciable controversy is "whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment." Slip op. at 8 (citing MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007)). The Court noted that "[o]n its face, [the case] is a quintessential example of a situation in which declaratory relief is warranted." Id. at 9. For example, the Court found that Arkema faced significant liability if it proceeded with its plans to enter into contracts and subsequently supply automobile manufacturers with the refrigerant. Honeywell made it clear that it would protect its patent rights against any such activity by Arkema, and in fact had already asserted its rights in the same technology in Europe. Thus, because Arkema was seeking a determination of a legal right under the method patents covering its own activities, the Court concluded that there was a controversy between Arkema and Honeywell as to the rights in the 1234yf refrigerant technology.

"Even under the now-discarded reasonable apprehension of suit test, it was well established that a sufficient controversy existed for declaratory judgment jurisdiction where the patentee had accused the declaratory judgment plaintiff of misappropriating the same technology in related litigation." Slip op. at 11 (footnote omitted).

The Court next addressed each of the district court's reasons for concluding that there was no justiciable controversy. First, the district court determined that "Arkema has neither alleged nor offered evidence that an Arkema customer has committed an act of direct infringement." Id. (citation omitted). The Federal Circuit explained that no specific infringing acts were necessary for DJ jurisdiction. It further explained that Honeywell need not have directly accused Arkema of potential indirect infringement. Rather, according to the Court, "a sufficient controversy existed for declaratory judgment jurisdiction where the patentee had accused the declaratory judgment plaintiff of misappropriating the same technology in related litigation." Id. at 11. Here, the Court concluded that Honeywell's accusing Arkema of infringing its rights with respect to 1234yf in litigation over the closely related '366 patent and the European patent claiming methods of using 1234yf created a sufficiently affirmative act on the part of the patentee for DJ purposes.

Second, the district court found that Arkema did not allege an adequate "specific planned activity" because the district court found that there were methods for using 1234yf in an automobile air conditioning system that would not infringe the '120 and '882 method patents. Id. at 12. The Federal Circuit, however, found that the evidence demonstrated that there were no noninfringing uses for 1234yf in automobile air conditioning systems and that Arkema admitted that any design employing 1234yf in an automobile would infringe the claims of the '120 and '882 patents. The Court found no question that Arkema would arguably be liable for induced infringement and thus concluded that the controversy was "sufficiently real" for purposes of DJ jurisdiction. Id. at 13.

Third, the district court found that any "threshold acts of direct infringement are not sufficiently immediate to create a justiciable controversy" because "the first predicted commercial launch of any product using [1234yf] is at least one year away." Id. (alteration in original) (citation omitted). The Federal Circuit disagreed. Because Arkema had already entered into long-term supply contracts, the Court concluded that Arkema presently had to either commit to contracts that could expose it to liability for indirect infringement or abandon its plans to supply 1234yf to automobile manufacturers in the United States. Accordingly, the Court concluded that Arkema's need for a DJ clarifying its rights was sufficiently immediate under Article III.

Finally, the district court concluded that Arkema had not satisfied the "'reality' requirement" under MedImmune because it had not demonstrated that the design of its customers' products was sufficiently fixed. Id. at 13-14. The Federal Circuit, however, found that Arkema had clear plans to sell 1234yf for use as the refrigerant component of heat transfer compositions for automobile air conditioning systems. The Court reiterated that there was no uncertainty about whether Arkema's product was going to be used in a way that might or might not have infringed Honeywell's rights. Accordingly, the Court concluded that the controversy between Honeywell and Arkema regarding the '120 and '882 patents was "of sufficient immediacy and reality to warrant the issuance of a declaratory judgment." Id. at 15 (quoting MedImmune, 549 U.S. at 127).

Judges: Dyk (author), Plager, O'Malley

[Appealed from E.D. Penn., Judge Yohn]

This article previously appeared in Last Month at the Federal Circuit, March 2013.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
14 Nov 2018, Webinar, Washington, DC, United States

Finnegan’s 2018 webinar series addresses challenges across the IP landscape in the United States. The series starts with one of the fundamentals—proving or disproving obviousness. The panelists will address what works and what doesn’t before U.S. Patent and Trademark Office (USPTO) examiners, before the Patent Trial and Appeal Board (PTAB), and before the courts.

14 Nov 2018, Workshop, London, UK

Finnegan partner Leythem Wall will consider European claim drafting strategy and lead the Chemical Workshop during a two-day course, hosted by Management Forum.

14 Nov 2018, Speaking Engagement, Washington, DC, United States
Similar Articles
Relevancy Powered by MondaqAI
Jones Day
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Jones Day
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions