Post MedImmune: Assertion of Rights Against Ongoing or Planned Activity Confers Jurisdiction

SanDisk Corp. v. STMicroelectronics, Inc., [05-1300](March 26, 2007)[LINN, Bryson, Dyk] The Federal Circuit vacated and remanded the dismissal of SanDisk's declaratory judgment claims for lack of subject matter jurisdiction.
SIGNIFICANCE: Any assertion of rights against on-going or planned activity is sufficient to confer declaratory judgement subject matter jurisdiction.
BRIEF: After extensive exchanges and meetings between the parties, including ST's provision of a detailed infringement analysis of 14 of its patents, SanDisk sued ST for patent infringement and declaratory judgment of non-infringement of 14 of ST's patents. The district court found under the totality of the circumstances did not evince an actual controversy because ST had told SanDisk that it did not intend to sue SanDisk for infringement, and dismissed SanDisk's declaratory judgment actions. Stating that the Supreme Court's decision in MedImmune rejected the reasonable apprehension of suit test. While noting that in conduct prior to the existing of a license, 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. The Federal Circuit said, howeve,r that Article III jurisdiction may be met where the patentee takes a position that puts the declaratory judgment plaintiff in the position of either pursuing arguably illegal behavior, or abandoning that which he claims a right to do. The Federal Circuit declined the opportunity to define the outer boundaries of declaratory judgment jurisdiction, but held that "where a patentee asserts rights under a patent based upon certain identified ongoing or planned activity of another party, and where that party contents that it has a right t engage in the accused activity without a license, and Article III case and controversy will arise and the party need not risk a suit for infringement by engaging in the identified activity before seeking a declaration of its legal rights." The Federal Circuit held that SanDisk did establish sufficient Article III jurisdiction.