No Declaratory Judgment Jurisdiction if There is No Useful Remedy

Merck & Co., Inc., v. Apotex, Inc., [2008-1133] (August 21, 2008) [MAYER, LINN, and ILLSTON] NON-PRECEDENTIAL The Federal Circuit affirmed dismissal of Apotex’s counterclaims for declaratory judgment against appellee Merck & Co., Inc. because the current dispute does not “‘admi[t] of specific relief through a decree of a conclusive character, as distinguished from an opinion advising what the law would be upon a hypothetical state of facts,’”
DISCUSSION: As part of its maneuverings under the Hatch-Waxman Act, when Apotex filed an ANDA citing three Merck patents on the glaucoma medications Trusopt® and Cosopt®, and Merck filed suit on only one of the patents. Apotex counterclaimed with respect to the two unasserted patents, but the district court dismissed the counterclaim for lack of a justiciable controversy. The Federal Circuited noted that the proper standard for determining whether a declaratory judgment action satisfies the Article III case or controversy requirement 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.” Noting that to defeat another applicant’s period of exclusivity Apotex needed a declaration of invalidity before August 14, 2008, just seven days after the oral arguments, the Federal Circuit concluded that they could not provide meaningful relief and affirmed the dismissal.