FOR THERE TO BE A CONTROVERSY, DEFENDANT HAS TO KNOW WHAT YOU'RE TALKING ABOUT

Panavise Products, Inc., v. National Products, Inc., [2008-1444] (January 6, 2009) [MICHEL, Prost, and Moore] The Federal Circuit affirmed dismissal of Panavise’s declaratory judgment action because Panavise failed to show a substantial controversy upon which the court’s subject matter jurisdiction may rest.
DISCUSSION: Panavise sought a declaratory judgment that it did not infringe U.S. Patent No. 6,666,420 on a suction cup mounting device, and that the patent was invalid and unenforceable. In analyzing jurisdictional questions in declaratory judgment actions, there is no bright-line rule. Instead, the question in each case 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. In contesting jurisdiction, defendant submitted the declaration of its president that that neither he, nor anyone in his company, had ever seen or evaluated plaintiff's’s device, that he was not even aware that Panavise made such a product until after their complaint was filed; and (3) that his company and its lawyers had absolutely no contact with Panavise relating to the Device or the ’420 patent prior to the date its complaint was filed. Not surprisingly, the Federal Circuit found that some knowledge of the conduct was necessary for a controversy to arise between the parties, and affirmed the dismissal.