Corresponding Suit / in Europe is Enough to / Bring D J Action

Arkema, Inc. v. Honeywell International, [2012-1308] (February 5, 2013) [DYK, Plager, O'Malley] the Federal Circuit reversed the refusal of the district court to allow Arkema to amend its declaratory judgment action to include two after-issued Honeywell patents, and remanded for further proceedings.
DISCUSSION: After being sued by Honeywell in Europe for infringement of a patent on a more environmentally friendly refrigerant, Arkema brought a declaratory judgement action challenging the validity and infringement of the corresponding U.S. patent. While this suit was pending, two additional U.S. patents issued on the use of the refrigerant. Arkema sought to amend its complaint to add these patents, but the district court found that as a mere supplier, Arkema was not currently or imminently in danger of facing liability for contributory or induced infringement on the patents on methods of using the refrigerant. The Federal Circuit said that Article III jurisdiction may be met where the patentee takes a position that puts the declaratory judgment plaintiff in the position of pursuing arguably illegal behavior or abandoning that which he claims a right to do. The Federal Circuit concluded that it was a "quintessential example of a situation in which declaratory relief is warranted." The Federal Circuit said that there do not have to be acts of direct infringement for declaratory judgment jurisdiction, nor do there have to be specific accusations against the potential direct infringers or their supplier. The Federal Circuit also noted that even under the iscarded "reasonable apprehension" test, accusations of infringement in related litigation were sufficient to confer jurisdiction, and thus the European litigation between the parties was a sufficient affirmative act by Honeywell establishing a case and controversy between the parties.