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No Declaratory Judgment Jurisdiction over Non-Asserted Claims; Injunction Affirmed

The United States Court of Appeals for the Federal Circuit declined to reconsider priority issues in a case in which it concluded it was bound by an earlier decision.Streck Inc. v. Research & Diagnostics Systems, Inc., Case No. 2011-1044 (Fed. Cir. January 10, 2012).(O’Malley, J.). The Federal Circuit also concluded that the action should be limited only to the asserted claims due to defendant’s failure to establish a case or controversy with respect to the unasserted claims and affirmed the district court’s grant of a permanent injunction.

The U.S. Patent and Trademark Office’s Board of Patent Appeals and Interferences (the Board) had found Research & Diagnostic Systems (R&D) had priority of invention in an interference proceeding concurrently with litigation before a district court.An appeal from the Board’s decision was made to the district court under 35 U.S.C. § 146, which reversed the Board decision and found priority for Streck.In an earlier appeal, R&D appealed this decision to the Federal Circuit, which awarded priority to Streck (IP Update, Vol. 14, No. 11).

In the district court the parties had agreed to be bound by the Patent Local Rules of the U.S. District Court of the Northern District of California which require the parties exchange infringement and invalidity contentions within 10 and 55 days, respectively of the Initial Case Management Conference.Streck provided preliminary infringement contentions regarding a subset of 15 claims from the three patents-in-suit (the asserted claims).R&D’s preliminary invalidity contentions addressed only the asserted claims.R&D later amended its invalidity contentions to assert that all claims of the patents-in-suit but for one were invalid for failure to satisfy enablement and written description requirements.Streck later informed R&D it was narrowing the asserted claims to nine claims in total.In response, R&D amended its invalidity contentions.

After the parties filed cross-motions for summary judgment, the district court denied R&D’s motion for summary judgment of invalidity and granted Streck’s cross-motion that the asserted claims were valid and contained sufficient written description.The district court dismissed R&D’s invalidity counterclaims with respect to non-asserted claims because R&D had “no ‘reasonable apprehension’ it will face an infringement suit on any claims other than” the asserted claims.R&D appealed.

On appeal, R&D argued the district court applied an out-dated “reasonable apprehension of suit test” in finding no declaratory judgment jurisdictions and that Streck’s withdrawal of claims two years into the case did not deprive the court of jurisdiction over the invalidity of the non-asserted claims.The Federal Circuit agreed that the district court had incorrectly relied on pre-MedImmune case law, but found that considering the totality of the circumstances (the proper post-MedImmune standard), the lower court had correctly determined it lacked jurisdiction over the unasserted claims.Specifically, the Federal Circuit noted that both parties were on notice from the start of the litigation that the claims-at-issue were only a subset of the full patents-in-suit, and both parties knew precisely which claims were at issue before the district court ruled on summary judgment or conducted trial.R&D was required to show a continuing case or controversy with respect to withdrawn or otherwise unasserted claims, which it failed to do.

The Federal Circuit also affirmed the district court’s grant of summary judgment that the patents-in-suit satisfied the written description requirement and its judgment as a matter of law that the patents-in-suit enabled the claimed invention.

© 2020 McDermott Will & Emery


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