Thursday, September 08, 2016

CAFC reverses ED Va in Asia Vital v. Asetek


Asia Vital Components Co., Ltd. (“AVC”) filed a declaratory
judgment action against Asetek Danmark A/S
(“Asetek”) seeking a declaration that AVC did not infringe
U.S. Patent Nos. 8,240,362 (“’362 patent”) and 8,245,764
(“’764 patent”) (collectively, “the asserted patents”) and
that those patents are invalid. The United States District
Court for the Eastern District of Virginia dismissed the
case for lack of subject matter jurisdiction, concluding
that AVC’s complaint did not plead sufficient facts to
show that there is a substantial controversy between the
parties. For the reasons stated below, we reverse the
district court’s ruling and remand for further proceedings

As to concrete plans

Asetek does not dispute these allegations but instead
contends that they do not demonstrate “concrete plans” to
engage in potentially infringing activities. We disagree.
This is not the type of case where, at the time the complaint
was filed, the accused products were far from being
complete or operational and were susceptible to design
changes, making it impossible to compare them against
the asserted patents. See, e.g., Sierra Applied Scis., Inc.
v. Advanced Energy Indus., Inc., 363 F.3d 1361, 1380
(Fed. Cir. 2004) (finding no real or immediate controversy
where the alleged infringer testified that it had no intent
to market the accused product and “the design [of the
accused product] was fluid on the date the complaint was
filed” making it “impossible to determine—on that date—
whether any eventual design of the [accused product]
would infringe [the asserted] patents”); Int’l Harvester Co.
v. Deere & Co., 623 F.2d 1207, 1216 (7th Cir. 1980) (finding
no real and immediate controversy where, as of the
date of the complaint, the alleged infringer “anticipated
further, fairly extensive testing of the [accused product]
including construction of more test models, and anticipated
design changes where necessary in response to the
testing”). This is also not a case like Lujan v. Defenders of
Wildlife, 504 U.S. 555 (1992), or Matthews International
Corp. v. Biosafe Engineering, LLC, 695 F.3d 1322 (Fed.
Cir 2012), in which an intent to take action was unaccom-
panied by any specific plans or steps that might satisfy
the MedImmune “immediacy” requirement. MedImmune,
549 U.S. at 127. Instead, AVC provided undisputed
allegations that it has manufactured prototypes, has
potential customers, and has a sufficiently immediate
interest to request a license to clear the path for its intended
entrance into the U.S. market.

**Separately, as to subject matter jurisdiction issues, see
Kevin Noonan's post on Hartig Drug Co. v. Senju Pharmaceutical Co. (CA3 2016)

Perhaps one of the most influential first year law school classes for the
task of learning how to "think like a lawyer" is civil procedure.
Particularly when the professor is bold enough to engage students
on the intricacies of the topic, its intricacies can make for a challenging final exam.
These experiences should come to mind for many antitrust lawyers when considering the
Third Circuit's decision in Hartig Drug Co. v. Senju Pharmaceutical Co.,
where the Court applied subject matter jurisdiction principles to reverse
a District Court's dismissal of Hartig's antitrust allegations on the pleadings.



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