Wednesday, February 06, 2013

ARKEMA prevails over Honeywell in HFO-1234yf case

From within Arkema v. Honeywell

The CAFC discussing MedImmune:

The Supreme Court’s most pertinent decision is MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007). There, the Court held that Article III did not require a patent licensee to cease payment under the license in order to seek declaratory judgment of the patent’s invalid- ity. Id. at 128, 137. The Court reiterated that the proper test of when an action for declaratory judgment presents a justiciable controversy is “whether the facts alleged, under all the circumstances, show that there is a substan- tial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” Id. at 127 (quot- ing Md. Cas. Co. v. Pac. Coal & Oil Co., 312 U.S. 270, 273 (1941)). The Court also made clear that this test is satis- fied when the declaratory judgment plaintiff is put “to the choice between abandoning his rights or risking prosecu- tion.” Id. at 129. Thus, the Court held that “[t]he rule that a plaintiff must destroy a large building, bet the farm, or . . . risk treble damages . . . before seeking a declaration of its actively contested legal rights finds no support in Article III.” Id. at 134. In other words, a declaratory judgment is “an alternative to pursuit of the arguably illegal activity.” Id. at 129 (quoting Steffel, 415 U.S. at 480 (Rehnquist, J., concurring)). Following MedImmune, we have held that “Article III jurisdiction may be met where the patentee takes a position that puts the declaratory judgment plaintiff in the position of either pursuing arguably illegal behavior or abandoning that which he claims a right to do.” SanDisk Corp. v. STMicroelectronics, Inc., 480 F.3d 1372, 1381 (Fed. Cir. 2007).

After observing that there was a controversy here (-->Arkema wins), the CAFC discussed the district court viewpoint:

The district court nevertheless concluded that there was no justiciable controversy. We disagree. First, the district court determined that “Arkema has neither al- leged nor offered evidence that an Arkema customer has committed an act of direct infringement,” relying on our decision in Arris. Arkema, 2012 WL 360189, at *5. To the extent that the district court suggests that there must actually be acts of direct infringement the district court is mistaken. While Arris found such accusations sufficient for declaratory judgment jurisdiction in a suit brought by a supplier, Arris did not set forth an overarching test for a supplier’s standing to seek a declaratory judgment re- garding its potential indirect infringement liability; rather, it identified circumstances that have been held sufficient (rather than necessary) for declaratory judg- ment jurisdiction. 639 F.3d at 1375. Nor is it necessary that a patent holder make specific accusations against either the potential direct infringers or Arkema. Id. at 1379; ABB Inc. v. Cooper Indus., LLC, 635 F.3d 1345, 1348 (Fed. Cir. 2011) (“A specific threat of infringement litigation by the patentee is not required to establish jurisdiction.”). Nor is it necessary that Honeywell have directly ac- cused Arkema of potential indirect infringement. Even under the now-discarded reasonable apprehension of suit test,5 it was well established that a sufficient controversy existed for declaratory judgment jurisdiction where the patentee had accused the declaratory judgment plaintiff of misappropriating the same technology in related litiga- tion. Goodyear Tire & Rubber Co. v. Releasomers, Inc., 824 F.2d 953, 955 (Fed. Cir. 1987) (patents issued during trade secret litigation regarding the same technology); see also Vanguard Research, Inc. v. PEAT, Inc., 304 F.3d 1249, 1255 (Fed. Cir. 2002); Teva, 482 F.3d at 1344-45 (“Related litigation involving the same technology and the same parties is relevant in determining whether a justici- able declaratory judgment controversy exists on other related patents.”). Here, Honeywell has accused Arkema of infringing its rights with respect to 1234yf in litigation over the closely related ’366 patent and the European patent claiming methods of using 1234yf. This creates a sufficient affirmative act on the part of the patentee for declaratory judgment purposes. Furthermore, Honeywell has declined to grant Arkema a covenant not to sue on the ’120 and ’882 patents, which further suggests that there is an active and substantial controversy between the parties regarding their legal rights with respect to those patents. Arris, 639 F.3d at 1381;


This is not a case where the declaratory judgment plaintiff alleged only that it would “consider” potentially infringing activities.7 Rather, Arkema alleges a present intent to supply automobile manufacturers in the United States with 1234yf for potentially infringing uses. Nor is this a case where “the accused infringers had not distrib- uted sales literature [or] prepared to solicit orders.” Lang v. Pac. Marine & Supply Co., 895 F.2d 761, 765 (Fed. Cir. 1990). Honeywell’s own allegations state that Arkema is marketing 1234yf to automobile manufacturers in the United States, and Arkema admits that it has already responded to at least one supply request from a U.S. automobile manufacturer and that it is “poised to respond to other requests for quotations to supply 1234yf.” First Supp. Compl. 7, Arkema, Inc. v. Honeywell Int’l, Inc., No. 10-CV-2886 (E.D. Pa. Dec. 15, 2011), ECF No. 58-1.

Of the "reality" requirement:

Finally, the district court concluded that Arkema had not satisfied the “‘reality’ requirement” under MedImmune because it “has not demonstrated that the design of its customers’ products . . . is sufficiently fixed.” Arkema, 2012 WL 360189, at *6. As discussed above, however, Arkema’s relevant plans are clear.

The Myriad case shows up in footnote 7:

E.g., Ass’n of Molecular Pathology v. U.S. Patent & Trademark Office, 689 F.3d 1303, 1321 (Fed. Cir. 2012) (holding that doctors who alleged only that they would “consider” resuming potentially infringing activities lacked standing to seek a declaratory judgment)

Why there was standing of anyone in Myriad is not explained.


Post a Comment

<< Home