3M Co. v. Avery Dennison Corp.
673 F.3d 1372
| Fed. Cir. | 2012Background
- 3M and Avery are direct competitors in retroreflective sheeting; the case concerns Heenan patents RE40,455 and RE40,700
- 3M sells Diamond Grade DG3; Avery sells OmniCube; both pertain to retroreflective sheeting technology
- 3M filed a declaratory judgment action against Avery in 2010; district court dismissed for lack of case or controversy
- Avery began reissue proceedings for the Heenan patents; 3M alleges this was to position for litigation
- Rhodes (3M) and Sardesai (Avery) exchanged conversations in 2009 about potential infringement and licenses; claim charts were promised
- District court did not resolve contested facts and dismissed; this appeal seeks vacatur and remand for fact-finding
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether a case or controversy exists for declaratory judgment | 3M alleges ongoing, imminent threat from Avery's assertion of patent rights | Avery contends no definite, concrete controversy existed given informal discussions and lack of coercive action | Yes, if facts alleged are proven; controversy exists |
| Whether the court may decide factual disputes on appeal | 3M argues facts are undisputed and remand unnecessary | Avery argues unresolved factual disputes must be resolved by district court first | Remand required to resolve disputed facts |
| Whether the alleged 2009 communications create a sufficient controversy | Sardesai stated DG3 may infringe and licenses are available; claim charts to come | Communications were informal and not a concrete threat or explicit infringement | If proven, allegations could support jurisdiction; mere informality not dispositive |
| Whether time lapse between actions harms jurisdiction | Over one-year delay does not dissipate the controversy given unchanged circumstances | Delay weighs against continuing controversy | Delay alone not dispositive; consider surrounding circumstances |
| Effect of lack of covenant not to sue on jurisdiction | Refusal to covenant supports finding of ongoing controversy | Nonexistence of covenant is not dispositive | Cov not dispositive; may provide additional support depending on facts |
Key Cases Cited
- MedImmune, Inc. v. Centocor, Inc., 549 F.3d 1374 (Fed.Cir. 2007) (establishes immediacy/realism test for declaratory judgments and injury in fact)
- Hewlett-Packard Co. v. Acceleron LLC, 587 F.3d 1358 (Fed.Cir. 2009) (deadlines and specific claim charts can create a case or controversy)
- Innovative Therapies, Inc. v. Kinetic Concepts, Inc., 599 F.3d 1377 (Fed.Cir. 2010) (informal, non-decisional communications can fail to create jurisdiction)
- Prasco, LLC v. Medicis Pharm. Corp., 537 F.3d 1329 (Fed.Cir. 2008) (prior litigation and enforcement can affect jurisdiction)
- AMP v. USPTO, 653 F.3d 1329 (Fed.Cir. 2011) (patentee enforcement activity and time; context matters for jurisdiction)
- Cardinal Chem. Co. v. Morton Int'l, 508 U.S. 83 (U.S. 1993) (actual controversy requires concrete dispute about infringement)
- SanDisk Corp. v. STMicroelectronics, Inc., 480 F.3d 1372 (Fed.Cir. 2007) (injury in fact must be traceable to defendant's conduct)
- Md. Cas. Co. v. Pac. Coal & Oil Co., 312 U.S. 270 (U.S. 1941) (test for controversy and real injury in fact)
- Aetna Life Ins. Co. v. Haworth, 300 U.S. 190 (U.S. 1937) (case or controversy requirement foundation)
- Lujan v. Defenders of Wildlife, 504 U.S. 555 (U.S. 1992) (standing components)