Allied Mineral Products, Inc. v. Osmi, Inc.
870 F.3d 1337
| Fed. Cir. | 2017Background
- Allied (U.S. manufacturer) filed a declaratory judgment action in S.D. Fla. seeking a ruling of noninfringement, invalidity, and unenforceability of U.S. Patent No. 7,503,974 (the ’974 patent) after Stellar sued Allied’s Mexican distributors for infringement of a Mexican patent.
- Stellar sent pre-suit notice letters to Allied’s Mexican distributors (Ferro and Pyrotek) accusing infringement of Mexican Patent No. 279757; Allied’s U.S. counsel responded on the distributors’ behalf, but Stellar never replied.
- Stellar subsequently sued Ferro and Pyrotek in Mexico for infringement; those suits invoked claim 16 of the Mexican patent, a Spanish translation of claim 16 of the ’974 U.S. patent.
- Allied did not allege it indemnified the distributors and there were no U.S. suits or threats alleging infringement of the ’974 patent directed at Allied.
- The district court dismissed Allied’s complaint for lack of Article III declaratory judgment jurisdiction; the court found Stellar’s actions in Mexico were not an affirmative act creating a justiciable controversy with Allied in the U.S.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Article III "case or controversy" exists to hear Allied’s declaratory judgment claim on the ’974 patent | Stellar’s Mexican enforcement against Allied’s customers creates a real and immediate controversy about Allied’s rights in the U.S. | Stellar’s actions were directed only at Mexican entities under Mexican law and did not target Allied or the U.S. patent system | No – no justiciable controversy; Stellar took no affirmative acts against Allied or the U.S. patent, so jurisdiction lacking |
| Whether foreign enforcement alone can support U.S. declaratory jurisdiction | Allied contends fear and practical pressure from foreign suits justify declaratory relief in U.S. | Stellar contends fear of possible future suit is insufficient and there were no U.S.-directed threats or litigation | No – fear of future suit and foreign enforcement alone are insufficient to establish jurisdiction |
| Whether prior patentee litigation or threats (litigation history) create jurisdiction | Allied points to Stellar’s Mexican litigation as indicative of enforcement intent | Stellar lacked U.S. litigation history or any statements threatening suit in U.S.; mere litigation against third parties not enough | No – litigation history against third parties, without acts directed at the plaintiff, does not confer jurisdiction |
| Whether Arris factors (indemnity or implied indirect-infringement) apply | Allied argues manufacturer has standing when customers are sued | Allied did not allege indemnity obligations nor that Stellar implicitly accused Allied of U.S. indirect infringement | No – neither indemnity nor an implicit allegation of U.S. indirect infringement was pled, so Arris does not apply |
Key Cases Cited
- MedImmune, Inc. v. Genentech, 549 U.S. 118 (2007) (Article III requires a definite, concrete controversy of sufficient immediacy and reality for declaratory relief)
- Prasco LLC v. Medicis Pharm. Corp., 537 F.3d 1329 (Fed. Cir. 2008) (fear of a future infringement suit alone is insufficient for declaratory judgment jurisdiction)
- SanDisk Corp. v. STMicroelectronics, Inc., 480 F.3d 1372 (Fed. Cir. 2007) (declaratory jurisdiction generally requires some affirmative act by the patentee)
- Innovative Therapies, Inc. v. Kinetic Concepts, Inc., 599 F.3d 1377 (Fed. Cir. 2010) (communications and litigation history not necessarily sufficient to create an immediate controversy)
- Arkema Inc. v. Honeywell Int’l, Inc., 706 F.3d 1351 (Fed. Cir. 2013) (foreign suit plus related U.S. litigation can create sufficient affirmative acts for jurisdiction)
- Arris Group, Inc. v. British Telecommunications PLC, 639 F.3d 1368 (Fed. Cir. 2011) (manufacturer may have standing if indemnity obligation exists or if customer suits implicitly allege induced/contributory infringement by manufacturer)
- City of Los Angeles v. Lyons, 461 U.S. 95 (1983) (subjective fear of future injury does not confer Article III jurisdiction)