Arkema Inc. v. Honeywell International, Inc.
706 F.3d 1351
| Fed. Cir. | 2013Background
- Arkema seeks declaratory judgment that supplying 1234yf to US automakers would not infringe Honeywell's '120 and '882 method patents.
- District court denied Arkema's motion to supplement its complaint, finding no justiciable controversy.
- Honeywell holds patents covering methods using 1234yf in automobile air conditioning; Arkema invested in 1234yf production facilities.
- Honeywell asserted infringement litigation in the US and Europe; Arkema feared indirect infringement liability if it supply 1234yf.
- Arkema argued there is a concrete, ongoing dispute over legal rights to use 1234yf; district court found no substantial controversy.
- The Federal Circuit reverses, holding there is an Article III controversy and remands for further proceedings.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether there is an Article III controversy for Arkema's declaratory judgments on the '120 and '882 patents. | Arkema has concrete plans to supply 1234yf and faces potential liability. | No imminent infringement liability without identified direct infringers or imminent acts. | Yes; a justiciable controversy exists. |
| Whether the controversy is sufficiently immediate and real under MedImmune. | Long-term supply contracts and imminent sales create immediacy. | Unclear immediacy without specific infringement acts or customers. | Yes; controversy is sufficiently immediate. |
Key Cases Cited
- MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (U.S. (2007)) (declaratory judgment availability without cessation of license payments)
- SanDisk Corp. v. STMicroelectronics, Inc., 480 F.3d 1372 (Fed. Cir. 2007) (jurisdiction when plaintiff must choose between infringing activity or abandonment)
- Arris Grp., Inc. v. British Telecommc'ns PLC, 639 F.3d 1368 (Fed. Cir. 2011) (supplier standing; related litigation can support jurisdiction)
- Teva Pharms. USA, Inc. v. Novartis Pharms. Corp., 482 F.3d 1330 (Fed. Cir. 2007) (declaratory judgment jurisdiction standards in patent disputes)
- Goodyear Tire & Rubber Co. v. Releasomers, Inc., 824 F.2d 953 (Fed. Cir. 1987) (related litigation and activity in determining controversy)