Matthews International Corp. v. Biosafe Engineering, LLC
695 F.3d 1322
Fed. Cir.2012Background
- Matthews markets Bio Cremation™ equipment using alkaline hydrolysis as an environmentally friendlier alternative.
- Resomation Ltd. granted Matthews an exclusive US license to market its alkaline hydrolysis equipment.
- Biosafe Engineering, LLC and Digestor, LLC formed to own patents related to alkaline hydrolysis, including five Method Patents and one System Patent.
- Matthews filed suit Feb 28, 2011 against Biosafe for declaratory judgments of noninfringement, invalidity, and unenforceability and asserted state-law claims.
- The System Patent issued May 2011, during the litigation; Matthews amended to include invalidity of the System Patent.
- District court dismissed Matthews’ claims for lack of declaratory-judgment jurisdiction and for failure to plead state-law claims with the required bad-faith element.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether there is an actual controversy with immediacy for declaratory judgment on Method Patents | Matthews contends there is a live dispute with Biosafe about potential infringement by its customers. | Biosafe argues no concrete, immediate controversy since operation parameters are unsettled and no direct infringement occurs yet. | No; lacks immediacy to support declaratory judgment jurisdiction. |
| Whether the System Patent creates jurisdiction after its issuance | Matthews sought relief including invalidity of the System Patent. | System Patent cannot create jurisdiction where predicate jurisdiction did not exist at filing. | No; no jurisdiction over the System Patent. |
| Whether Matthews' state-law claims are preempted or plead bad faith | Matthews asserts bad faith in Biosafe’s statements and seeks relief under state-law claims. | Bad faith not pled with objective baselessness; preemption applies to patent contentions; claims not ripe. | Bad faith not established; claims dismissed; not ripe. |
Key Cases Cited
- Cat Tech LLC v. TubeMaster, Inc., 528 F.3d 871 (Fed. Cir. 2008) (balance of immediacy and reality in declaratory judgments; no advisory opinions)
- MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (U.S. 2007) (no need for risk of infringement to seek declaratory relief; but other requirements apply)
- Arris Grp., Inc. v. British Telecomms., PLC, 639 F.3d 1368 (Fed. Cir. 2011) (cases require definite controversy with immediacy; assesses standing for declaratory judgments)
- Benitec Austl., Ltd. v. Nucleonics, Inc., 495 F.3d 1340 (Fed. Cir. 2007) (insufficient information to assess potential infringement defeats declaratory relief)
- Sierra Applied Scis., Inc. v. Advanced Energy Indus., Inc., 363 F.3d 1361 (Fed. Cir. 2004) (development fluidity defeats immediacy for declaratory relief)
- Telectronics Pacing Sys., Inc. v. Ventritex, Inc., 982 F.2d 1520 (Fed. Cir. 1992) (early-stage device development affects ripeness of declaratory judgments)
- Lujan v. Defenders of Wildlife, 504 U.S. 555 (U.S. 1992) (standing and injury requirements; some day does not suffice)
- Public Serv. Comm’n v. Wycoff Co., 344 U.S. 237 (U.S. 1952) (disagreement must have fixed and final shape; not nebulous)
- Graham v. Nat’l Collegiate, not applicable () (not cited in opinion)