holding that there was no case or controversy when the plaintiff sought a declaration that its product did not infringe on the defendant’s patent because the plaintiff did not demonstrate a reasonable apprehension of a patent infringement suit
How later courts described this case
- holding that there was no case or controversy when the plaintiff sought a declaration that its product did not infringe on the defendant’s patent because the plaintiff did not demonstrate a reasonable apprehension of a patent infringement suit
- finding no real and immediate controversy where, as of the date of the complaint, the alleged infringer “anticipated further, fairly extensive testing of the [accused product] including, construction of more test models, and anticipated design changes where necessary in response to the testing”
- remanding case for dismissal without prejudice where court lacked subject-matter jurisdiction over claim for declaratory relief and noting that even if jurisdiction existed, it was appropriate to decline to exercise discretionary jurisdiction because declaratory relief would serve no useful purpose
- concluding that the plaintiff did not establish a reasonable apprehension of suit even when other litigation was pending between the two parties
Written by the judges who cited it.
The opinion
CUDAHY, Circuit Judge,
concurring.
I concur in the result but would prefer to rely solely upon certain of the grounds cited in Part I “C” of the majority opinion. It is true, as the majority there suggests, that another pending lawsuit, involving the alleged validity and infringement of Deere’s patent vis-á-vis IH’s 800 series corn head, * may eventually render the instant suit superfluous. As Judge Sprecher notes,
If [Deere’s] patent ultimately is found to be invalid, this entire lawsuit becomes unnecessary because, whatever its final configuration, the CX — 41 could not possibly infringe a nonexistent patent.
It also seems true that the injunction issued by the district court in the other pending case provided one of the more compelling reasons for IH to seek relief in this one. But that injunction is now stayed pending final resolution of that suit thus removing any threat of possible contempt.
With respect, however, to the existence here of a “case or controversy,” although Judge Sprecher has ably and eloquently presented the arguments against the existence of an “actual controversy,” I fear that the result of his efforts may be to substitute a spate of litigation about justiciability for litigation about infringement. Absent the special circumstances of this case (noted above), the need for as much certainty as reasonably possible in the marketing of new products and technology suggests, in the present context, a generous construction of the Declaratory Judgment Act.
Deere & Co. v. International Harvester Co., 460 F.Supp. 523 (S.D.I11.1978); rev’d and rem’d for further proceedings, No. 78-2660 (unpublished memorandum issued January 23, 1980).