Opposition Brief — Implax Laboratories, Inc. v. Astrazeneca AB (No. 05-1583)

FILED

(4) JUL 13 2006

— OFFICE OF THE CLERK

ME COURT, U.S.

No. 05-1583 =

In the Supreme Court of the Gnited States

IMPAX LABORATORIES, INC.,

Petitioner,

Vv

ASTRAZENECA AB, AKTIEBOLAGET HASSLE,

KBI-E, INC., KBI, INC. AND ASTRAZENECA LP,

Respondents.

On Petition for Writ of Certiorari to the United States

Court of Appeals for the Federal Circuit

BRIEF IN OPPOSITION

JAY I. ALEXANDER ERROL B. TAYLOR

MILBANK, TWEED, Counsel of Record

HADLEY & McCLoy LLP FREDRICK M. ZULLOW

1850 K Street, N.W. JOHN M. GRIEM, JR.

Washington, D.C. 20006 LAWRENCE T. KASS

(202) 835-7500 MILBANK, TWEED,

HADLEY & McCLoy LLP

One Chase Manhattan Plaza

New York, NY 10005

(212) 530-5000

Counsel for Respondents

TABLE OF CONTENTS

A. The Court Already Concluded Earlier in This

Term That the Question Presented Does not Merit

Ses cissichmgnaitonewoqounene 6

. The Federal Circuit’s Seventh Amendment

Precedent is Neither Inconsistent nor Confusing. ............. 7

1. No Circuit Split is Possible in Light of

the Federal Circuit’s Exclusive

Jurisdiction Over Patent Litigation

. The Generalized “Confusion” Asserted

in the Petition is Minimal and Does Not

i nevoneevanecs Gg

. Technology Licensing Correctly Held That the

Nature of the Relief Sought by the Patentee

OVEEES Ge NFOGES OF TiAl, ............<.ccccccccoveccscovecsesvecvecoves 12

1. The Federal Circuit’s Observation That

The Nature of a Declaratory Judgment

Action Derives Entirely From the

Underlying Controversy That Creates it

. The 18th Century Writ of Scire Facias is

not a Correct Analog to a Declaratory

Judgment Action

ii

D. The Procedural Posture of This Case Makes it

Especially Inappropriate for REVICW. ...........:csssesrereeesee 26

COIR AOI Y sacitvevenseemnechinivnsinicnuinsdasiibbwestiiestinianenmisinitbaniiian 28

ili

RULE 29.6 STATEMENT

Pursuant to Rule 29.6, Respondents state that the parent

corporations or publicly held companies holding 10% or

more of the stock of AstraZeneca AB, Aktiebolaget Hassle or

AstraZeneca LP are AstraZeneca PLC and Zeneca

Wilmington, Inc. and that the parent corvoration or publicly

held company holding 10% or more ot the stock of KBI-E,

Inc. and KBI, Inc. is Merck & Co., Inc.

iV

TABLE OF AUTHORITIES

CASES

Aetna Life Ins. Co. v. Haworth,

ee Ee CET Peidiscihdabicdudereidactiiarstinnsdandecidhiuniiciooe 18

Armco, Inc. v. Armco Burglar Alarm Co., Inc.,

OS Fe RF es terri tiinevictitandcmeteipteaiins 8

Attorney General v. Rumford Chem. Works,

Fle Fs OO Ca Pere Rcd Athan ecttcisnd icmsinininchatcdnoniontsiocas 21

Beacon Theatres, Inc. v. Westover,

DO Fe Fe Ce cide nish caniidincssshisilaeiutictixbtenspiiedeaviotnart 27

Biovail Labs., Inc. v. Torpharm, Inc., 2002

Wk 1ST a a Oi DUD setitiinccchanisaesectsbesstonvenctulvine 11

Boulton & Watt v. Bull,

gv SE ks, - | REM beee nee es aOR MER EA OF es OST ERs 23

BP Chems., Ltd. v. Union Carbide Corp.,

iP peel g SP Ab, « SRSURERESD Mumyes muneunan ere re 18

_ Cardinal Chemical Co. v. Morton Int'l, Inc.,

Pr Ne Bites hcdadbsni dendin bodice Soachthios avbannmmancuceiaiona 20

Chauffers, Teamsters & Helpers

Local No. 391 v. Terry,

SE GS SO hiniiviindciptnucistnntivanadeiailicaé 12

Cochrane v. Deener,

OTE By Fa ee oiscd peckeccsenisseounccascbibcibieaiama mene 21

Curtis v. Loether,

A as Be Eat PR savsescivnsitieesaedeasenctsiiitinnidnapinidiepsioesioctiietaned 12

Evers v. Dwyer,

SE atc IE ITED cicicens cbercieesdiusiprtenls coanecdepesitiedideianianeriiidenand 18

Ex parte Wood,

Re ee I ee hcininseicpncciiandescalendahctcteanlectinatiaeiciacciiioes 22

Franchise Tax Bd. of Cal. v.

Constr. Laborers Vacation Trust,

et Se ee hiaiiker intend deseenbodad sdeieinsibidictiondicamansalcdeionen 26

Glaxo Group Ltd. v. Apotex, Inc.,

2001 WL 1246628 (N.D. Ill. 2001) oo. ee eteeeeeees 11

Golan v. Pingel Enterprise, Inc.,

ee Ce Os aly i iiitctensicreciciesahetieensancionesiepinies 26

Granfinanciera S_A. v. Nordberg,

Se eal eat aera ah vbanceteliicssdnineosdunchcieiaincipvenbaciecapiiphihaacland 12

Great Lakes Dredge & Dock Co. v. Huffman,

ee Re i iciniaiedeschersealihainibsiahaidaamnitagctiidenhinitineonthies 16

Gulfstream Aerospace Corp. v. Mayacamas Corp.,

es eee a iii dabeatiniciieestis isinicascaceeuieatlitisiowitinit 17

Hildebrand v. Board of Trustees of Mich. State Univ.,

DF Oe Fe COs EOF rrcoceniccintareceicetcdecospeusivesnens 8, 13

Hoechst Marion Roussel, Inc. v.

Par Pharmaceutical, Inc.,

1996 WL 468593 (D.N.J. 1996) ..........cccccccsssssosssesscesesere 10

In re Apotex,

49 Fed. Appx. 902 (Fed. Cir. 2002) .0........c.eeecscescesceseeeeees 9

vi

In re Evangelist,

Fe CA CRs FI ciererdenicinitroninertsicserninntioneinns

In re Lockwood, 50 F.3d 966 (Fed. Cir.),

cert. granted, 515 U.S. 1121,

wpe, SIS T, LEGE CISD cccccsccervenctcernesorssievenens passim

In re Omeprazole Patent Litigation,

222 F.Supp.2d 423 (S.D.N.Y. 2002),

aff'd, 84 Fed. Appx. 76 (Fed. Cir. 2003) ............sccsceseeeees

In re SGS-Thomson Micro., Inc.,

1995 WL 258370 (Fed. Cir.),

cart. Gamiad, S16 U.SB..F31 (EGS) .cncecccvcvescovesesveveceressie 9,

In re Technology Licensing Corp.,

423 F.3d 1286 (Fed. Cir. 2005),

cert. denied, _U.S.__ (June S, 2006)................. passim

James v. Pennsylvania General Ins. Co.,

FD 26 Fae Re Ge TRG) certcsesersenivsceovvscreressentvovevnes

KAO Corp. v. Unilever U.S., Inc.,

2003 WL, 1905635 (D. Del. 20038) .ccovesccccececsscoscesiescccoesess

Kidde, Inc. v. E. F. Bavis & Assocs., Inc.,

yant & 9 uf: Le Se | |. MeRemeCruremnernoramensner ure

Lang v. Pacific Marine & Supply Co.,

BS Fe Fk CP SA Fa iviesscirtictanecisenascasincnsrmsvemnves

Manning v. United States,

946 P36 GOS (1GEs Cir. 19GG) oan nreccccescrerrscscstesescesccncosinions

Maryland Casualty Co. v. Pacific Coal & Oil Co.,

SE re CN a cicitceccnlestiinhnsniesiniuisilaiesccctepiaineindintininia

Vii

Medimmune, : . Genentech, Inc.,

B27 F.36 DEO CHE. Ct. 20S besverenswscesesevncesvessecnevsens ‘ented 25

Mowry v. Whitney,

hs Me a i tiseisneintiicasinentnnavidicdahitaniedouinbeni 21, 22, 24

Murphy v. Hunt,

455 U.S. 478 (1982)........2cc000 pniieiiesbiclciesinnbadisatapialaadues 27

Nike, Inc. v. Wal-Mart Stores, Inc.,

UBD FB BEST CON, GIR Uap cceccssniscabcesiicinicsststcasesevies 13

Owens-Illinois, Inc. v. Lake Shore Land Co.,

GEO FOE TERS Cb ae BOT ioccccisictntnenientcheseshcaviiinvepi 19

Perez v. Ledesma,

WE Tc BE IT) wciicisiicivicsiicniniocentincsveiecanencdnivtedaatiaiinn 17

Petition of Rosenman & Colin,

Br a SF CO ale Fe aiverccises scctsntotaiapsolnaetesasaintaainbecs 19

Pfizer, Inc. v. Novopharm Ltd.,

2001 WL 477163 (N.D. Ll. 2001) ..ccsscccscccscecssceesseecnesenes 1]

Powell v. McCormack,

POSED ye icvisersticbiidiaibinicincpitincinicarioliacivcesiieias 27

Samuels v. Mackell,

MUS GO ok 17

Sanofi-Synthelabo v. Apotex, Inc.,

2002 WL 1917871 (S.D.N.Y. 2002)..... inonecniecsvaritovecoretees 10

Shubin v. United States Dist. Court,

SES Fete AOE A. Fe tbinintibiniamananie 19

Simler v. Conner,

AE IN sic is cenindstncisiccinsscuarkveeinadebveroncobinieebion 18

Steffel v. Thomson,

SSE ARTA OOL 17

Super Sack Mfg. Corp. v.

Chase Packaging Corp.,

Bee EE (IE. Gets PPO )uvcceccecavensecsavesesevesssvecsocsetnnen 25

Symbol Technologies, Inc. v

Lemelson Medical Educ. & Res. Found.,

Fe ee Pn TU Cle OE Dacciavcmvornscic vocesecteretcontiescooes 10

Tegal Corp. v. Tokyo Electron America, Inc.,

257 F.3d 1331 (Fed. Cir. 2001)............sccseseesees 9,13, 14, 15

Textron Lycoming Reciprocating Engine

Div. v. United Automobile, Aerospace

and Agricultural Implement Workers of Am.,

DE I inns cdinecscidnbsavecinvessooseicbseeseeveevesdeetues 18

The King v. Sir Oliver Butler,

ie. slindeuvennancbaaeenente 24

Tull v. United States,

RE EB EEE icassncsincesoesneversneresnsceccsensevcennneesconens 1, 12

United States Parole Comm'n v.

Geraghty, 445 U.S. 388 (1980)..............ccesscesecessecetsesereres 27

United States v. American Bell Tel. Co.,

Ee ae 1 SOD cctcesecertcacsccscinecoosscsecscovenseevevenccones 21, 22

Warner-Lambert Co. v. Purepac Pharmaceutical Co.,

2001 WL 883232 (D.N.J. 2001) ............cceceesssecssseeseeeeeees 10

ix

STATUTES

i ON a a 2

SI OO scan dien te a eee ue caS 26

MOMS IG i oe 7, 26

pet od. | SOO RE Ree ae ME blitmen NE Os 26

SU WOE iio hens 5 oh 16, 18

USC HEF is co eictie nana es 22

D6 Ca BONEN i ik 22

OE Re passim

WUE ie a 2, 3, 10

SOUR OR 4

Act of April 10, 1790, §5, 1 Stat. 109, 111 ..ccccccccccsscsssssssen 22

Act of Feb. 21, 1793, §10, 1 Stat. 318 vcccscccsccsccccsscsssscsssssen 22

Act of July 4, 1836, §15, 5 Stat. 117, 123 .c.ccccccccsssssssssssssee 23

Declaratory Judgment Act of 1934, 48 Stat. 955........... 16, 23

Federal Courts Improvement Act of 1982,

MIS a sccrcpntnctishiesasdhsnctaiisnitia ied denis Sone Chicsead dela baat 7

RULES

Sf ARE are me OE OR A Seren RR 9

SUA, Wa BUG 0 Ds cicesaieiiteninicesinchibsisnicadcsinte descents cnaiieciectad 27

OE A SR er ne ee eee

Pe ao Se ceendncdicdlciiokabd saticsahith thaighiasecnseicdinmentsaneine 2:3.

CONSTITUTIONAL PROVISIONS

re I TN cali a

OTHER

3 William Blackstone,

Commentaries on the Law of England, 261 ...............:-0++

Am. Heritage Dict. of the Engl. Language

Ce SRR MEET NES ERPs ee ee ON A

H.R. Rep. No. 1264, 73d Cong.,

se Oa ith incersstntnstsipeieevinslulccebaieestnisscocscipeini

Pet. for Certiorari in

Technology Licensing Corp. v. Gennum Corp.,

No. 05-1248 (filed Mar. 28, 2006)...........::ccesecsssseeceeeeeee

Respondent’s Motion to Dismiss as

Moot in No. 94-1660, 1995 WL 848568 ............:sceceseeee |

S. Rep. No. 1005, 73d Cong., 2d Sess. (1934)...........cceceee

William M. Hindmarch, A Treatise on the Law

Relative to Patent Privileges for the Sole

Use of Inventions, 385 (1847) .......sccccscssssssesssesessesssesees

INTRODUCTION

The Court of Appeals decided this case by employing a

straightforward application of its recent holding in Jn re

Technology Licensing Corp., 423 F.3d 1286 (Fed. Cir. 2005),

cert. denied, ___ ‘U.S. ____ (June 5, 2006). Technology

Licensing held that a party seeking a declaratory judgment of

patent invalidity has no right to a jury trial where in the

underlying controversy the patentee seeks only equitable

remedies.

The Court denied Technology Licensing Corporation’s

petition for certiorari earlier this Term. The Petitioner here

concedes that the Technology Licensing petition raised the

same issue presented in this case. The present petition

should likewise be denied.

The Federal Circuit in Technology Licensing followed

this Court’s Seventh Amendment precedent, under which the

nature of the relief sought is given special weight in the

o‘herwise “abstruse historical” inquiry into whether a jury

right would exist had the case been brought in t. 18th

Century English courts. Tull v. United States, 481 U.S. 412,

417 (1987). That analysis was performed correctly in

Technology Licensing and applied consistently in this case.

The rule of Technology Licensing creates no circuit

conflicts in light of the Federal Circuit’s exclusive

jurisdiction over patent infringement litigation. Furthermore,

and contrary to Petitioner’s assertions, that decision is clear

and understandable to district courts hearing patent cases (as

demonstrated by the district court’s application of it here)

and is harmonious with more than a decade of previous

Federal Circuit precedent on the issue.

In fact, this case presents even stronger reasons for denial

because its procedural posture makes it an extremely poor

4

In January 2005, after learning that Teva Pharm-

aceuticals USA, Inc. had started commercial sales of

Petitioner’s 10mg and 20mg omeprazole product under a

strategic alliance agreement with Petitioner, Respondents

filed a second amended complaint requesting, in addition to

the previously sought equitable relief, an award of money

damages under 35 U.S.C. §284 pursuant to 35 U.S.C.

§§271(a}(c). PMApp. at A156-165. Respondents also filed

a separate action against Teva. PMApp. at A354-362. In

response, Petitioner answered and re-asserted its invalidity

and unenforceability counterclaims and its previously stayed

antitrust claims. In addition, Petitioner for the first time

made a general jury demand. PMApp. at A166-219.

Petitioner is one of four groups of defendants (known as

the “Second Wave” defendants) who are accused of

infringing the same patents by applying for FDA approval to -

market generic omeprazole. These cases were consolidated

in the United States District Court for the Southern District

of New York before the Hon. Barbara S. Jones for pre-trial

proceedings by the Judicial Panel on Multidistrict Litigation,

and have been consolidated for trial in that district. Jn re

Omeprazole Patent Litigation, MDL Docket No. 1291.

Judge Jones previously conducted a consolidated bench trial

of four “First Wave” defendants in 2002 involving the same

patents. See In re Omeprazole Patent Litigation, 222

F.Supp.2d 423 (S.D.N.Y. 2002), aff'd, 84 Fed. Appx. 76

(Fed. Cir. 2003).

By December 2005, it became clear that Petitioner would

assert that, in light of its jury demand it could not be part of a

contemplated consolidated bench trial of other Second Wave

defendants on patent liability issues then scheduled for early

2006. PMApp. at A460-462. Respondents thereafter

obtained the district court’s permission to voluntarily waive

their claims for damages against Petitioner with prejudice,

3

leaving in place only Respondents’ claims for equitable

relief. Pet. App. 38a-45a; PMApp. at All-12. Relying on

Technology Licensing, the district court struck Petitioner’s

jury demand. See Pet. App. at 43a. The district court

eontinued thereafter with pre-trial proceedings leading to a

consolidated bench trial of the Second Wave defendants,

including Petitioner.

Shortly before trial, Petitioner sought reconsideration of

the district court’s decision striking its jury demand. The

district court denied reconsideration and expanded on its

explanation of its application of Technology Licensing. See

Pet. App. at 15a-21a. Petitioner thereafter unsuccessfully

sought a writ of mandamus and subsequent rehearing and

rehearing en banc from the Federal Circuit. Pet. App. 1a-7a.

Each of the district court and Court of Appeals decisions

below relied fundamentally on the holding in Technology

Licensing that a party seeking a declaratory judgment of

patent invalidity has no right to a jury trial where in the

underlying controversy the patentee seeks only equitable

remedies. See Pet App. at 6a-7a, 15a-21a, 43a.

The consolidated bench trial of the Second Wave

defendants, including Petitioner, commenced on April 3,

2006 and the evidentiary record was closed on June 15, 2006.

The parties anticipate completing post-trial briefing on July

28, 2006 and expect that the district court will issue its

findings of fact and conclusions of law under FED. R. CIv. P.

52(a) in due course.

REASONS FOR DENYING THE WRIT

The Federal Circuit in Technology Licensing applied this

Court’s “historical test” for determining whether the Seventh

Amendment guarantees a jury trial to a party seeking a

declaratory judgment of patent invalidity where the patentee

6

seeks only equitable relief in the underlying controversy.

The court held that the declaratory judgment claimant did not

have a right to a jury trial in those circumstances. The district

court and the Federal Circuit both applied the same rule in

this case. See Pet. App. at 7a (“We agree that our decision in

Technology Licensing supports the district court’s deter-

mination that Impax was not entitled to a jury trial on its

counterclaims regarding the patents.”).

Although the decision in Technology Licensing drew the

dissent of one judge, the Federal Circuit declined invitations

to revisit the issue en banc both in Technology Licensing and

in this case. This Court denied certiorari in Technology

Licensing just last month. No reason exists for the Court to

disturb in this case what has evolved as an orderly and

consistent application by the Federal Circuit of a manifestly

correct constitutional rule.

A. The Court Already Concluded Earlier in This

Term That the Question Presented Does not

Merit Review.

On June 5, 2006, the Court denied certiorari in

Technology Licensing. The petition in that case cast the

question presented as: “Whether the Seventh Amendment

right to jury trial of the parties to a declaratory relief action

for patent invalidity should be governed solely by the nature

of the remedy sought in the patentee’s claim or counterclaim

for infringement.” See Pet. for Certiorari in Technology

Licensing Corp. v. Gennum Corp., No. 05-1248 (filed Mar.

28, 2006). The petition asserted that this Court should

intervene because the Federal Circuit’s precedent was

unclear and in conflict with this Court’s Seventh Amendment

precedent. /d. at 11-24.

-

Petitioner in this case states that “Technology Licensing

Corporation’s petition presents the same question as the

present case” and requests that the Court consider the two

petitions together. See Pet. at 2. The current petition makes

essentially the same arguments that were rejected in

Technology Licensing Corporation’s petition. For the

reasons explained below, the Court’s decision not to review

this issue in Technology Licensing was correct. The current

petition should also be denied.

B. The Federal Circuit’s Seventh Amendment

Precedent is Neither Inconsistent nor Confusing.

As discussed in detail, infra, the Federal Circuit has for

more than a decade consistently and correctly applied the

rule that a right to a jury in a declaratory judgment action for

patent invalidity depends on the relief sought by the patentee

in the underlying infringement controversy that gives rise to

declaratory judgment jurisdiction. There is nothing

inconsistent or confusing about the way in which the Federal

Circuit has applied its precedent in this area, which uniquely

impacts patent disputes within the confines of that court’s

exclusive jurisdiction.

1. No Circuit Split is Possible in Light

of the Federal Circuit’s Exclusive

Jurisdiction Over Patent Litigation.

Although the question presented in the petition is a

constitutional one, it can arise only in a federal patent case

over which the Federal Circuit is given exclusive jurisdiction.

See 28 U.S.C. §1295(a)(1). Since passage of the Federal

Courts Improvement Act of 1982, 96 Stat. 25, no other Court

of Appeals has had jurisdiction to review declaratory

judgments relating to patent validity, which in nearly every

conceivable situation stem from cases or controversies

8

arising from assertions of patent infringement under 35

U.S.C. §271.

Inter-circuit conflict is therefore impossible. Petitioner

nevertheless asserts conflict with cases from the First, Fifth

and Sixth Circuits. See Pet. at 24-25. No such conflict

exists, however. None of the cases cited by Petitioner

involved declaratory judgment actions. Moreover, the

rationale of all three decisions is identical to that in

Technology Licensing—the nature of the relief sought

governs whether a jury trial right exists.

In Hildebrand v. Board of Trustees of Mich. State Univ.,

607 F.2d 705, 708 (6th Cir. 1979), the Sixth Circuit held that

“the chief focus to be made when determining whether a jury

trial night exists is the nature of the relief sought.” Because

the relief sought in that case was legal—compensatory and

punitive damages—the court held that the district court had

erred by removing the case from the jury. In Jn re

Evangelist, 760 F.2d 27 (Ist Cir. 1985), the First Circuit

decided, on mandamus, that the plaintiff's claim under the

Investment Company Act of 1940 was equitable in nature,

and therefore declined to order a jury trial. In Armco, Inc. v.

Armco Burglar Alarm Co., Inc., 693 F.2d 1155, 1158 (Sth

Cir. 1982), the Fifth Circuit held that after the plaintiff's

claim for damages was dismissed, the defendant no longer

had a right to a jury trial.

Thus, the three circuits allegedly in conflict with the

Federal Circuit are not, in fact, in conflict. Each of these

Courts of Appeal have looked to the nature of the relief

sought by the claimant in order to determine whether a right

to jury trial exists.

9

2. The Generalized “Confusion”

Asserted in the Petition is Minimal

and Does Not Merit Review.

Petitioner also asserts that the Federal Circuit’s

jurisprudence itself is “inconsistent” and “flawed.” See Pet.

at 16, 21-23. Tellingly, despite invitations to do so in both

Technology Licensing and in this case, that court has not seen

fit to consider the issue en banc, even in light of the

dissenting opinion of one panel member in Technology

Licensing. Petitioner’s assertions lack merit.

Petitioner attempts to demonstrate its point by relying on

two non-precedential decisions from the Federal Circuit

(while ignoring the highly pertinent precedential decision in

Tegal Corp. v. Tokyo Electron America, Inc., 257 F.3d 1331

(Fed. Cir. 2001), discussed infra) and three district court

cases (one of which is cited incorrectly). These cases, taken

together, do not indicate that the law is unsettled. Moreover,

all of these cases were decided before the Federal Circuit’s

clarifying and definitive opinion in Technology Licensing,

which now obviates any claim of “confusion,” regardless of

whether any such claim ever had validity.

Petitioner’s reliance on the Federal Circuit’s non-

precedential decisions in Jn re SGS-Thomson Micro., Inc.,

1995 WL 258370 (Fed. Cir.), cert. denied, 516 U.S. 931

(1995) and In re Apotex, 49 Fed. Appx. 902 (Fed. Cir. 2002)

is particularly misplaced. Both decisions were issued under

FED Cir. R. 47.6(b), which provides. “in opinion or order

which is designated as not to be ci ® as precedent is one

determined by the panel issuing it as no. adding significantly

to the body of law. Any opinion or order so designated must

not be employed or cited as precedent.” The Federal Circuit

does not consider itself bound by its non-precedential

opinions. See Symbol Technologies, Inc. v. Lemelson

10

Medical Educ. & Res. Found., 277 F.3d 1361, 1368 (Fed.

Cir. 2002). A non-binding, non-precedential opinion a

fortiori should not cause confusion or inconsistency in the

Federal Circuit’s jurisprudence.

~ Petitioner states nonetheless that three district courts have

“interpreted Lockwood and “SGS-Thompson [sic]” to hold

that a right to a jury trial exists on a counterclaim seeking a

declaratory judgment of invalidity, without regard to whether

the patentee could or did file a claim of damages in the same

action.” Pet. at 22. One of those decisions, Sanofi-

Synthelabo v. Apotex, Inc., 2002 WL 1917871 (S.D.N.Y.

2002), actually held to the contrary. See id. at *7 (striking

jury demand of plaintiff who asserted claim only to equitable

relief under 35 U.S.C. §271(e)(2)).

The remaining two cases cited by Petitioner were

decisions of the District Court for the District of New Jersey

in Hoechst Marion Roussel, Inc. v. Par Pharmaceutical, Inc.,

1996 WL 468593 (D.N.J. 1996) and Warner-Lambert Co. v.

Purepac Pharmaceutical Co., 2001 WL 883232 (D.N.J.

2001). The Hoechst decision was based on the mistaken

view that the Federal Circuit’s non-precedential decision in

SGS-Thomson was “[t]he controlling law on this issue.”

1996 WL 468593 at *5. That statement was inaccurate

because, as explained above, SGS-Thomson was a non-

precedential decision. The Warner-Lambert court, in turn,

viewed the Hoechst decision as “clear authority” and also

cited heavily to SGS-Thomson. 2001 WL 883232 at *2-*3.

The two New Jersey decisions were therefore based on

the flawed premise that the Federal Circuit’s non-

precedential decisions were controlling. While a matter of

concern, this does not rise to a level requiring this Court’s

intervention for the simple reason that now, the Federal

Circuit has issued a precedential decision directly on point,

11

i.e., Technology Licensing. It therefore seems certain that the

district court in New Jersey would apply Technology

Licensing in any future case that raises the jury trial question,

just as the district court and the Federal Circuit did in this

case.

Moreover, the other district courts that have addressed

the issue have applied the same rule applied in this case, even

before the Technology Licensing decision was issued. The

Northern District of Illinois held in Glaxo Group Ltd. v.

Apotex, Inc., 2001 WL 1246628 (N.D. Ill. 2001); Pfizer, Inc.

v. Novopharm Ltd., 2001 WL 477163 (N.D. Ill. 2001); and

Biovail Labs., Inc. v. Torpharm, Inc., 2002 WL 1732372

(N.D. Ill. 2002) that the relief sought by the patentee

governed the course of trial. The District of Delaware also

applied the same rule in a pre-7Zechnology Licensing

decision. See KAO Corp. v. Unilever U.S., Inc., 2003 WL

1905635 (D. Del. 2003) (holding no right to jury existed after

patentee withdrew its claims for damages). Petitioner’s

claims of “confusion” in the district courts over the question

of when to grant a jury trial in patent declaratory judgment

actions are therefore overblown.

The district court in this case, which benefited from the

clear and unambiguous guidance pronounced in Technology

Licensing, clearly suffered no confusion in holding that

Petitioner was not entitled to a jury trial because Respondents

had voluntarily abandoned their claim for damages. See Pet

App. at 21a. No reason exists to suspect that district courts

in the future will be confused by the Federal Circuit’s clear

guidance in Technology Licensing which was, as now

discussed, manifestly correct.

12

C. Technology Licensing Correctly Held That the

Nature of the Relief Sought by the Patentee

Governs the Mode of Trial.

The Federal Circuit recognized in Technology Licensing

that the right to a jury under the Seventh Amendment turns

on this Court’s two-part test: (1) a comparison of the action

to the analogous action, if any, brought in 18th Century

England; and (2) the nature of the relief sought. 423 F. 3d at

1287; Tull, 487 U.S. at 417-18.

The Seventh Amendment preserves the right to a jury

trial only in civil actions “at common law.” U.S. CONST.

AMEND. VII; Chauffers, Teamsters & Helpers Local No. 391

v. Terry, 494 U.S. 558, 564 (1990). An action “at common

law” is one which would have been tried to a common law

court, not a court of equity, in 18th Century England. Tull,

481 U.S. at 417 (“Prior to the [Seventh] Amendment’s

adoption, a jury trial was customary in suits brought in the

English /aw courts. In contrast, those actions that are

analogous to 18th-century cases tried in courts of equity or

admiralty do not require a jury trial.”) (emphasis in original).

This Court has called the determination of the correct

18th Century analog to a particular cause of action an

“abstruse historical” exercise. Jd. at 421. Thus, in

characterizing a particular cause of action, the “relief sought

is ‘more important’ than finding a precisely analogous

common-law cause of action in determining whether the

Seventh Amendment guarantees a jury trial.” Jd. (quoting

Curtis v. Loether, 415 U.S. 189, 196 (1974)). See also

Granfinanciera S.A. v. Nordberg, 492 U.S. 33, 42 (1989)

(“The second stage of this analysis is more important than the

first.”’).

13

“A key dividing line between law and equity has

historically been that the former deals with money damages

and the latter with injunctive relief.” Hildebrand, 607 F.2d at

708. Historically, patentees sought “actual damages” in

courts of law and equitable remedies (e.g., injunctive relief or

an accounting of infringer’s profits) in courts of equity. Nike,

Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1440 (Fed. Cir.

1998).

Prior to Technology Licensing, the Federal Circuit had

addressed the question of whether the Seventh Amendment

entitles a patent infringement defendant to a jury trial in two

precedential decisions: Jn re Lockwood, 50 F.3d 966 (Fed.

Cir.), cert. granted, 515 U.S. 1121, vacated, 515 U.S. 1182

(1995) and Tegal Corp. v. Tokyo Electron America, Inc., 257

F.3d 1331 (Fed. Cir. 2001).

In Lockwood, the Federal Circuit held that a patentee who

had sought money damages for infringement, but who had

lost that claim in an interlocutory summary judgment, had a

right to a jury trial of the patent defendant’s declaratory

judgment counterclaim for invalidity. In arriving at that

conclusion, the Court of Appeals determined that the

declaratory judgment claim for invalidity had no common

law counterpart, but was most closely analogous to an

inverted suit for patent infringement in which the affirmative

defense of invalidity had been raised. 50 F.3d at 969-76.

The patentee could direct the course of trial depending on his

selection of the type of remedy he wished to pursue—in an

action for damages at law, trial would be to a jury; in an

equitable action seeking only injunctive relief, trial would be

to the bench. Jd. at 976.” In Tegal, the Federal Circuit held

* This Court initially granted certiorari, 515 U.S. 1121 (1995).

However, the Court later vacated the Federal Circuit’s judgment

and remanded the case to the district court for further proceedings

14

that a patent infringement defendant asserting the affirmative

defense of invalidity was not entitled to a jury trial in a case

where the patentee was seeking only equitable relief (i.e., an

injunction). 257 F.3d at 1339-41.

The facts presented by Technology Licensing differed

from the prior cases in that, unlike in Tegal, the defendant

had interposed a declaratory judgment claim for invalidity

rather than an affirmative defense, and unlike Lockwood, it

was the defendant, rather than the plaintiff, demanding a jury

trial. Technology Licensing, 423 F.3d at 1288-90. The

Federal Circuit held nonetheless that its reasoning in the two

prior cases was dispositive. The court acknowledged its

holding in Lockwood that a declaratory judgment for patent

invalidity “resembles nothing so much as a suit for patent

infringement in which the affirmative defense of invalidity

has been pled.” Technology Licensing, 423 F.3d at 1289

(quoting Lockwood, 50 F.3d at 974). In such suits, the

Federal Circuit confirmed that it is the patentee who

determines whether the right to jury trial exists:

[I]n such common law actions, the patentee could

elect whether to proceed at law or in equity, based

on the remedy sought, and the right to a jury would

depend on the patentee’s choice:

If the patentee sought only damages, the

patentee brought an action at law; in such a

case, the defense of invalidity was tried to the

jury, assuming that a jury had been

demanded.... However, if the patentee facing

past acts of infringement nevertheless sought

after the patent owner withdrew his jury demand. 515 U.S. 1182

(1995). See Respondent’s Motion to Dismiss as Moot in No. 94-

1660, 1995 WL 848568.

15

only to enjoin future acts of infringement, the

patentee could only bring a suit in equity, and

the defense of invalidity ordinarily would be

tried to the bench.

Thus, the [Lockwood] court concluded, under

both English and American practice “it was the

patentee who decided in the first instance whether a

jury trial on the factual questions relating to validity

would be compelled.”

Technology Licensing, 423 F.3d at 1289 (quoting Lockwood,

50 F.3d at 976) (emphasis in original).

Applying the rule that the right to a jury trial is controlled

by the relief sought by the patentee, the Technology

Licensing court examined the distinction between the facts of

its case and those of Lockwood. In Lockwood, the patentee

had chosen to pursue a claim for damages but had lost that

claim involuntarily as a result of an adverse ruling on

summary judgment.’ In Technology Licensing in contrast,

the patentee had voluntarily and irrevocably dismissed its

claim for damages and thus sought only injunctive relief.

The Technology Licensing court found this distinction

dispositive in ruling that no jury trial right existed in the case.

This conclusion followed directly from the conclusion the

court had drawn from its historical analysis: that the patentee

decides the nature of the remedy being sought as the plaintiff

in the inverted declaratory judgment action and thus controls

the determination of whether the action is heard by a jury or

the bench. Technology Licensing, 423 F.3d at 1289-90. The

same result had been reached in Tegal, where the patentee

* Even though Lockwood had lost his claim for damages on

summary judgment, that was not a final decision and thus the

damages claim could have been revived on a subsequent appeal.

16

had permanently withdrawn its claim for money damages

only six days prior to trial and thus removed the right to a

jury trial. Tegal, 257 F.3d at 1338.

This case, which is directly analogous to Technology

Licensing in that the patentee has withdrawn its claim for

damages, reached the same result. The Federal Circuit’s

jurisprudence has thus culminated in a clear rule that follows

directly and logically from past precedent, and is simple to

apply.

1. The Federal Circuit’s Observation

That The Nature of a Declaratory

Judgment Action Derives Entirely

From the Underlying Controversy

That Creates it was Correct.

The Federal Circuit correctly determined in Lockwood,

and confirmed a decade later in Technology Licensing, that

an action for a declaratory judgment of patent invalidity,

brought under 28 U.S.C. §§2201-02, has no close common

law analog for purposes of this Court’s Seventh Amendment

“historical test.” In 18th Century England, a party in

apprehension of suit for patent infringement had no ability to

initiate a private civil action to settle the controversy. The

20th Century declaratory judgment action in this country

provided a new civil remedy that was not available to a party

against whom a patent was asserted in 18th Century England.

Congress passed the Declaratory Judgment Act in 1934.

48 Stat. 955. Although the Act created a new statutory

remedy, this Court initially described a declaratory judgment

as “essentially an equitable cause of action.” Great Lakes

Dredge & Dock Co. v. Huffman, 319 U.S. 293, 300(1943)).

Congress “explicitly contemplated that the courts would

decide to grant or withhold declaratory relief on the basis of

17

traditional equitable principles.” Samuels v. Mackell, 401

U.S. 66, 70 (1971).* This Court has more recently described

declaratory judgment actions in the modern post-merger

context as “neither legal nor equitable” and explained that

they must be examined according to “to the kind of action

that would have been brought had Congress not provided the

declaratory judgment remedy.” Gulfstream Aerospace Corp.

v. Mayacamas Corp., 485 U.S. 271, 284 (1988).

The Federal Circuit in Lockwood noted the sui generis

nature of the declaratory judgment statute and concluded that

because declaratory judgment jurisdiction derives entirely

from the existence of an underlying controversy, such actions

“are, for Seventh Amendment purposes, only as legal or

equitable in nature as the controversies on which they are

founded.” Lockwood, 50 F.3d at 973 (citing Gulfstream

Aerospace, supra). The Federal Circuit’s conclusion follows

directly from the observation that the jurisdiction of the

federal courts to entertain declaratory judgment suits is

* Creation of an altemative form of equitable relief to enable

constitutional challenge to state laws was a paramount purpose of

the Declaratory Judgment Act of 1934, which legislators at the

time described as a “milder alternative” to the remedy of seeking a

federal injunction under Ex parte Young against a state

government official to prevent enforcement of a law being

challenged. See Steffel v. Thomson, 415 U.S. 452, 466-67 (1974)

(quoting S. Rep. No. 1005, 73d Cong., 2d Sess. (1934)). See also

H.R. Rep. No. 1264, 73d Cong., 2d Sess., 2 (1934) (“The principle

involved in this form of [declaratory judgment] procedure is to

confer upon the courts the power to exercise in some instances

preventive relief; a function now performed rather clumsily by our

equitable proceedings and inadequately by the law courts.”)

(quoted in Perez v. Ledesma, 401 U.S. 82, 111-12 (1971)

(BRENNAN, J., concurring in part)).

18

carefully circumscribed by Article III and by the Act itself.

Federal courts may act under this jurisdiction only where

there exists a “case of actual controversy.” 28 U.S.C. §2201.

The Act is “‘operative only in respect to controversies which

are such in the constitutional sense.” Textron Lycoming

Reciprocating Engine Div. v. United Automobile, Aerospace

and Agricultural Implement Workers of Am., 523 U.S. 653,

661 (1998) (quoting Aetna Life Ins. Co. v. Haworth, 300 U.S.

227, 239-240 (1937)).

To maintain a federal declaratory judgment suit, a

plaintiff must demonstrate that a controversy exists that is

immediate and real rather than abstract or distant. Maryland

Casualty Co. v. Pacific Coal & Oil Co., 312 U.S. 270, 273

(1941); Evers v. Dwyer, 358 U.S. 202, 203 (1958) (the

“question in each case is whether the facts alleged [show a

substantial controversy] of sufficient immediacy and reality

to warrant the issuance of a declaratory judgment”). Thus, in

patent cases, declaratory judgment jurisdiction is limited to

controversies that are “actual, not hypothetical or of

uncertain prospective occurrence,” BP Chems., Ltd. v. Union

Carbide Corp., 4 F.3d 975, 977 (Fed. Cir. 1993), and where

the dispute is of “sufficient immediacy and reality” to

warrant judicial intervention. Lang v. Pacific Marine &

Supply Co., 895 F.2d 761, 765 (Fed. Cir. 1990).

Because declaratory judgment jurisdiction depends

entirely on the existence of an actual controversy, it follows

that the nature of the declaratory action derives from the

nature of that controversy. This Court held in Simler v.

Conner, 372 U.S. 221, 223 (1963), that the nature of the

underlying dispute (an action on a contract) defined its “basic

character” and thus gave rise to a jury trial even though it

was brought in the form of a declaratory judgment action.

See id. (“The fact that the action is in form a declaratory

judgment case should not obscure the essentially legal nature

19

of the action.”). The Federal Circuit’s analysis in

Technology Licensing is in full accord with this precedent.

The Federal Circuit’s approach is also consistent with the

approach taken by other Circuit Courts of Appeal that have

analyzed the right to a jury trial in the context of declaratory

judgment claims. See, e.g., Shubin v. United States Dist.

Court, 313 F.2d 250, 251-52 (9th Cir. 1963) (holding no

right to jury trial existed for declaratory judgment claim for

patent invalidity where patentee had stipulated that no

possibility of damages existed); Petition of Rosenman &

Colin, 850 F.2d 57, 60 (2d Cir. 1988) (“the nature of the

underlying dispute determines whether a jury trial is

available”); Owens-Illinois, Inc. v. Lake Shore Land Co., 610

F.2d 1185, 1189 (3d Cir. 1979) (“If the declaratory judgment

action does not fit into one of the existing equitable patterns

but is essentially an inverted law suit—an action brought by

one who would have been a defendant at common law—then

the parties have a right to a jury trial. But if the action is the

counterpart of a suit in equity, there is no such right.”);

Manning v. United States, 146 F.3d 808, 811 (10th Cir. 1998)

(“seeking declaratory relief does not entitle one to a jury trial

where the right to a jury trial does not otherwise exist’);

James v. Pennsylvania General Ins. Co., 349 F.2d 228, 230

(D.C. Cir. 1965) (“The right to jury trial in a declaratory

judgment action depends ... on whether the action is simply

the counterpart of a suit in equity—that is, whether an action

in equity could be maintained if declaratory judgment were

unavailable—or whether the action is merely an inverted

lawsuit.”).

Petitioner argues from the flawed premise that a

declaratory judgment claim for invalidity is wholly

“independent” of the underlying claim for patent

infringement. Petitioner cites for that proposition this

Court’s decision in Cardinal Chemical Co. v. Morton Int'l,

20

Inc., 508 U.S. 83, 96 (1993). See Pet. at 11. However,

Cardinal Chemical held that a declaratory judgment claim

for invalidity is “independent” of an infringement claim onl~

in the context of deciding that a declaratory judgment claim

for invalidity does not become moot on appeal after the

appellate court has found no infringement. Cardinal

Chemical does not speak to the nature of a declaratory

judgment action insofar as it determines the existence vel non

of the jury right, which is entirely distinct from the issue of

whether an appellate finding of no infringement moots the

appeal of the invalidity claim.

The Federal Circuit’s determination in Technology

Licensing that the jury trial right is determined by the relief

sought by the patentee in the underlying controversy is thus

logical and consistent with the precedent of this Court and

the other Circuit Courts.

2. The 18th Century Writ of Scire

Facias is not a Correct Analog to a

Declaratory Judgment Action.

Despite the wealth of precedent to the contrary, Petitioner

urges a different framework for analysis. It contends that an

18th Century common law analog to a declaratory judgment

action for patent invalidity did exist in the form of the

English writ of scire facias, and that such a finding compels

the conclusion that a jury trial right exists in this case. See

Pet. at 14-20. The Federal Circuit considered and correctly

rejected this argument in both Lockwood, 50 F.3d at 974 n.9

and Technology Licensing, 423 F.3d at 1290; see also id. at

1292-96 (Newman, J., dissenting).

The writ of scire facias required the party against whom

it issued to appear and show cause why a judicial record

should not be enforced, repealed or annulled. See Am.

21

Heritage Dict. of the Engl. Language (4th ed. 2000). In 18th

Century England, a King’s subject could petition for a writ of

scire facias to issue to the patentee to show cause why the

patent should not be revoked where: (1) different patents had

been issued to the same thing; (2) the patent had been granted

by false suggestion; or (3) the patent had been granted

contrary to law. Mowry v. Whitney, 81 U.S. 434, 440 (1871).

In the first case, the writ could be issued in the name of the ~

private party but in the latter cases, the writ issued only in the

name of the King or his Attorney General. Id.; United States

v. American Bell Tel. Co., 128 U.S. 315, 360 (1888);

Attorney General v. Rumford Chem. Works, 32 F. 608, 618

(C.C.D.R.I. 1876).

The scire facias was brought in the court of chancery.

Mowrey, 81 U.S. at 440; Rumford Chem. Works, 32 F. at

618. The historical record indicates that where factual

matters were disputed, the chancellor could refer those issues

to a jury for trial. See Rumford, 32 F. at 618. However, jury

proceedings in the chancery court were considered advisory,

not a matter of right. Cochrane v. Deener, 94 U.S. 780, 783

(1876) (“A trial at law is ordered by a chancellor to inform

his conscience, not because either party may demand it as a

right, or that a court of equity is incompetent to judge

questions of fact or of legal titles.”). Moreover, nothing in

the historical record indicates that the patentee, once served

with the writ, could counterclaim for infringement and

request relief in the same proceeding. The proceedings as

reported appear to have focused exclusively on the grounds

raised in the writ. This is an important difference from the

modern-day declaratory judgment action, where an

infringement counterclaim is permissible and may be

compulsory.

If the writ of scire facias can be said to have an analog in

modern day American practice, it is not a civil declaratory

22

judgment suit brought by a private individual for patent

invalidity. Rather, if any such analog exists, it exists in the

form of government-initiated proceedings to cancel an issued

patent. This is apparent from a review of the methods

historically available to challenge a patent in this country.

The first patent statutes in the United States differed from

English law. by granting a private right of action to repeal a

patent within one year of issuance. See Act of April 10,

1790, §5, 1 Stat. 109, 111; Act of Feb. 21, 1793, §10, 1 Stat.

318. This Court described that right as “in the nature of a

scire facias” and the matter was tried to a jury. Ex parte

Wood, 22 U.S. 603, 610-11 (1824). However, when the

patent statutes were re-written in 1836, that provision was

repealed. As a result, beginning in 1836, “no one but the

government, either in its own name or the name of its

appropriate officer . . . [could] institute judicial proceedings

for the purpose of vacating or rescinding the patent which the

government has issued to an individual, except in [cases of

interfering patents].” Mowry, 81 U.S. at 439.

Thus, in the 19th Century, this Court held that the

Solicitor General could maintain a bill in equity to revoke

two of Alexander Graham Bell’s patents for alleged fraud.

United States v. Bell, supra. Like the writ of scire facias in

England, the case was brought in equity by the government

and no provision existed for the patentee to bring

counterclaims for infringement or otherwise obtain relief.

In modern times, a proceeding to cancel a patent (or

claims thereof) takes the form of the statutory re-examination

pursuant to 35 U.S.C. §§301-307 or 35 U.S.C. §§311-318.

Re-examination proceedings are conducted by an examiner

of the United States Patent & Trademark Office, the agency

of the government responsible for the issuance of patents.

Like the writ of scire facias, the proceeding begins with a

23

petition, normally from a third party, that raises detailed

grounds for finding invalidity. If the agency chooses to

initiate the proceeding, the patentee is called upon to

respond, 35 U.S.C. §304, 314, and in certain instances the

third party may comment on the proceedings. 35 U.S.C.

§314(b)(2). However, the proceeding is not analogous to

private civil litigation and no provision exists in the re-

examination statute for patent infringement claims to be

brought in the Patent & Trademark Office seeking either

monetary or injunctive relief.

Even though the Patent Act of 1836 eliminated the

private right of action to repeal a patent, a defendant in a

patent infringement action could still raise invalidity defenses

by “plead[ing] the general issue” including possible

averments that the patentee had engaged in “concealment . . .

for the purpose of deceiving the puolic” or that the patented

invention was previously described in a public work, or in

public use or on sale. See Act of July 4, 1836, §15, 5 Stat.

117, 123. Thus, beginning in 1836, invalidity was raised in

private patent litigation solely as a defense against an

infringement suit. The issue was neither inherently legal nor

equitable and was not raised as a claim for relief at all.

It was not until passage of the Declaratory Judgment Act

of 1934 that an affirmative private cause of action for patent

invalidity re-appeared in American jurisprudence. However,

as discussed supra, the declaratory judgment action is a sui

generis remedy that derives from the existence of a specific,

immediate and concrete controversy that can be resolved by

> In 18th Century England, invalidity was likewise available as a

defense in a suit for infringement. See, e.g. Boulton & Watt v.

Bull, 2 H.B. 463 (1795) (examining validity of Watt’s steam

engine patent in his infringement action against Bull).

24

the federal courts pursuant to the powers granted under

Article Il.

The modern declaratory judgment action is therefore

entirely distinct from the writ of scire facias, both

historically and procedurally. In England, any subject with a

generalized claim of prejudice could petition the King to

bring a scire facias. Mowry, 81 U.S. at 440 (“[WJhen a

patent is granted to the prejudice of the subject, the king of

right is to permit him upon his petition to use his name for

the repeal of it, in scire facias at the king’s suit.”) (citing The

King v. Sir Oliver Butler, 3 Lev. 220); see 3 William

Blackstone, Commentaries on the Law of England, 261 (“[I)f

the grant be injurious to a subject, the king is bound of right

to permit him (upon his petition) to use his royal name for

repealing the patent in a scire facias.”). As one commentator

explained:

A void or illegal patent for an invention, is in

law prejudicial to every one of her Majesty’s

subjects, for it commands them to abstain from the

use of the art or invention comprised in it. For this

reason every person is presumed to have such an

interest in a patent for an invention, that if he alleges

that it is illegal or void, he is entitled as of right to a

scire facias in the name of the Queen, in order to

repeal it.

William M. Hindmarch, A Treatise on the Law Relative to

Patent Privileges for the Sole Use of Inventions, 385 (1847).

This broad-based standing to petition the King to revoke

a patent contrasts sharply with the much more narrowly

tailored standing requirement for seeking declaratory relief

which, as discussed above, is closely cabined by the “case of

actual controversy” requirement. Thus, unlike the practice of

25

petitioning for writ of scire facias, “[a] person not under

reasonable apprehension of suit cannot overcome the absence

of declaratory standing simply by challenging the patent

prosecution and asserting fraud.” Medimmune, Inc. v.

Genentech, Inc., 427 F.3d 958, 968 (Fed. Cir. 2005). Rather,

a person with only a generalized complaint about an issued

patent may proceed only by petitioning the government—

either through the Patent & Trademark Office or the Justice

Department as described above.

This distinction supports the determination reached by

the Federal Circuit in Technology Licensing and Lockwood

that a declaratory judgment action is more analogous to an

“inverted” infringement suit than it is to the writ of scire

facias. A declaratory judgment action settles a concrete and

immediate dispute over a patent, including validity,

infringement and the relief owed the patentee. If the

potential defendant sues first, the patentee normally

counterclaims for infringement and seeks relief; often as a

compulsory counterclaim under FED. R. Civ. P. 13(a).° If

the patentee files first, the defendant may counterclaim for

invalidity in addition to asserting it as an affirmative defense.

In either event, the case proceeds to trial as a private, civil

patent infringement © ut with invalidity asserted as a defense.

The Federal Circuit’s conclusion that the right to jury

trial is properly judged based on the nature of the underlying

* If, in contrast, the patentee states that he does not intend to seek

relief for infringement, the declaratory judgment action must be

dismissed for lack of jurisdiction. See, e.g., Super Sack Mfg. Corp.

v. Chase Packaging Corp., 57 F.3d 1054, 1058-59 (Fed. Cir.

1995).

26

patent infringement dispute—including most importantly the

nature of the relief sought—is therefore manifestly correct.’

D. The Procedural Posture of This Case Makes it

Especially Inappropriate for Review.

Finally, the procedural posture of this case makes it an

especially weak candidate for certiorari because the district

court has already completed the evidence-taking phase of the

bench trial Petitioner sought to avoid in its petition for

mandamus to the Federal Circuit. The district court

determined that it would be judicially efficient to proceed

with the 11-week consolidated Second Wave trial with

Petitioner included as one of the defendants. That decision

can scarcely be questioned in view of the logistical

difficulties of trying multiple defendants in a complex patent

case in which the patents have a relatively short remaining

life.

7 This conclusion comports with other important doctrines relating

to declaratory judgments. For example, federal question

jurisdiction over a declaratory judgment action is determined based

upon whether the cause of action threatened by the declaratory

judgment defendant “aris[es] under the Constitution, laws or

treaties of the United States.” 28 U.S.C. §1331; Franchise Tax Bd.

of Cal. v. Constr. Laborers Vacation Trust, 463 U.S. 1, 18-19 &

n.19 (1983) (“federal courts have consistently adjudicated suits by

alleged patent infringers to declare a patent invalid, on the theory

that an infringement suit by the declaratory judgment defendant

would raise a federal question over which the federal courts have

exclusive jurisdiction”). Also, whether the path of appeal in a

declaratory judgment action leads to the Federal Circuit under 28

U.S.C. §1295 or to the regional Courts of Appeal under 28 U.S.C.

§1291 also depends upon the nature of the underlying action

intended to be addressed by the declaratory judgment. Golan v.

Pingel Enterprise, Inc., 310 F.3d 1360, 1366-67 (Fed. Cir. 2002);

Kidde, Inc. v. E. F. Bavis & Assocs., Inc., 735 F.2d 1085 (8th Cir.

1984).

27

Petitioner sought mandamus from the Federal Circuit

only weeks before the scheduled commencement of trial but

did not request expedited relief. Following denial of its

mandamus petition, Petitioner did file an “emergency”

motion to stay the trial under FED. R. App. P. 8 coincidentally

with its petitions for rehearing and rehearing en banc, all of

which were denied. Petitioner thereafter did not seek any

form of extraordinary relief in this Court.

Petitioner continues to vigorously assert that

Respondents’ patents are invalid and not infringed. The

district court’s findings of fact and conclusions of law

pursuant to FED. R. Civ. P. 52(a) are expected to issue in due

course. Appeal to the Federal Circuit by one or more

dissatisfied parties is virtually certain. If Petitioner were to

prevail in the resulting final decision from the Court of

Appeals, Petitioner’s right to a jury trial would no longer be a

“live” issue and therefore would be moot. Murphy v. Hunt,

455 U.S. 478, 481 (1982) (“In general a case becomes moot

‘when the issues presented are no longer ‘live’ ... .”)

(quoting United States Parole Comm'n v, Geraghty, 445 U.S.

388, 396 (1980), which quoted Powell v. McCormack, 395

U.S. 486, 496 (1969)). Moreover, this is not the type of

Situation where the question presented is “capable of

repetition yet evading review.” Murphy, 455 U.S. at 482. In

more “ordinary” patent infringement cases, the district court

is more likely to stay trial until the higher courts can sort out

the jury trial issue on a petition for mandamus. See, e.g.,

Beacon Theatres, Inc. v. Westover, 359 U.S. 500 (1959)

(deciding Seventh Amendment question in mandamus

proceeding).

The Court is therefore unlikely to encounter similar

situations where the bench trial sought to be avoided,

following denial of a petition for mandamus by the Court of

Appeals, has already occurred. Now that the evidentiary

28

record has been closed in this case and the orderly decision-

making process of the lower courts is underway, the Court

should give that process the opportunity to play itself out

rather than step in now and disrupt that process.

CONCLUSION

For the foregoing reasons, the petition should be denied.

Respectfully submitted,

ERROL B. TAYLOR

Counsel of Record

FREDRICK M. ZULLOW

JOHN M. GRIEM, JR.

LAWRENCE T. KASS

MILBANK, TWEED,

HADLEY & McCLoy LLP

One Chase Manhattan Plaza

New York, NY 10005

(212) 530-5000

JAY IL. ALEXANDER

MILBANK, TWEED,

HADLEY & McCCLoy LLP

1850 K Street, N.W.

Washington, D.C. 20006

(202) 835-7500

Counsel for Respondents