The plaintiff filed a declaratory judgment action alleging inequitable conduct, non-infringement, and invalidity of the patentee’s patent. The district court dismissed the case because the patentee’s actions did not create a justiciable case or controversy. The Federal Circuit affirmed.
The patentee filed suit in Mexico on its Mexican patent against some of the plaintiff’s distributors. The plaintiff–an American company–manufactured the products accused of Mexican patent infringement in the United States, which were then distributed and sold by other companies in Mexico. The patentee sent a notice letter to the plaintiff’s distributors alleging infringement of its Mexican patent. The plaintiff’s United States counsel responded on behalf of the distributors by arguing that its products did not infringe the Mexican patent. The patentee never responded to the plaintiff and filed suit in Mexico against the distributors. The plaintiff then filed a declaratory judgment action in the United States regarding the patentee’s similar U.S. patent. The district court dismissed because the complaint was “devoid of any allegations that Stellar has done anything to give [the plaintiff] a reasonable belief that [the patentee] intends to enforce [its U.S. patent] in the United States.”
On appeal, the Federal Circuit agreed that the totality of the circumstances in this case did not rise to the level of a case of actual controversy because the patentee has not directed any actions toward the plaintiff, nor did it litigate or threaten litigation in the United States or on its U.S. patent. Moreover, the patentee never made a veiled threat of litigation against the plaintiff, did not have any direct communication with the plaintiff, and did not have a history of litigating its patents in the United States, which supported the Federal Circuit’s decision.