Conduct that can be reasonably inferred as demonstrating intent to enforce a patent is required to establish declaratory judgment jurisdiction

Asia Vital Components Co. v. Asetek Danmark A/S, No. 2015-1597 (Fed. Cir. Sep. 8, 2016)

The alleged infringer filed a declaratory judgment action against the patentee, asserting that its products did not infringe and that the patents-at-issue were invalid. The patentee claimed that it never accused the specific products of infringement and that it was unaware of the existence of the alleged infringer’s products prior to the filing of the complaint. The district court agreed with the patentee, dismissing the case for lack of subject matter jurisdiction and finding that no substantial controversy existed between the parties.

On appeal, the Federal Circuit reversed and remanded. It held that the totality of circumstances indicated that an actual controversy existed between the parties at the time of the declaratory judgment complaint. The Federal Circuit explained that jurisdiction does not turn on the patentee’s knowledge of or infringement accusations about the particular products at issue. Rather, to establish declaratory judgment jurisdiction, “the question is whether, under all the circumstances, [the patentee’s] actions can be reasonably inferred as demonstrating intent to enforce a patent.” In this instance, the conduct of the patent owner plainly demonstrated an intent to enforce its patents. The patentee’s conduct supporting that conclusion included extensive letters regarding the patents and alleged threats to the accused infringers’ customers regarding the patents-at-issue.