Case: Danisco US Inc. v. Novozymes A/S, No. 2013-1214 (Fed. Cir. Mar. 11, 2014) (precedential). On appeal from N.D. Cal. Before Lourie, Proust, and O’Malley.

Procedural Posture: Plaintiff appealed dismissal of declaratory judgment action for lack of subject matter jurisdiction. CAFC reversed and remanded.

  • Subject Matter Jurisdiction: Plaintiff filed its action for declaratory judgment for noninfringement and invalidity on the day defendant’s patent issued; defendant had not affirmatively accused plaintiff of patent infringement. The district court erred as a matter of law in finding that conduct prior to the issuance of defendant’s patent could not satisfy the requirement of an affirmative act of enforcement or some implied or express enforcement threat. The Supreme Court’s flexible totality of the circumstances test only requires that, between parties having adverse legal interests, there be a substantial controversy of sufficient immediacy to warrant a declaratory judgment. Lack of an affirmative act by the defendant is not dispositive; the question instead is whether the plaintiff demonstrated a “substantial risk” that harm would occur. Defendant’s activities, including a history of patent litigation against plaintiff concerning technologies and products related to the subject matter of its latest patent, showed “a preparedness and willingness to enforce its patent rights.” This is enough to establish subject matter jurisdiction. Additionally, because the dismissal of the third count seeking a declaration of priority was premised on the dismissal of the other counts as nonjusticiable, that judgment was also vacated and remanded.