by Jason Rantanen
Arkema v. Honeywell (Fed. Cir. 2013)
Panel: Dyk (author), Plager, O'Malley
In 2009, Honeywell sued Arkema in Germany for infringement of the European patent. Arkema responded with a declaratory judgment action in the US over two related patents. Those suits are still ongoing. In late 2011, the ‘120 and ‘882 patents issued and Arkema moved to amend its declaratory judgment complaint to allege non-infringement and invalidity of those patents, premised on a concern that it would be indirectly liable for its future customers' use of 1234yf. The district court refused to allow the amendment because it concluded that the Constitutionally mandated “case or controversy” that undergirds court power did not exist as to those new claims.
In a Rule 54(b) certified appeal, the Federal Circuit reversed the district court's denial of Arkema's motion to supplement its complaint, noting that "On its face, this is a quintessential example of a situation in which declaratory relief is warranted." Slip Op. at 9. The opinion sets out several useful points for evaluating declaratory judgment jurisdiction in an indirect infringement context post-MedImmune.
No noninfringing uses: Both parties admitted that there are no known methods of using 1234yf in an automobile air conditioning system that do not at least arguably infringe its patents. Given this, "there can hardly be any question that Arkema would arguably be liable for induced infringement if it sells 1234yf for use in automobile air conditioning systems. Where, as here, there is no dispute that the
intended use would be at least arguably infringing and actively encouraged by the declaratory judgment plaintiff, a controversy is “sufficiently real” for the purposes of declaratory judgment jurisdiction." Slip Op. at 13. The court further noted that it is not necessary for a party to concede infringement to demonstrate a justiciable controversy.