Declaratory Judgment Act
The Declaratory Judgment Act provides that in a case of actual controversy within its jurisdiction, any court of the United States may declare the rights of any interested party seeking such a declaration, regardless of whether or not further relief is or could be sought. A defendant’s patent attorney that files a motion to dismiss under Fed. R. Civ. P. 12(b)(1) tests the subject matter jurisdiction of the court to determine if there is an actual controversy. The plaintiff, through their patent attorney, bears the burden of establishing the court’s jurisdiction over plaintiff’s matter. A Rule (12(b)(1) motion will be granted, if the patent attorney’s complaint, when considered in its entirety, and on its face, fails to allege facts sufficient to establish subject matter jurisdiction. Alternatively, the patent attorney for the defendant may seek dismissal under Rule 12(b)(1) by presenting evidence to refute the jurisdictional facts alleged in the complaint. Once the defendant, through his/her patent attorney, introduces such evidence, the plaintiff, through his/her patent attorney, must then furnish affidavits or other evidence necessary to satisfy its burden of establishing subject matter jurisdiction.
Jurisdiction is proper only where facts introduced by a patent attorney, under all of the circumstances, shows there is a substantial controversy between the parties. Under this “all the circumstances test” parties patent attorneys will ask the court to decide the rights of the litigants based on the courts unique and substantial discretion. Prior to MedImmune, the Federal Circuit required a patent attorney demonstrate on behalf of their client that the conduct by the patentee created a reasonable apprehension’ of suit on the part of the declaratory judgment plaintiff and present activity by the declaratory judgment plaintiff that could constitute infringement or meaningful preparation to conduct potentially infringing activity. As of most recent, a patent attorney moving on behalf of their client for a declaratory judgment under MedImmune must show (1) an affirmative active by the patentee related to the enforcement of his patent rights; and (2) meaningful preparation to conduct potentially infringing activity.