The phosita® blog notes perhaps the first dismissal of a declaratory judgment action following the Supreme Court’s decision in MedImmune.  In a dispute over U.S. Pat. No. 5,247,356, a patent involving photogrammetry*, a court in Minneapolis dismissed two counts seeking declaratory judgment of non-infringement and invalidity (Case 08–cv-00816).

[*Apparently, photogrammetry is the science of making reliable measurements by the use of photographs, espeially useful in aerial photography.]

Pictometry tried to get the case dismissed for lack of subject-matter jurisdiction arguing that Geospan has failed to state a case or controversy under Article III of the Constitution.  Geospan hit back saying that MedImmune and subsequent case law made the standard for declaratory judgment jurisdiction a very low hurdle to get over.

Apparently, the bar may be lower but not that low.  According to the ruling:

[A]lthough MedImmune lowers the bar for declaratory judgment jurisdiction, a substantial controversy is still required. In the post-MedImmune authorities relied on by [Plaintiff], a patentee has either demonstrated a preparedness to litigate against the prospective declaratory judgment plaintiff, accused the prospective declaratory judgment plaintiff of infringement, affirmatively asserted its rights to license fees, or engaged in some combination of all three. For example, in Micron Technology, Inc. v. MOSAID Technologies, Inc., 518 F.3d 897 (Fed. Cir. 2008), …

The instant case is distinguishable because [Defendant] has not demonstrated an intent to litigate against [Plaintiff], has not accused [Plaintiff] of infringement, and has not demanded licensing fees. There is no evidence that [Defendant] has pursued litigation against [Plaintiff].

It would appear that the court only needs to see a tiny hint of controversy, i.e., any one of the following:

  1. Patentee is ready to litigate;
  2. Accused the plaintiff of infringement; and/or
  3. Asserted its rights to license fees.

Despite the fact that this particular plaintiff failed in its quest to avoid declaratory judgment, there requirements seem to be quite thin for showing a substantial controversy exists and, hence, gaining subject matter jurisdiction.

See more here:

Despite the fact that this particular plaintiff failed in its quest to avoid declaratory judgment, the requirements seem to be quite thin for showing a substantial controversy exists and, hence, gaining subject matter jurisdiction.  Look for further clarification to come down the pike.

See more here:

MedImmune and Genentech Settle, Lawyers Look For New Topic of Discussion
Practical Implications of MedImmune
Supreme Court High-Fives MedImmune
MedImmune Asks: What’s A Patent Lawsuit Among Friends?

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    While not exactly the same, Benitec Australia, Ltd. v. Nucleonics, Inc. 495 F.3d 1340 (Fed. Cir. July 20, 2007) is an example of an earlier dismissal of dj counterclaims under MedImmune.

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