Sandisk Corporation v STMicroelectronics Inc
82 U.S.P.Q.2d 1173, 480 F.3d 1372 (Fed. Cir. 2007)
Description: The Federal Circuit creates a new declaratory judgment standard in patent cases.
Facts
• Sandisk and STM are competitors in the flash memory market and both own patents relating to flash-memory storage products.
• Sandisk and STM began discussion on cross-licensing their patents.
• During the discussions, STM told Sandisk it had no intentions of suing Sandisk, but gave Sandisk an infringement analysis of Sandisk’s products.
• After the cross-licensing discussions broke down, Sandisk filed a lawsuit, claiming that STM infringed one of its patents and seeking declaratory judgment of noninfringement and invalidity of fourteen STM patents.
• STM filed a motion to dismiss the claims for declaratory judgment for lack of subject matter, alleging that no actual controversy existed because Sandisk did not have objectively reasonable basis for believing it would be sued.
Procedural History
• The District Court granted STM’s motion to dismiss several Sandisk’s claims for failure to present an actual controversy because STM told Sandisk it had no intentions of suing it.
• The Federal Circuit vacated the District Court’s granting of STM’s motion to dismiss and remanded the case for further proceedings.
Holding
• The Federal Circuit held that the US Supreme Court overruled the “reasonable apprehension of suit†test in MedImmune. In creating a new test, the Federal Circuit stated “Article III jurisdiction may be met where the patentee takes a position that puts the declaratory judgment plaintiff in the position of either pursuing arguably illegal behavior or abandoning that which he claims he as a right to do.â€
Important Dicta
• In dicta, the Federal Circuit stated a potential licensee does not need to perform the infringing act before filing a declaratory judgment suit.
Critical Analysis
• STM’s statements that it had no plans to sue Sandisk did not eliminate the controversy between STM and Sandisk because STM showed a willingness to enforce its patent rights by giving Sandisk an infringement analysis of Sandisk’s products.
Importance of Decision or Unanswered Questions
• As noted in the concurring opinion by Judge Bryson, Sandisk creates a broader standard for declaratory judgment. As a result, potential defendants may file declaratory judgment suits to invalidate patents that they plan to practice in the future.
82 U.S.P.Q.2d 1173, 480 F.3d 1372 (Fed. Cir. 2007)
Description: The Federal Circuit creates a new declaratory judgment standard in patent cases.
Facts
• Sandisk and STM are competitors in the flash memory market and both own patents relating to flash-memory storage products.
• Sandisk and STM began discussion on cross-licensing their patents.
• During the discussions, STM told Sandisk it had no intentions of suing Sandisk, but gave Sandisk an infringement analysis of Sandisk’s products.
• After the cross-licensing discussions broke down, Sandisk filed a lawsuit, claiming that STM infringed one of its patents and seeking declaratory judgment of noninfringement and invalidity of fourteen STM patents.
• STM filed a motion to dismiss the claims for declaratory judgment for lack of subject matter, alleging that no actual controversy existed because Sandisk did not have objectively reasonable basis for believing it would be sued.
Procedural History
• The District Court granted STM’s motion to dismiss several Sandisk’s claims for failure to present an actual controversy because STM told Sandisk it had no intentions of suing it.
• The Federal Circuit vacated the District Court’s granting of STM’s motion to dismiss and remanded the case for further proceedings.
Holding
• The Federal Circuit held that the US Supreme Court overruled the “reasonable apprehension of suit†test in MedImmune. In creating a new test, the Federal Circuit stated “Article III jurisdiction may be met where the patentee takes a position that puts the declaratory judgment plaintiff in the position of either pursuing arguably illegal behavior or abandoning that which he claims he as a right to do.â€
Important Dicta
• In dicta, the Federal Circuit stated a potential licensee does not need to perform the infringing act before filing a declaratory judgment suit.
Critical Analysis
• STM’s statements that it had no plans to sue Sandisk did not eliminate the controversy between STM and Sandisk because STM showed a willingness to enforce its patent rights by giving Sandisk an infringement analysis of Sandisk’s products.
Importance of Decision or Unanswered Questions
• As noted in the concurring opinion by Judge Bryson, Sandisk creates a broader standard for declaratory judgment. As a result, potential defendants may file declaratory judgment suits to invalidate patents that they plan to practice in the future.