Legal Blogging (Patent)
6/11/2008 7:32:01 AM EST
Immediacy and Reality Prerequisites for a Declaratory Judgment of Non-Infringement: Cat Tech LLC v. Tubemaster, INC., 2008 U.S. App. LEXIS 11377 (Fed. Cir. May 28, 2008)
Cat Tech LLC v. Tubemaster, INC. involved a method for using loading devices to place catalyst particles into multi-tube chemical reactors and whether the defendant’s loading device configurations infringed upon the patent in suit. Because the defendant’s loading devices were customized based upon the dimensions of each customer's reactor, it did not manufacture its devices until it received an order from a customer specifying the appropriate dimensions. In response to the plaintiff’s infringement claim, the defendant counterclaimed, seeking a declaration that its devices did not infringe. In issuing a judgment of non-infringement, the district court held that a "live controversy" existed because the defendant was prepared to produce devices using the configurations as soon as it received an order with the appropriate dimensions. On appeal, the United States Court of Appeals for the Federal Circuit affirmed the judgment of non-infringement, holding that an actual controversy existed under the Declaratory Judgment Act. The court held that constitutionally mandated immediacy requirements had been satisfied because once the threat of liability to the plaintiff was lifted, it appeared likely that the defendant could expeditiously solicit and fill orders for loading devices using its configurations. The court also held that the dispute met the constitutionally mandated "reality" requirements because it appeared likely that, once the cloud of liability for infringement was eliminated, the accused products could be produced without significant design change.
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