Examining Subject-Matter Jurisdiction over Declaratory Judgment Claims Filed in Combination with Patent Infringement Claims under Section 271(e)(2)(A)

• Author: Kenneth L. Dorsney
• Pages: 149-174

149

Stephen R. Auten and Jane S. Berman, Taft Stettinius & Hollister LLP.

chapter 8

Examining Subject-Matter

Jurisdiction over Declaratory

Judgment Claims Filed in

Combination with Patent

Infringement Claims under

Section 271(e)(2)(A)

I. Introduction

Patent owners filing patent infringement complaints against filers of

Abbreviated New Drug Applications (ANDAs) often present claims seeking

declaratory judgment of patent infringement under 35 U.S.C. §271(a), (b),

and/or (c) of the Patent Act, in combination with their claims for infringe-

ment of the same patent under §271(e)(2)(A) arising out of the filing of

the ANDA. Courts have varied in their treatment of motions to dismiss

such declaratory judgment claims on grounds of lack of subject-matter

jurisdiction or failure to state a claim upon which relief can be granted.

This chapter summarizes current case law regarding subject-matter juris-

diction over declaratory judgment claims presented in such circumstances,

and provides strategies for patent infringement plaintiffs and defendants

to consider in connection with declaratory judgment claims presented in

combination with §271(e)(2)(A) infringement claims.

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CHAPTER 8

150

II. Background on Subject-Matter Jurisdiction

over Declaratory Judgment Claims

The Declaratory Judgment Act provides: “In a case of actual controversy

within its jurisdiction . . . any court of the United States . . . may declare

the rights and other legal relations of any interested party seeking such

declaration, whether or not further relief is or could be sought.”1 Jurisdic-

tion is proper only where “the facts alleged, under all the circumstances,

show that there is a substantial controversy, between parties having

adverse legal interests, of sufficient immediacy and reality to warrant the

issuance of a declaratory judgment.”2 Under this “all the circumstances”

test, courts have “unique and substantial discretion in deciding whether to

declare the rights of litigants.”3

“[D]istrict courts possess discretion in determining whether and when

to entertain an action under the Declaratory Judgment Act, even when

the suit otherwise satisfies subject matter jurisdictional prerequisites.”4

Even if a plaintiff has alleged facts sufficient to establish a justiciable

controversy, a court may decline declaratory judgment jurisdiction as a

matter of discretion.5 A district court, when deciding whether to exercise

its discretion, should determine whether hearing the case would “serve the

objectives for which the Declaratory Judgment Act was created.”6 The pur-

pose of such “discretion to the district court is to enable the court to make a

reasoned judgment whether the investment of judicial time and resources

in a declaratory action will prove worthwhile in resolving a justiciable

dispute.”7 Situations that justify exercise of the court’s discretion to issue

a declaratory judgment include “(1) when the judgment will serve a useful

purpose in clarifying and settling the legal relations in issue, and (2)when

it will terminate and afford relief from the uncertainty, insecurity, and

controversy giving rise to the proceeding.”8

Practitioners will recognize the difficulty of predicting whether subject-

matter jurisdiction exists in these instances, and whether it will, if found,

be exercised:

1. 28 U.S.C. § 2201(a).

2. MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007) (citing Md. Cas. Co. v.

Pac. Coal & Oil Co., 312 U.S. 270, 273 (1941)).

3. Id. at 136 (internal citations omitted).

4. Wilton v. Seven Falls Co., 515 U.S. 277, 282 (1995).

5. See Micron Tech., Inc. v. Mosaid Techs., Inc., 518 F.3d 897, 902 (Fed. Cir. 2008) (citing

Wilton, 515 U.S. at 289).

6. Id. (citation omitted).

7. Minn. Mining & Mfg. Co. v. Norton Co., 929 F.2d 670, 672 (Fed. Cir. 1991).

8. Id. at 672–73 (quoting

E. BORCHARD, DECLARATORY JUDGMENTS

299 (2d ed. 1941)).

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