Patent Law Blog (Patently-O): Declaratory Judgment Jurisdiction Denied in Biotech Research Patent Case: "Benitec’s infringement suit against Nucleonics was derailed by several factors. Perhaps most critically, the Supreme Court’s Merck v. Integra decision expanding the research exemption of 271(e)(1) left Benitec with no viable infringement claim. Benitec voluntarily dismissed its claims against the defendant Nucleonics and also issued a covenant not to sue for Nucleonics current activities. (Covenant submitted within its appeal opposition brief).
In the meantime, Nucleonics had filed declaratory judgment counterclaims — asserting invalidity and unenforceability. Nucleonics wants the patent invalidated to remove any investor concerns regarding future products. On appeal, the CAFC determined whether DJ jurisdiction still exists in this case.
The Supreme Court’s jurisdiction requires “a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” MedImmune.
DJ jurisdiction clearly existed at the time of filing. However, when the controversy disappears, so does jurisdiction. Here, the CAFC found that the controversy was gone and that Nucleonics “future work” was too speculative and might not be infringing anyway."