No "Reasonable Apprehension of Suit" Where Patents Issued, Statements Made By Defendant and Previous Litigation
In a decision further defining what constitutes "reasonable apprehension of suit" sufficient to confer jurisdiction under the Declaratory Judgment Act, 28 U.S.C. 2201(a), the District Court held that the combination of the company's history of filing lawsuits not directly related to the patents-in-suit, a lawsuit brought by the declaratory judgment defendant against a former employee for trade secret misappropriation and statements made by the company during a quarterly earnings conference were not sufficient to create a reasonable apprehension of suit. Angiodynamics, Inc. v. Diomed Holdings, Inc., C.A. No. 06-02 (D. Del. Sept. 7, 2006) (Sleet, J.).
The Court followed the two-part test set forth in the Federal Circuit opinion Goodyear Tire & Rubber Co. v. Relasomers, Inc., 824 F.2d 953 (Fed. Cir. 1987) which requires: "(1) an explicit threat or other action by the patentee which creates a reasonable apprehension on the part of the declaratory judgment plaintiff that it will face an infringement suit; and (2) present activity by the declaratory judgment plaintiff which could constitute infringement, or concrete steps taken by the declaratory judgment plaintiff with the intent to conduct such activity." Angiodynamics, at 4. There was no dispute among the parties that the second requirement was satisfied. The Court then analyzed whether Angiodynamics met its burden of demonstrating under the totality of the circumstances a "reasonable apprehension of imminent suit." Id. First, the Court noted that although it is relevant to the analysis, previously filed lawsuits by the declaratory judgment defendant on patents other than the patent-in-suit, do not cause reasonable apprehension of suit. Judge Sleet then goes on to distinguish two Federal Circuit cases (Vanguard Research, Inc. v. PEAT, Inc. and Goodyear Tire & Rubber Co. v. Relasomers, Inc.) which held that prior lawsuits for trade secret misappropriation can create reasonable apprehension of suit. In both the Federal Circuit cases the lawsuits were filed against the declaratory judgment plaintiff, whereas here, the misappropriation actions were filed against a former employee of the declaratory judgment defendant. Finally, a statement made by the declaratory judgment defendant during a quarterly earnings call that the plaintiff's products are "embraced by" the patents-in-suit falls within those terms that the Federal Circuit has found insufficient to create a reasonable apprehension of suit.
Hopefully, this case will clarify for potential declaratory judgment plaintiffs just what does create a "reasonable apprehension of suit" if not by any other way than by telling us what does NOT constitute reasonable apprehension.