The bar for filing a DJ action is pretty low. A good case to consult if your client is considering one as it gives a nice walk-through of the MedImmune requirements for showing sufficient immediacy and reality.
Background / Facts: Honeywell and Arkema compete in the manufacture and sale of automotive refrigerants. Honeywell’s patents cover just about all methods of using 1234yf in automobile air conditioning systems. “The relevant facts are not in dispute. Arkema has concrete plans for offering [the patented refrigerant] 1234yf to automobile manufacturers for use in automobile air conditioning systems and now desires to enter into contracts with automobile manufacturers to supply 1234yf. However, if Honeywell’s view of its patent coverage prevails, then proceeding with its plans would expose Arkema to significant liability.”
Issue(s): Whether there is an Article III case or controversy between Arkema and Honeywell regarding infringement and validity that is “of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007).
Holding(s): Yes. “On its face, this is a quintessential example of a situation in which declaratory relief is warranted.” (1) It is not necessary that a patent holder make specific accusations against either the potential direct or indirect infringers. “There is no requirement that Arkema identify the particular manufacturers that will purchase the 1234yf or the particular automobile purchasers who will purchase the cars from the manufacturers, or the particular dates on which this will occur. Nor is it necessary that Honeywell have directly accused Arkema of potential indirect infringement.” (2) All potential uses at least arguably infringe. “Where, as here, there is no dispute that the intended use would be at least arguably infringing and actively encouraged by the declaratory judgment plaintiff, a controversy is ‘sufficiently real’ for the purposes of declaratory judgment jurisdiction.” (3) The plaintiff’s need for a declaratory judgment clarifying its rights is sufficiently immediate. “This is not a case where the declaratory judgment plaintiff alleged only that it would ‘consider’ potentially infringing activities. Rather, Arkema alleges a present intent to supply automobile manufacturers in the United States with 1234yf for potentially infringing uses.” (4) The design of the products is sufficiently fixed. “This is not a situation in which there is uncertainty about whether the supplier’s product is going to be used in a way that might or might not infringe the patentee’s rights. … Any uncertainty concerning the precise parameters under which automobile manufacturers will use 1234yf is irrelevant because Honeywell’s patents are not limited to a particular set of parameters.”