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Meaningful Preparation to Conduct Potentially Infringing Activity Required for Declaratory Judgment Jurisdiction


In Cat Tech LLC v. TubeMaster, Inc. (No. 07-1443, May 28, 2008), the Federal Circuit affirms a declaratory judgment of non-infringement as to three different configurations of a catalyst loading device which had yet to be manufactured by TubeMaster. The district court granted TubeMaster's motion for declaratory judgment of non-infringement based on a finding of a "live controversy" because TubeMaster had designed the configurations and was ready to produce the configurations upon receipt of an order.

A declaratory judgment plaintiff must show "meaningful preparation to conduct potentially infringing activity" to satisfy the immediacy and reality requirements for a declaratory judgment. The fundamental inquiry is whether, under all the circumstances, there exists a substantial controversy of sufficient immediacy and reality to warrant the issuance of a declaratory judgment. MedImmune, Inc. v. Genentech, Inc, 549 U.S. 118 (2007), eliminated the requirement of a reasonable apprehension of suit but did not change the importance of meaningful preparation to engage in potentially infringing activity in the totality of circumstances. "If a declaratory judgment plaintiff has not taken significant, concrete steps to conduct infringing activity, the dispute is neither 'immediate' nor 'real' and the requirements for justiciability have not been met." The Federal Circuit agrees that the controversy here was sufficiently immediate where TubeMaster had developed and designed the configurations in question and was prepared to promptly produce the configurations when it received an order. Also, the controversy is deemed sufficiently real because the configuration designs were "substantially fixed" and could be used for production without significant modifications.


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Mark Supko
Partner – Washington, D.C.
Phone: +1 202.624.2734