D. Delaware Discusses Requirements of Declaratory Judgment Act in Patent Cases

Per Czarnik v. Illumina, Inc., 437 F. Supp. 2d 252 (D. Del. July 13, 2006):

Plaintiff contends that the Court should issue a declaratory judgment that Defendant's U.S. patents and pending patent applications are unenforceable due to inequitable conduct. The Court concludes, however, that it lacks jurisdiction to consider Plaintiff's claims for declaratory judgments of unenforceability. The Declaratory Judgment Act "requires an actual controversy between the parties before a federal court may exercise jurisdiction." 28 U.S.C. § 2201(a); EMC Corp. v. Norand Corp., 89 F.3d 807, 810 (Fed.Cir.1996). In patent cases, an actual controversy exists when there is both "(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 which could constitute infringement or concrete steps taken with the intent to conduct such activity." Gen-Probe, Inc. v. Vysis, Inc., 359 F.3d 1376, 1380 (Fed.Cir.2004) [internal citation omitted]. Plaintiff lacks any reasonable apprehension of being sued. Furthermore, Plaintiff has not alleged that he is participating in any activity that could be considered infringement. Accordingly, the Court concludes that there is no actual controversy relating to Plaintiff's claims for declaratory judgment of unenforceability. [A] judgment that a future patent was invalid or not infringed would be hypothetical and would have no legal effect or meaning. GAF Bldg., Materials Corp. v. Elk Corp., 90 F.3d 482 (Fed.Cir.1996). For all the reasons discussed above, the Court will dismiss all of Plaintiff's claims for declaratory judgments of unenforceability.