Editing Declaratory judgment (section)

==Declaratory judgment actions in patent litigation==
Declaratory judgments are common in [[patent]] litigation, as well as in other areas of [[intellectual property]] litigation, because declaratory judgments allow an alleged infringer to "clear the air" about a product or service that may be a business's focal point.  For example, in a typical [[patent infringement|patent-infringement]] claim, when a patent owner becomes aware of an infringer, the owner can simply wait until he pleases to bring an infringement suit.<ref>But see 35 U.S.C. 286 (imposing a six-year time limitation on damages).</ref>  Meanwhile, the [[monetary damages]] continuously accrue – with no effort expended by the patent owner, apart from marking the patent number on products the patent owner sold or licensed.<ref>{{cite web|url=https://corporate.findlaw.com/intellectual-property/patent-marking-requirements-patented-articles-must-be-marked-as.html|title=Patent Marking Requirements: Patented Articles Must be Marked as Patented in Order For Patentee to Recover Damages Due to Patent Infringement|website=Findlaw}}</ref>  On the other hand, the alleged infringer could do nothing to rectify the situation if no declaratory judgment existed.  The alleged infringer would be forced to continue to operate his business with the cloud of a lawsuit over his head.  The declaratory-judgment procedure allows the alleged infringer to proactively bring suit to resolve the situation and eliminate the cloud of uncertainty looming overhead.

Common claims for declaratory judgment in patent cases are non-infringement, patent invalidity, and un-enforceability. To bring a claim for declaratory judgment in a situation where a patent dispute may exist or develop, the claimant must establish that an [[actual controversy]] exists.<ref>''MedImmune, Inc. v. Genentech, Inc.'', 549 U.S. 118, 126–27 (2007).</ref>  If there is a substantial controversy of sufficient immediacy and reality, the court will generally proceed with the declaratory-judgment action.<ref>''MedImmune, Inc. v. Genentech, Inc.'', 549 U.S. 118, 127 (2007).</ref> The court may even hear the action if the patentee has not filed a cease and desist letter.<ref>{{cite web |url=http://www.houstoninternetlaw.com/Cease%20and%20Desist.html |title=Cease and Desist Letter |publisher=Houstoninternetlaw.com |date=2008-09-23 |access-date=2012-06-13 |archive-url=https://web.archive.org/web/20110820171039/http://www.houstoninternetlaw.com/Cease%20and%20Desist.html |archive-date=August 20, 2011 |url-status=dead }}</ref>  The standard for an actual controversy was most recently addressed by the Supreme Court in ''[[MedImmune, Inc. v. Genentech, Inc.]]'', 549 U.S. 118 (2007).  But even if an actual controversy exists, the declaratory-judgment statute is permissive—a [[district court]], in its discretion, may decline to hear a declaratory-judgment action.<ref>''Grand T. W. R. Co. v. Consolidated Rail Corp.'', 746 F.2d 323, 325 (6th Cir. 1984) (“Title 28 of the United States Code § 2201 provides that in ‘a case of actual controversy within its jurisdiction’ a federal court ‘may’ give a declaratory judgment, a power permissive, not mandatory. Although it is well settled that the granting of a declaratory judgment rests in the "sound discretion" of the court”).</ref>

Usually the claimant is actually making, using, selling, offering to sell, or importing, or is prepared to actually make, use or sell, offer to sell or import an allegedly infringing device or method, and usually the patent owner has claimed that such activities by claimant will result in patent infringement.<ref>35 U.S.C. 271.</ref>  An express threat of litigation is not needed, nor is it a guarantee that jurisdiction will be granted.<ref>[http://www.houstoninternetlaw.com/Cease%20and%20Desist.html ''Grand T. W. R. Co. v. Consolidated Rail Corp.''] {{Webarchive|url=https://web.archive.org/web/20110820171039/http://www.houstoninternetlaw.com/Cease%20and%20Desist.html |date=August 20, 2011 }}, 746 F.2d 323, 325 (6th Cir. 1984).</ref>  Some factors courts have considered in this analysis are whether a patent owner has asserted its rights against an alleged infringer in a royalty dispute, whether the owner has sued a customer of an alleged infringer, or whether an owner has made statements regarding its patents in trade magazines.

If a patent owner does suggest that there is patent coverage of what an alleged infringer is doing or planning to do, the alleged infringer may bring suit.<ref name="cd1"/><ref name="cd2"/> The alleged infringer, as the plaintiff in the suit, can choose the venue subject to constitutional restrictions and the state long-arm statute of the forum in question. The suit can be brought in any forum if the local federal district court can properly obtain personal jurisdiction over the alleged infringer.

Defendants in infringement cases can ask for declaratory judgment as a counterclaim.

A counterclaim of infringement is a [[compulsory counterclaim]] to a claim for declaratory judgment of non-infringement.<ref>''Vivid Techs., Inc. v. Am. Sci. & Eng'g Inc.'', 200 F.3d 795, 802 (Fed. Cir. 1999)</ref> If a patent owner fails to assert an infringement counterclaim in a declaratory-judgment non-infringement suit, the patent infringement claim will be deemed waived.