Panavise Products v. National Products (08-1444)
Panavise sought a declaratory judgment action against NPI regarding invalidity, unenforceability and non-infringement of U.S. Patent No. 6,666,420. However, Panavise’s request was denied by the district court because of a lack of subject matter jurisdiction.
On appeal, the Federal Circuit affirmed the district court’s decision because Panavise failed to demonstrate that, under the totality of the circumstances, a substantial controversy exists between Panavise and NPI. Although NPI had initiated at least six separate lawsuits against various entities alleging infringement of the ‘420 patent, that by itself was not enough to demonstrate the existence of a substantial controversy between Panavise and NPI.
The court reiterated that “prior litigious conduct is one circumstance to be considered in assessing whether the totality of circumstances creates an actual controversy… However, there are many other circumstances that must also be considered. In this case, the prior lawsuits in which NPI asserted the ‘420 patent concern different products. Panavise does not argue or present any evidence to shown that its Model 811 Series device is similar to any of those accused products. The mere allegation [by Panavise] that the Model 811 ‘potentially’ infringes the ‘420 patent falls short of satisfying Panavise’s burden of proof. Therefore, the fact that NPI routinely enforces its patent rights, when viewed under the totality of the circumstances in this case, is insufficient to create an actual controversy and establish subject matter jurisdiction.”