Power or Prudence: Which Is It?


In limiting patent litigants’ access to the declaratory judgment remedy, the U.S. Court of Appeals for the Federal Circuit has primarily invoked the “actual controversy” requirement imposed by the U.S. Constitution and the federal Declaratory Judgment Act. However, an examination of Federal Circuit decisions and those of the district courts reveals that the courts have often confused, or blurred the distinction between, constitutional requirements and the discretion the Act affords the federal courts to decline to exercise jurisdiction. Specifically, the courts often attribute constitutional significance to factors that instead bear on policy.

It is important to distinguish between jurisdictional limits and policy considerations when deciding justiciability issues in patent cases. Misapplication of the law, or even mere imprecision in the allocation of jurisdictional and prudential considerations, engenders confusion among the affected parties – litigants and potential litigants – who then bear the costs of this confusion in the form of uncertainty, higher litigation expenses, and forgone opportunities. Furthermore, when the courts are attentive to the distinction between the jurisdictional and prudential bases for justiciability decisions, they are more likely to carefully evaluate the policy implications of those determinations. Litigants, in turn, will be motivated to provide courts with more careful analysis. The likely results include the development of better policy and improved judicial decisionmaking.


Intellectual Property Law | Jurisdiction

Date of this Version

September 2006