OCTOBER TERM, 1992
certiorari to the united states court of appeals for the federal circuit
No. 92-114. Argued March 3, 1993—Decided May 17, 1993
Since its 1987 decisions in Vieau v. Japax, Inc., 823 F. 2d 1510, and Fonar
Corp. v. Johnson & Johnson, 821 F. 2d 627, the Court of Appeals for the Federal Circuit, which has exclusive jurisdiction over appeals from all Federal District Courts in patent litigation, has followed the practice of routinely vacating declaratory judgments regarding patent validity following a determination of noninfringement of the patent. Adhering to that practice in this and a similar case brought by respondent, the Federal Circuit affirmed the District Courts' findings that the particular defendants had not infringed respondent's two patents on chemical compounds used in polyvinyl chloride, and then vacated the entry of judgments, on the defendants' counterclaims, declaring the patents invalid. A third such case is still pending. Petitioners, the alleged infringers in this case, sought certiorari on the ground that the Federal Circuit has erred in applying a per se rule to what should be a discretionary matter. Respondent did not oppose the grant of certiorari, but instead pointed out that it also has an interest in having the validity issue adjudicated, in that its patents have been effectively stripped of any power in the marketplace by the Federal Circuit's refusals of substantive review on the two invalidity findings.
Held: The Federal Circuit's affirmance of a finding that a patent has not been infringed is not per se a sufficient reason for vacating a declaratory judgment holding the patent invalid. Pp. 89-103. (a) The Vieau and Fonar opinions indicate that the practice of vacating such declaratory judgments is limited to cases in which the Federal Circuit is convinced that the finding of noninfringement has entirely resolved the controversy between the litigants by resolving the initial complaint brought by the patentee. The Federal Circuit has concluded that in such cases the declaratory judgment is "moot" in a jurisdictional sense, a conclusion that it considers dictated by this Court's earlier opinions in Electrical Fittings Corp. v. Thomas & Betts Co., 307 U. S. 241, and Altvater v. Freeman, 319 U. S. 359. Pp. 89-92. (b) While both Electrical Fittings and Altvater are consistent with the Federal Circuit practice at issue, neither case required it. Electrical Fittings did not involve a declaratory judgment, and Altvater does
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