Cardinal Chemical Co. v. Morton Int'l, Inc., 508 U.S. 83, 8 (1993)

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84

CARDINAL CHEMICAL CO. v. MORTON INT'L, INC.

Syllabus

not necessarily answer the question whether, in the absence of an ongoing infringement dispute between the parties, an invalidity adjudication would be moot. Pp. 93-95. (c) This case did not become moot when the Federal Circuit affirmed the District Court's noninfringement finding. The practice at issue concerns the Federal Circuit's jurisdiction. Where, as here, the District Court has jurisdiction (established independently from its jurisdiction over the patentee's infringement charge) to consider an invalidity counterclaim, so does the Federal Circuit, which is not a court of last resort and is entitled to presume, absent further information, that federal jurisdiction continues. If, before the Federal Circuit had decided this case, either party had advised it of a material change in circumstances that entirely terminated their controversy, it would have been proper either to dismiss the appeal or to vacate the District Court's entire judgment. In fact, however, there was no such change. The Federal Circuit's decision to rely on one of two possible alternative grounds (noninfringement rather than invalidity) did not strip it of power to decide the second question, particularly when its decree was subject to review by this Court. Even if it may be good practice to decide no more than is necessary to determine an appeal, it is clear that the Federal Circuit has jurisdiction to review the declaratory judgment of invalidity. Accordingly, the practice at issue is not supported by Article III's "case or controversy" requirement. Pp. 95-98. (d) The Federal Circuit's practice cannot be supported on other grounds. Although the court's interest in the efficient management of its docket might support a rule requiring that the infringement issue always be addressed before validity, there are even more important countervailing concerns, including the successful litigant's interest in preserving the value of its hard-won declaratory judgment; the public's strong interests in the finality of judgments in patent litigation and in resolving validity questions; and the patentee's interests in having the validity issue correctly adjudicated and in avoiding the loss of its patent's practical value that may be a consequence of routine vacatur. The practice in question denies the patentee appellate review, prolongs the life of invalid patents, encourages endless litigation (or at least uncertainty) over the validity of outstanding patents, and thereby vitiates the rule announced in Blonder-Tongue Laboratories, Inc. v. University of Ill. Foundation, 402 U. S. 313. Pp. 99-102. (e) It would be an abuse of discretion not to decide the validity issue in this case. Although factors in an unusual case might justify the Federal Circuit's refusal to reach the merits of a validity determination, and that determination might therefore be appropriately vacated, neither the finding of noninfringement alone, nor anything else in the record,

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