96
Opinion of the Court
oclean threat with a sheathed sword. . . . Before the Act, competitors victimized by that tactic were rendered helpless and immobile so long as the patent owner refused to grasp the nettle and sue. After the Act, those competitors were no longer restricted to an in terrorem choice between the incurrence of a growing potential liability for patent infringement and abandonment of their enterprises; they could clear the air by suing for a judgment that would settle the conflict of interests. The sole requirement for jurisdiction under the Act is that the conflict be real and immediate, i. e., that there be a true, actual 'controversy' required by the Act." Arrowhead Industrial Water, Inc. v. Ecolochem, Inc., 846 F. 2d 731, 734-735 (CA Fed. 1988) (citations omitted).
Merely the desire to avoid the threat of a "scarecrow" patent, in Learned Hand's phrase,18 may therefore be sufficient to establish jurisdiction under the Declaratory Judgment Act. If, in addition to that desire, a party has actually been charged with infringement of the patent, there is, necessarily, a case or controversy adequate to support jurisdiction of a complaint, or a counterclaim, under the Act. In this case, therefore, it is perfectly clear that the District Court had jurisdiction to entertain Cardinal's counterclaim for a declaratory judgment of invalidity.
It is equally clear that the Federal Circuit, even after affirming the finding of noninfringement, had jurisdiction to consider Morton's appeal from the declaratory judgment of invalidity. A party seeking a declaratory judgment of invalidity presents a claim independent of the patentee's charge of infringement. If the District Court has jurisdiction (established independently from its jurisdiction over the patentee's charge of infringement) to consider that claim, so does (barring any intervening events) the Federal Circuit.
18 Bresnick v. United States Vitamin Corp., 139 F. 2d 239, 242 (CA2 1943).
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