Dismissal of Patent Infringement Claims Coupled With Covenant Not to Sue Leads to Dismissal of Declaratory Judgment Invalidity Claims

Case: Benitec Australia, LTD. v. Nucleonics, Inc. (Fed. Cir. No. 06-1122, July 20, 2007)

The One Sentence Summary: Dismissal of declaratory relief counterclaims for patent invalidity was appropriate where plaintiff had dismissed infringement claims and covenanted not to sue.



Federal Circuit Holdings:

• A party seeking to base jurisdiction on the Declaratory Judgment Act bears the burden of proving that the facts alleged, under all the circumstances, show that there is a substantial controversy, between the parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.
• Dismissal of declaratory judgment counterclaims was appropriate where plaintiff had dismissed its patent infringement claims and covenanted not to sue defendant and defendant was years away from filing an ANDA application.