## Facts

- Morton International owned two patents covering chemical compounds used in polyvinyl chloride (PVC).
- Morton sued Cardinal Chemical Company and related companies for patent infringement in federal district court.
- Cardinal denied infringement and counterclaimed for declaratory judgments that the patents were invalid.
- The district court found no infringement and entered declaratory judgments holding the patents invalid.
- On appeal, the Federal Circuit affirmed the noninfringement judgment and then vacated the invalidity judgments under a categorical practice treating the invalidity counterclaims as moot once noninfringement was affirmed.
- Cardinal sought Supreme Court review, arguing that vacatur should not be automatic and that validity remained justiciable despite noninfringement.
- Morton did not oppose review and asserted it also had an interest in appellate resolution of validity because repeated vacaturs left the patents commercially impaired but unresolved.

## Issues

1. Whether affirmance of a finding of noninfringement automatically moots a properly presented declaratory judgment counterclaim of patent invalidity.
2. Whether a court of appeals may adopt a per se rule of vacating a district court’s invalidity judgment whenever it affirms noninfringement.
3. Whether prior Supreme Court precedent required mandatory vacatur of invalidity judgments in these circumstances.

## Decision

- The Supreme Court vacated the Federal Circuit’s judgment and remanded.
- The Court held that affirmance of noninfringement is not, by itself, a sufficient reason to vacate a declaratory judgment holding a patent invalid.
- The Court rejected the Federal Circuit’s view that noninfringement necessarily moots the invalidity counterclaim in a jurisdictional sense.
- The Court concluded that neither Article III nor the Declaratory Judgment Act required automatic avoidance of validity once noninfringement was found.
- The Court determined that the precedents cited by the Federal Circuit did not compel a mandatory vacatur rule.
- The Court recognized appellate discretion to decline validity review in appropriate cases but disapproved a categorical rule eliminating case-specific judgment.
- A concurrence agreed that the per se vacatur practice was erroneous and that remand was required, while emphasizing restraint and case-management considerations.

## Legal Principles

- A declaratory judgment counterclaim challenging patent validity can remain a live Article III controversy even after a determination of noninfringement.
- A court of appeals may not treat noninfringement as automatically rendering validity “moot” so as to require routine vacatur of invalidity judgments.
- Prior decisions addressing infringement/validity sequencing do not establish a mandatory rule requiring appellate vacatur of a declaratory judgment of invalidity after noninfringement.
- Appellate courts retain discretion, guided by case-specific considerations, to decide whether to reach validity; that discretion cannot be replaced with a per se vacatur policy.
- When validity has been fully litigated and remains relevant to the parties’ continuing interests, resolving validity can serve judicial administration by reducing uncertainty and repeat litigation.

## Conclusion

The Court held that noninfringement does not automatically moot an accused infringer’s declaratory judgment counterclaim of patent invalidity, and the Federal Circuit may not routinely vacate invalidity judgments solely because it affirms noninfringement; validity review must be handled through case-specific appellate discretion consistent with Article III and the Declaratory Judgment Act.


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