## Facts

- SanDisk Corporation manufactured flash memory storage products and owned related patents.
- STMicroelectronics, Inc. entered the flash memory market and held a substantial portfolio of flash memory patents.
- ST initiated contact with SanDisk seeking a meeting to discuss a cross-license and identified multiple ST patents that “may be of interest” to SanDisk.
- During subsequent licensing discussions, ST presented detailed claim charts and an infringement analysis asserting that specific SanDisk products infringed specific claims of ST patents and sought a royalty-bearing license.
- At the same time, ST stated it had no plan or intention to sue SanDisk.
- SanDisk rejected the proposed license, asserted noninfringement and invalidity (and/or unenforceability), and filed declaratory judgment claims seeking declarations of noninfringement and invalidity for the identified ST patents.
- The district court dismissed the declaratory judgment claims for lack of subject-matter jurisdiction, applying the then-used “reasonable apprehension of suit” test.
- SanDisk appealed.

## Issues

1. Whether, after MedImmune, declaratory judgment jurisdiction in a patent dispute requires an “objectively reasonable apprehension of suit.”
2. Whether a patentee’s detailed infringement contentions and licensing demands, combined with statements disclaiming an intent to sue, can still create an Article III “actual controversy.”

## Decision

- The Federal Circuit vacated the dismissal and remanded.
- The court held that an “actual controversy” existed under Article III.
- The court ruled that the “reasonable apprehension of suit” requirement could not be treated as a mandatory prerequisite after MedImmune.
- Considering all the circumstances, ST’s conduct created a substantial, immediate, and real dispute regarding infringement and validity.

## Legal Principles

- Declaratory judgment jurisdiction turns on whether, under all the circumstances, there is a substantial controversy between parties with adverse legal interests of sufficient immediacy and reality to warrant declaratory relief.
- In patent cases, a declaratory judgment plaintiff need not show a standalone “reasonable apprehension of suit” as a jurisdictional requirement.
- A patentee’s detailed, product-specific infringement analysis and demand for a license can establish an actual controversy even if the patentee states it has no present plan to sue.
- A patentee cannot avoid declaratory judgment jurisdiction solely through careful assurances that omit an explicit threat of litigation while continuing to assert infringement.

## Conclusion

The Federal Circuit held that ST’s detailed infringement accusations and license demands, viewed in totality, created an immediate and real dispute over infringement and validity, so the district court had declaratory judgment jurisdiction despite ST’s statements that it did not intend to sue.


SanDisk Corp. v. STMicroelectronics, Inc., 480 F.3d 1372 (Fed. Cir. 2007)