On March 11, 2014, in Danisco US Inc. v.
Novozymes A/S, No. 2013-1214 (Fed. Cir.), the Federal
Circuit held that pre-issuance conduct can be considered when
determining whether a declaratory judgment defendant has instigated
a case of actual controversy. The Court reversed the district
court's order dismissing the Plaintiff's declaratory
judgment action for lack of subject matter jurisdiction finding
that the "totality of circumstances" including prior
litigation and actions taken before the USPTO, "establishe[d]
a justiciable controversy."
In this case, the parties (or their predecessors) had been
litigating other patent disputes since as early as 2001. The
instant dispute centered around Novozymes' U.S. Patent No.
8,252,573 and Danisco's U.S. Patent No. 8,084,240, which both
generally relate to BSG variant polypeptides. Prior to the
declaratory judgment suit in question, Novozymes had sought to have
an interference declared between one of its and Danisco's
pending
