SanDisk v. STMicroeletronics Announces A “Sweeping Change” To The Declaratory Judgment Standard In Patent Cases

A recent Federal Circuit decision, SanDisk Corp. v. STMicroelectronics, Inc., announced a new declaratory judgment standard in patent cases, expanding the rights of potential licensees to file preemptive complaints against patent owners.

The result, as Judge Bryson observed in a concurring opinion, may “effect a sweeping change in our law regarding declaratory judgment jurisdiction.” In fact, Judge Bryson saw “no practical stopping point short of allowing declaratory judgment actions in virtually any case in which the recipient of an invitation to take a patent license elects to dispute the need for a license and then to sue the patentee.” The boundaries of declaratory judgment jurisdiction will be clarified in future patent cases, but in the wake of the Supreme Court’s April 2007 decision in KSR v. Teleflex, which altered the standards for obviousness, potential licensees may attempt to file declaratory judgment cases challenging patents that they do not yet practice.