IP News

In Micron Tech., Inc. v. Mosaid Techs., Inc., 2007-1080 (Fed. Cir. Feb. 29, 2008), the Federal Circuit reversed and remanded the Northern District of California's dismissal of Micron's declaratory judgment action, holding that a real case and controversy existed between the parties and that the district court should have considered the 'convenience factors' found in a 28 U.S.C. '1404(a) transfer analysis before exercising its discretionary powers to dismiss the action. Micron is one of four major dynamic random access memory chip (DRAM) manufacturers, while Mosaid is an owner of a number of DRAM patents, many of which it licenses to the DRAM producers. Between June 2001 and July 2002, Mosaid sent several strongly worded letters to Micron, and other DRAM manufacturers, suggesting that it license Mosaid's technology. After none of the major DRAM manufacturers took licenses, Mosaid began enforcing its patents in court. By April 6, 2005 Mosaid had sued, and subsequently settled with, all of the major DRAM manufacturers except Micron. After each settlement and license agreement, Mosaid issued public statements that it intended to pursue an aggressive strategy against the remaining DRAM manufacturers. On July 24, 2005, Micron filed a declaratory action in the Northern District of California seeking a declaration of noninfringement of 14 Mosaid patents. The very next day, Mosaid filed an infringement action against Micron in the Eastern District of Texas, which, after an amendment to the complaint, involved ten patents and three defendants in addition to Micron. However, it did not involve six patents for which Micron sought declaratory relief.

Pursuant to a motion by Mosaid, the Northern District of California dismissed the declaratory action, finding no reasonable apprehension of suit. The district court also held that even if subject matter jurisdiction were established, it would exercise its discretion and still decline to hear the case.