Prasco v. Medicis: CAFC Draws a Line in the Sand

The Declaratory Judgment Act forms one of the most active pieces of legislation in patent litigation, and enables potential patent infringers to launch a “pre-emptive strike” on patent owners by filing a declaratory infringement suit. The central question that courts often face in declaratory actions is whether there exists an “actual controversy” which is sufficient and real enough to warrant relief under the Declaratory Judgment Act. In January 2007, the Supreme Court substantially lowered the required standing threshold for bringing a declaratory suit in Medimmune v. Genentech. No longer did a declaratory plaintiff have to show a “reasonable apprehension of suit” to obtain standing; instead, the relevant inquiry became “whether the facts alleged, under all the circumstances, show that there is a substantial controversy between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” In the declaratory judgment cases that followed, the Federal Circuit recognized the Supreme Court's rejection of its sole “reasonable apprehension of suit” test and began to expand the threshold for establishing the requisite “actual controversy.” This “actual controversy” requirement of the Declaratory Judgment Act is used to satisfy the “cases and controversies” requirement of Article III of the Constitution.