LOURIE, Circuit Judge.
GAF Building Materials Corporation appeals from the decision of the United States District Court for the Northern District of Texas dismissing its declaratory judgment action for lack of subject matter jurisdiction. GAF Bldg. Materials Corp. v. Elk Corp., No. 3:94-2517 (N.D.Tex. Aug. 29, 1995). Because no actual case or controversy existed when GAF filed its action, we affirm.
In October 1993, Elk Corporation of Dallas received a Notice of Allowance from the United States Patent and Trademark Office ("PTO") for its pending design patent application directed to a laminated asphalt roofing shingle. Elk paid the issue fee on November 17, 1993. On December 8, 1993, Elk sent GAF a letter asserting that GAF's sales of its roofing shingle would "constitute an infringement of Elk Corporation's forthcoming United States design patent." In its letter, Elk demanded that GAF "cease and desist from all infringing activities with respect to this United States design patent when issued." In response, on January 13, 1994, GAF filed a civil action in the District of New Jersey alleging that Elk's design patent was "about to issue" and seeking, inter alia, a declaratory judgment that the "patent" was invalid and not infringed.
The relevant Design Patent 344,144 issued on February 8, 1994. That same morning Elk sued GAF for patent infringement in the Northern District of Texas. Later that day, GAF amended its complaint in the District of New Jersey to allege that Elk's design patent had issued. GAF did not move for permission to file this supplemental pleading as required by Fed.R.Civ.P. 15(d).
In December 1994, Elk counterclaimed in the New Jersey action for infringement of the '144 patent. In addition, Elk moved to dismiss GAF's declaratory judgment action for lack of subject matter jurisdiction. GAF responded that jurisdiction was proper under 28 U.S.C. § 1338 (1994). The court granted Elk's motion, holding that there was no actual case or controversy, and thus no subject matter jurisdiction, because the '144 patent had not issued when the suit was commenced. The court further held that the subsequent issuance of the patent after the
Following the transfer, the United States District Court for the Northern District of Texas severed Elk's infringement counterclaim and consolidated it with Elk's separately filed infringement action. The court then entered a final decision dismissing GAF's declaratory judgment action for lack of subject matter jurisdiction, based on the law of the case doctrine. GAF appeals from that final decision.
We have jurisdiction to determine whether the district court
As the district court recognized, "[t]he existence of an actual controversy is an absolute predicate for declaratory judgment jurisdiction." Spectronics Corp. v. H.B. Fuller Co., 940 F.2d 631, 633-34, 19 USPQ2d 1545, 1547 (Fed.Cir.), cert. denied, 502 U.S. 1013, 112 S.Ct. 658, 116 L.Ed.2d 749 (1991); see 28 U.S.C. § 2201(a) (district court may grant declaratory relief "[i]n a case of actual controversy within its jurisdiction").
We normally apply a two-part test to determine whether an "actual controversy" exists in an action for declaratory judgment of patent invalidity or noninfringement:
Jervis B. Webb, 742 F.2d at 1398-99, 222 USPQ at 949 (citations omitted).
GAF argues that these requirements were satisfied when it filed its declaratory judgment action. GAF had a reasonable apprehension of suit, it contends, because Elk's December 1993 letter asserted that GAF's sales of its product would "constitute an infringement of Elk Corporation's forthcoming United States design patent" and demanded that GAF "cease and desist from all infringing activities." GAF points out that Elk had received a Notice of Allowance from the PTO and had paid the issue fee; thus, all that remained was the issuance of the patent. Furthermore, there is no dispute that GAF was manufacturing and marketing the accused product and apparently continues to do so now.
We agree that when GAF commenced the declaratory judgment action it had a reasonable apprehension that it would be sued for patent infringement. Elk's December 1993
The Supreme Court has articulated basic principles for determining whether a dispute presents a justiciable case or controversy:
Aetna Life Ins., 300 U.S. at 240-41, 57 S.Ct. at 464 (citations omitted).
Using these guidelines, it is clear that GAF's complaint did not present a justiciable case or controversy under Article III and § 2201 when it was filed. The complaint alleged a dispute over the validity and infringement of a possible future patent not then in existence. The district court did not know with certainty whether a patent would issue or, if so, what legal rights it would confer upon Elk.
We therefore hold that a threat is not sufficient to create a case or controversy unless it is made with respect to a patent that has issued before a complaint is filed. Thus, the district court correctly held that there was no justiciable case or controversy in this case at the time the complaint was filed. See Spectronics, 940 F.2d at 636, 19 USPQ2d at 1549 ("[T]he existence of issued patent claims, presently enforceable against [the declaratory judgment plaintiff], are a
GAF contends, however, that the issuance of the '144 patent cured any jurisdictional defect. We disagree. "[L]ater events may not create jurisdiction where none existed at the time of filing." Spectronics, 940 F.2d at 635, 19 USPQ2d at 1548. Rather, "[t]he presence or absence of jurisdiction must be determined on the facts existing at the time the complaint under consideration was filed." Arrowhead Indus. Water, Inc. v. Ecolochem, Inc., 846 F.2d 731, 734 n. 2, 6 USPQ2d 1685, 1687 n. 2 (Fed.Cir.1988). It is undisputed that the '144 patent had not issued when the original complaint was filed; GAF's complaint stated as much. The subsequent issuance of the '144 patent did not cure this jurisdictional defect.
GAF also apparently contends that it cured the absence of subject matter jurisdiction by amending its complaint after the patent issued. GAF relies on district court decisions in which copyright plaintiffs were permitted to amend their complaints to allege the registration of their copyrights, although no registrations existed at the time the original complaints were filed. E.g., Frankel v. Stein and Day, Inc., 470 F.Supp. 209, 212-13 n. 2 (S.D.N.Y.1979), aff'd, 646 F.2d 560 (2d Cir.1980) (table). These authorities, apart from being nonbinding on us, are unpersuasive. As explained above, there was no jurisdiction when GAF filed its original complaint. Also, GAF never moved to supplement its pleadings as required by Fed. R.Civ.P. 15(d).
GAF also argues that our decision in Exxon Chemical Patents, Inc. v. Lubrizol Corp., 935 F.2d 1263, 19 USPQ2d 1061 (Fed.Cir. 1991), supports its position that the issuance of the '144 patent cured any jurisdictional defect. We disagree. Exxon's complaint in that case alleged that the relevant patent had issued the day the complaint was filed. Lubrizol challenged jurisdiction on the ground that the patent did not legally issue on the day alleged, since the PTO did not sign and seal the patent until some time after the Official Gazette announced that it had issued. Applying the well-pleaded complaint rule, we held that the trial court correctly assumed jurisdiction under 28 U.S.C. § 1338, because Exxon's complaint nonfrivolously alleged the existence of an issued patent. 935 F.2d at 1265, 19 USPQ2d at 1063. Here, in contrast, GAF's complaint did not allege that a patent had issued and in fact alleged that a patent was "about to issue," i.e., had not issued. Thus, the Exxon decision does not help GAF.
Finally, GAF contends that if the New Jersey district court lacked subject matter jurisdiction, it should have dismissed rather than transferred the case. See Atlantic Ship Rigging Co. v. McLellan, 288 F.2d 589, 590-91 (3d Cir.1961). Even if GAF is correct,
We have considered GAF's remaining arguments but find them unpersuasive.
GAF's declaratory judgment action did not satisfy the actual case or controversy requirement for federal jurisdiction and the New Jersey district court thus lacked subject matter jurisdiction. Accordingly, we affirm the Texas district court's decision dismissing the case.
(1) A mistake on the part of the [Patent] Office;
(2) A violation of § 1.56 or illegality in the application;
(3) Unpatentability of one or more claims;
(4) For interference; or
(5) For abandonment to permit consideration of an information disclosure statement under § 1.97 in a continuing application." 37 C.F.R. § 1.313(b) (1994).
Thus, it is not disputed that most applications in which the issue fee has been paid issue as patents. The possibility that Elk's application might have been withdrawn from issue for one of the above reasons therefore did not undermine GAF's "reasonable apprehension" that Elk would sue it for infringement if it continued to market the accused product.