787 F.2d 572 (Fed. Cir. 1986), 85-2744, International Medical Prosthetics Research Associates, Inc. v. Gore Enterprise Holdings, Inc.

Docket Nº:Appeal No. 85-2744.
Citation:787 F.2d 572
Party Name:229 U.S.P.Q. 278 INTERNATIONAL MEDICAL PROSTHETICS RESEARCH ASSOCIATES, INC., d/b/a IMPRA, Inc., Appellant, v. GORE ENTERPRISE HOLDINGS, INC., and W.L. Gore and Associates, Inc., Appellees.
Case Date:April 01, 1986
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 572

787 F.2d 572 (Fed. Cir. 1986)

229 U.S.P.Q. 278

INTERNATIONAL MEDICAL PROSTHETICS RESEARCH ASSOCIATES, INC.,

d/b/a IMPRA, Inc., Appellant,

v.

GORE ENTERPRISE HOLDINGS, INC., and W.L. Gore and

Associates, Inc., Appellees.

Appeal No. 85-2744.

United States Court of Appeals, Federal Circuit

April 1, 1986

Page 573

Gerald D.W. North, McCabe, Polese & Pietzsch, P.A., Phoenix, Ariz. argued, for appellant. With him on the brief, were James F. Polese, McCabe, Polese & Pietzsch, P.A., Phoenix, Ariz., Dale M. Heist, Woodcock, Washburn, Kurtz, Mackiewicz & Norris, Philadelphia, Pa., and Thomas S. Howard, Chicago, Ill.

David H. Pfeffer, Morgan, Finnegan, Pine, Foley & Lee, New York City, argued, for appellee. With him on the brief, were Arnold I. Rady, Janet Dore and Bartholomew Verderame, Morgan, Finnegan, Pine, Foley & Lee, New York City, and John S. Campbell, W.L. Gore & Associates, Inc., Newark, Del.

Before MARKEY, Chief Judge, NIES and NEWMAN, Circuit Judges.

MARKEY, Chief Judge.

International Medical Prosthetics Research Associates, Inc. (IMPRA) appeals from a judgment of the United States District Court for the District of Arizona dismissing IMPRA's complaint as not within its subject matter jurisdiction. The judgment was entered in response to a motion filed under Rule 12(b) by Gore Enterprise Holdings, Inc. and W.L. Gore Associates, Inc. (Gore), challenging IMPRA's complaint for declaratory judgment of invalidity of Gore-owned Patent No. 3,953,566 ('566 patent) for failure of IMPRA to establish existence of an actual controversy. We vacate and remand.

Background

This appeal represents one of many sideline skirmishes between the parties to an eleven-year corporate confrontation over the use of a process for producing porous articles of polytetrafluoroethylene (PTFE) and the marketing of products produced of PTFE. 1 In April 1984, Gore sued IMPRA for infringement of Gore's U.S. Patent No. 4,187,390 ('390 patent) directed to a product formed of PTFE.

In February 1985, IMPRA filed a complaint seeking a declaratory judgment that Gore's '566 patent was invalid. The '566 patent is directed to a process for producing PTFE. In March 1985, the court consolidated the two actions. Between April 1984 and September 1985, the parties' pre-trial activities produced 782 entries in the trial court's docket.

Asserting that it has not charged IMPRA with infringement of its '566 patent, Gore moved under Rule 12(b) for dismissal of IMPRA's declaratory judgment complaint, asserting inter alia the absence of an actual controversy and thus a lack of subject matter jurisdiction. 2 The district court granted the motion and IMPRA appealed.

Issue

Whether the district court erred in granting the motion for dismissal.

Page 574

(1) The Case

The present appeal presents a scenario that, it can be fervently hoped, will occur less frequently in future. Though the district court entered no findings or conclusions on a large number of allegations and assertions, the parties have elected to burden this court with arguments thereon, in a false and improper expectation that we will find the facts necessary to support their respective positions. Each charges the other with impropriety respecting the record and the appendices.

The case is unusual on its facts. The district court had cited to and apparently relied on Jervis B. Webb Co. v. Southern Systems, Inc., 742 F.2d 1388, 222 USPQ 943 (Fed.Cir.1984). Like the more "normal" case, Jervis B. Webb Co. involved one action, a patentee's suit for infringement of only six claims, and the defendant's counterclaim for a declaration that all twelve claims of the patent were invalid. In the present case two patents, the '390 patent claiming a product and the '566 patent claiming a process for making the product, issued as a result of a single patent application. The patentee, Gore, sued IMPRA on the former but not on the latter, and IMPRA says it seeks to settle the entire controversy by obtaining a declaration that the '566 patent is invalid, fearing a Pyrric victory if it wins the suit on the '390 patent but must then face a lawsuit on the '566 patent. 3

(2) The Grant of the Motion

On July 8, 1985, in granting Gore's motion to dismiss, the district court said:

Well, I'm going to grant the motion to dismiss on the basis of lack of subject matter jurisdiction. I think the other bases are good, really, in proper [sic] service, venue, indispensable party, but those can really be cured by the the [sic] counterclaim, but the basis is the lack of subject matter jurisdiction.

On July 9, 1985, following a hearing on a different motion in the consolidated case, counsel engaged in this colloquy with the court about the July 8 dismissal:

Mr. North: [IMPRA's counsel] So the holding was that we didn't allege that we made an infringing product, and my argument to you was that...

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