'Competing Patents' Not Sufficient To Confer DJ Jurisdiction

Article by Amanda L. Lutz*

This article previously appeared in Last Month at the Federal Circuit Newsletter, July 2011

Judges: Rader, Clevenger, Linn (author)

[Appealed from S.D. Fla., Judge Gold]

In Creative Compounds, LLC v. Starmark Laboratories, No. 10-1445 (Fed. Cir. June 24, 2011), the Federal Circuit affirmed the district court's grant of SJ of infringement and validity with regard to one patent, but reversed a determination of DJ jurisdiction over a competing patent. The Court also vacated the district court's invalidity determination as to the competing patent due to lack of jurisdiction, but affirmed the Court's denial of leave to amend an unclean hands defense.

Creative Compounds, LLC ("Creative") and Starmark Laboratories ("Starmark") are competitors, having independently patented similar formulations of creatine, an amino acid derivative that is naturally present in muscle tissue. Creatine is a central component of the metabolic system. Creatine is commonly used by bodybuilders looking for a steroid-free way of improving athletic performance. The patents relate to creatine formulations that increase the bioavailability of creatine. Starmark's U.S. Patent No. 7,109,373 ("the '373 patent") is directed to creatine salts comprising two molecules of creatine acid and one molecule of dicarboxylic acid. Creative's U.S. Patent No. 7,129,273 ("the '273 patent") is directed to dicreatine malate compounds, unlike Starmark's '373 patent, which claims a genus of possible creatine salts.

Creative's '273 patent issued approximately one month after Starmark's '373 patent issued. After receiving a notice of allowance for the '373 patent, Starmark's predecessor, SAN Corporation ("SAN"), mailed letters to purchasers of dicreatine malate compounds to advise the industry that its '373 patent would soon issue. Creative viewed SAN's letters as threatening and mailed its own letters to the industry regarding the soon-to-issue '273 patent for dicreatine malate compounds. In addition to advising the industry that it received a notice of allowance for the '273 patent, Creative included a letter from its patent counsel that stated that, "[e]ven if SAN is correct that a patent will issue from its application, the ['373] patent will not be enforceable because of [Creative's] prior inventions and work." Slip op. at 6 (third alteration in original). Although SAN did not receive Creative's letters, it heard about them when its customers refused to license the...