Allied Mineral Products, Inc. v. OSMI, Inc., No. 16-2641 (Fed. Cir. 2017)Annotate this Case
Stellar and Allied are American companies. Stellar sent Allied's Mexican distributors notice letters accusing them of infringing Stellar’s Mexican Patent. Allied manufactures the accused products in the U.S., which are then sold in Mexico by the distributors. Allied sells the same product in the U.S. under a different name. Allied’s U.S. counsel responded to Stellar’s notice letters on behalf of the distributors, arguing that the products did not infringe. Stellar did not respond but filed infringement actions in Mexico. Allied then sought a declaratory judgment against Stellar in the Southern District of Florida, of non-infringement, invalidity, unenforceability due to inequitable conduct, and tortious interference with business relationships. The district court dismissed for lack of subject matter jurisdiction, stating: “Stellar’s decision to enforce its Mexican patent under Mexican law against separate entities cannot, without further affirmative action by Stellar, create an actual controversy with Allied with regard to its U.S. Patent,” and that the complaint was “devoid of any allegations that Stellar has done anything to give Allied a reasonable belief that Stellar intends to enforce its 974 Patent in the United States.” The Federal Circuit affirmed. Stellar’s actions do not create a justiciable case or controversy.