The 'Reasonable Apprehension of Suit' Prong of the Federal Circuit's Two-Part Test for Declaratory Judgment Jurisdiction

Posted: 22 Apr 2005

See all articles by Jay Dratler

Jay Dratler

University of Akron - School of Law


Almost from its inception, the Federal Circuit adopted a two-part test for justiciability of claims for declaratory judgments in patent cases. A declaratory plaintiff who would be the defendant in a patent infringement suit must: (1) have a reasonable apprehension of suit by the patentee, and (2) be engaging in or preparing for infringing activity. This piece examines the evident tension between the first prong of this test and the purpose of the Declaratory Judgment Act: allowing injured parties to force adjudication of uncertain rights when the holder of the alleged rights refuses to sue to enforce them.

The piece begins by examining the recent case of Teva Pharmaceuticals USA, Inc. v. Pfizer Inc. There a three-judge panel of the Federal Circuit ruled, over a dissent by Chief Judge Meyer, that the Constitution requires this two-part test. After examining the case in detail, this piece concludes that the result in it - no jurisdiction - was unwarranted on the facts, inconsistent with the seminal Lear decision, and economically harmful.

This piece then examines the asserted basis for the decision: that the Constitution's case or controversy requirement precludes jurisdiction over claims for declaratory judgments against quiescent patentees. It examines the origins of the Federal Circuit's reasonable apprehension of suit prong and concludes that the test is an ipse dixit that nothing in the Constitution or precedent requires. The piece also reasons that the Federal Circuit's apparent motivation for the test - preserving the patentee's litigation prerogatives and a sense of fairness in litigation - has little or nothing to do with the Constitution's case or controversy requirement. The piece concludes that the reasonable apprehension of suit test is not required by the Constitution and is inconsistent with the letter and spirit of the Declaratory Judgment Act.

Keywords: declaratory judgment, justiciability, case or controversy, patent, drug, pharmaceutical, Federal Circuit, reasonable apprehension

JEL Classification: K21, K22, L12, O32, O34, O38

Suggested Citation

Dratler, Jay, The 'Reasonable Apprehension of Suit' Prong of the Federal Circuit's Two-Part Test for Declaratory Judgment Jurisdiction. Available at SSRN:

Jay Dratler (Contact Author)

University of Akron - School of Law ( email )

150 University Ave.
Akron, OH 44325-2901
United States

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