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SanDisk Corp. v. STMicroelectronics, Inc.

United States Court of Appeals for the Federal Circuit

March 26, 2007, Decided

05-1300

Opinion

 [***1174]   [*1374]  LINN, Circuit Judge.

SanDisk Corporation ("SanDisk") appeals from a decision of the U.S. District Court for the Northern District of California granting STMicroelectronics' ("ST's") motion to dismiss SanDisk's second through twenty-ninth claims relating to declaratory judgment of noninfringement and invalidity for failure to present an actual controversy. See SanDisk Corp. v. STMicroelectronics, Inc., No. 04-CV-04379, 2005 U.S. Dist. LEXIS 44870 (N. D. Cal. Jan. 20, 2005). [**2]  Because the district court erred in dismissing the declaratory judgment claims for lack of subject matter jurisdiction, we vacate the judgment and remand the case to the district court. [***1175]  

I. BACKGROUND

SanDisk is in the flash memory storage market and owns several patents related to flash memory storage products. ST, traditionally in the market of semiconductor integrated circuits, more recently entered the flash memory market and has a sizeable portfolio of patents related to flash memory storage products. On April 16, 2004, ST's vice president of intellectual property and licensing, Lisa Jorgenson ("Jorgenson"), sent a letter to SanDisk's chief executive officer requesting a meeting to discuss a cross-license agreement. The letter listed eight patents owned by ST that Jorgenson believed "may be of interest" to SanDisk. SanDisk, 2005 U.S. Dist. LEXIS 44870 at *3; Letter from Jorgenson to SanDisk (Apr. 16, 2004). On April 28, 2004, SanDisk responded that it would need time to review the listed patents and would be in touch in several weeks to discuss the possibility of meeting in June.

On July 12, 2004, having heard nothing further from SanDisk, Jorgenson sent a letter to SanDisk [**3]  reiterating her request to meet in July to discuss a cross-license agreement and listing four additional ST patents that "may also be of interest" to SanDisk. SanDisk, 2005 U.S. Dist. LEXIS 44870 at *4; Letter from Jorgenson to SanDisk (July 12, 2004). On July 21, 2004, SanDisk's chief intellectual property counsel and senior director, E. Earle Thompson ("Thompson"), responded to ST's letter by informing Jorgenson of his "understanding that both sides wish to continue . . . friendly discussions" such as those between the business representatives in May and June. SanDisk, 2005 U.S. Dist. LEXIS 44870 at *4; Letter from Thompson to Jorgenson (July 21, 2004). The discussions of May and June that Thompson referred to were discussions among managers and vice presidents of SanDisk and ST at business meetings held on May 18, 2004, and June 9, 2004, to explore the possibility of ST's selling flash memory products to SanDisk. The business meetings were unrelated to any patents. Thompson also requested that Jorgenson join the next business meeting on August 5, 2005. On July 27, 2004, Jorgenson replied, again urging a meeting with Thompson, noting that it was "best to separate the business discussions from the patent license [**4]  discussions." SanDisk, 2005 U.S. Dist. LEXIS 44870 at *5; Letter from Jorgenson to Thompson (July 27, 2004).

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480 F.3d 1372 *; 2007 U.S. App. LEXIS 7029 **; 82 U.S.P.Q.2D (BNA) 1173 ***

SANDISK CORPORATION, Plaintiff-Appellant, v. STMICROELECTRONICS, INC., Defendant-Appellee, and STMICROELECTRONICS NV, Defendant.

Subsequent History: Rehearing denied by, Rehearing, en banc, denied by Sandisk Corp. v. STMicroelectronics, Inc., 2007 U.S. App. LEXIS 14506 (Fed. Cir., June 8, 2007)

Prior History:  [**1]  Appealed from: United States District Court for the Northern District of California. Judge Jeremy Fogel.

Sandisk Corp. v. Stmicroelectronics, 2005 U.S. Dist. LEXIS 44870 (N.D. Cal., Jan. 20, 2005)

Disposition: VACATED and REMANDED.

CORE TERMS

patent, declaratory judgment, license, infringement, patentee, district court, products, negotiations, declaratory judgment action, insured, actual controversy, presentation, rights, parties, reasonable apprehension, case or controversy, royalty, invalidity, settlement, licensee, E-mail, circumstances, declaration, cases, noninfringement, confidential, trademark, imminent, moot, file suit

Patent Law, Jurisdiction & Review, Standards of Review, Clearly Erroneous Review, De Novo Review, Subject Matter Jurisdiction, General Overview, Civil Procedure, Declaratory Judgments, Federal Declaratory Judgments, Constitutional Law, The Judiciary, Case or Controversy, Advisory Opinions, Declaratory Judgments, Discretionary Jurisdiction