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CAFC Updates


By May 20, 2022No Comments

Mitek sought a declaratory judgment that Mitek and its customers have not infringed, either directly or indirectly, any valid and enforceable claim of USAA’s U.S. Patent Nos. 8,699,779, 9,336,517, 8,977,571, and  9,818,090 relating to the use of a mobile device to capture an image of a bank check and to transmit it for deposit. In response, USAA sought dismissal of the complaint on the grounds that there was no case or controversy (lack of subject-matter jurisdiction), and  transfer of the case to Texas. The case was transferred, and the Texas court dismissed for want of a case or controversy and stated that, even if jurisdiction existed, it would exercise its discretion to decline to entertain the declaratory-judgment action. Mitek appeals. The CAFC finds that the district court’s reasoning for dismissal was not sufficiently complete, noting that there must be allegations by the patentee or other record evidence that establish at least a reasonable potential that infringement claims against Mitek could be brought, which requires separate consideration of the separate types of infringement (notably, direct infringement, inducement of infringement, and contributory infringement). Also, because the district court did not give reasons for its discretionary dismissal independent of its reasons for its jurisdictional dismissal, further analysis of why those reasons make it appropriate to decline to entertain the claim for declaratory relief as a matter of discretion is needed. Accordingly, the CAFC vacates the district court’s dismissal for lack of subject-matter jurisdiction, as well as its alternative discretionary dismissal, and remands.

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