3M Co. v. Avery Dennison Corp.

United States Court of Appeals
for the Federal Circuit
__________________________

3M COMPANY,
Plaintiff-Appellant,
v.
AVERY DENNISON CORPORATION,
Defendant-Appellee,
__________________________

2011-1339
__________________________

Appeal from the United States District Court for the
District of Minnesota in Case No. 10-CV-3849, Chief
Judge Michael J. Davis.
____________________________

Decided: March 26, 2012
____________________________

JOHN A. DRAGSETH, Fish & Richardson, P.C., of Min-
neapolis, Minnesota, argued for plaintiff-appellant. With
him on the brief were JOHN C. ADKISSON and DEANNA J.
REICHEL. Of counsel on the brief was KEVIN H. RHODES,
3M Innovative Properties Company, of St. Paul, Minne-
sota.

DAVID L. BILSKER, Quinn Emanuel Urquhart & Sulli-
van, LLP, of San Francisco, California, argued for defen-
dant-appellee. With him on the brief were CHARLES K.
3M COMPANY v. AVERY DENNISON CORP 2

VERHOEVEN, CHRISTOPHER E. STRETCH, EMILY C. O’BRIEN;
and JAMES E. BAKER, of New York, New York.
__________________________

Before RADER, Chief Judge, and LOURIE and LINN, Circuit
Judges.
LOURIE, Circuit Judge.
3M Company (“3M”) appeals from the district court’s
dismissal of its declaratory judgment action against Avery
Dennison Corporation (“Avery”) for lack of a case or
controversy. See 3M Co. v. Avery Dennison Corp., No.
0:10-CV-3849, 2011 WL 1193382 (D. Minn. Mar. 29, 2011)
(“DJ Op.”). Because we hold that the district court erred
in determining that it would not have jurisdiction under
the facts as alleged by 3M, and the district court did not
resolve the parties’ factual disputes necessary to deter-
mine if jurisdiction was proper, we vacate the district
court’s judgment and remand for further proceedings.
BACKGROUND
I.
This patent case relates to retroreflective sheeting
technology, which is used in a variety of applications,
such as road signs. Complaint, 3M Co. v. Avery Dennison
Corp., No. 0:10-CV-3849 (D. Minn. Sept. 3, 2010) (“Com-
plaint”). 1 3M and Avery are direct competitors in the
retroreflective sheeting product market. Id. at 2–3.
Since 2005, 3M has manufactured and sold retroreflective
sheeting under the Diamond Grade DG3 product line. Id.

1 Because the district court did not resolve the par-
ties’ factual disputes and instead concluded that subject
matter jurisdiction was lacking even under the facts
alleged by 3M, we rely on the facts alleged in 3M’s com-
plaint for the purposes of this appeal.
3 3M COMPANY v. AVERY DENNISON CORP

at 3. Avery sells a competing product sold under the
OmniCube brand. Id. 3M’s declaratory judgment action
puts at issue two patents that relate to retroreflective
sheeting technology, specifically U.S. Patents RE40,455
and RE40,700 (collectively, the “Heenan patents”). Id. at
4, 6; see also id. at Ex. 1 and Ex. 2.
The parties have a history of patent litigation, start-
ing in 2001. That year, Avery sued 3M and alleged that a
prior version of the Diamond Grade DG3 product infringed
two patents not at issue here. Id. at 4. In addition to
retroreflective sheeting, the parties were engaged in a
series of litigations relating to structured adhesive prod-
ucts and closure tape tab laminates in the United States
and Europe. Id. at 4–5.
Those litigations settled by 2008. Id. In the course of
settling those cases, 3M and Avery engaged in confiden-
tial settlement discussions. Id. at 7. 3M alleges that
those confidential discussions did not relate to the
Heenan patents or any retroreflective sheeting products.
Id.
It was during the settlement discussions relating to
the structured adhesive products and closure tab tape
laminates disputes that 3M became aware that Avery was
prosecuting reissue applications for the Heenan patents
before the U.S. Patent and Trademark Office (“PTO”). Id.
at 6. According to 3M, “Avery sought reissuance of the
Heenan patents in an effort to correct errors in the pat-
ents and to better position the patents for litigation.” Id.
The parties’ discussions regarding the Heenan pat-
ents began in 2009. 2 On March 31, 2009, Avery’s Chief

2 In its complaint, 3M also alleged that during set-
tlement negotiations it became aware that Avery was
monitoring the launch of the Diamond Grade DG3 product
and that Avery had examined the product in comparison
3M COMPANY v. AVERY DENNISON CORP 4

Intellectual Property Counsel, Raj Sardesai, telephoned
3M’s Chief Intellectual Property Counsel, Kevin Rhodes.
Id. at 7. In that conversation, Sardesai stated that 3M’s
Diamond Grade DG3 sheeting products “may infringe” the
Heenan patents and that “licenses are available.” Id.
Two days later, Rhodes telephoned Sardesai and in-
formed him that 3M had rejected Avery’s offer to license
the Heenan patents. Id. Rhodes also inquired if Avery
had any new information that would cause 3M to revisit
its decision. Id. Sardesai responded that Avery had
performed an analysis of 3M’s Diamond Grade DG3 prod-
uct with reference to the Heenan patents and that Avery
would “send claim charts.” Id. Avery, however, never
provided 3M with claim charts. Id. The Heenan patents
emerged from reissue proceedings by April 2009. Id. at
Ex. 1 and Ex. 2.
II.
In 2010, 3M became aware that Avery planned to
launch a competing retroreflective sheeting product, the
OmniCube T-11500. Id. at 8. That same year, Avery filed
another patent infringement suit against 3M, alleging
that an unrelated product, 3M’s label sheets, infringed an
Avery patent not at issue in this case. Id. On June 25,
2010, 3M filed a patent infringement suit against Avery,
alleging that the OmniCube T-11500, in addition to other
products, infringed thirteen 3M patents. Id. at 9. In-
cluded in the complaint were counts for a declaratory
judgment of noninfringement, invalidity, and intervening

to the Heenan patents’ claims. Id. at 6. Before the dis-
trict court, however, 3M conceded that conversations prior
to 2009 were covered by a confidentiality agreement that
precluded their use as a basis to support a declaratory
judgment action. See DJ Op., 2011 WL 1193382, at *4
n.2.
5 3M COMPANY v. AVERY DENNISON CORP

rights concerning the Heenan patents. Id. That same
day, Rhodes telephoned Sardesai and stated that 3M
would dismiss its declaratory judgment claims if Avery
provided 3M with a covenant not to sue. Id. Avery did
not respond. Id. 3M’s outside litigation counsel also
inquired if Avery planned to sue 3M for infringement of
the Heenan patents. Id. Avery’s counsel did not answer
3M’s question. Id.
In September, 3M amended its complaint and can-
celled its declaratory judgment claims. Id. at 10. At the
same time, 3M filed its declaratory judgment claims as a
new complaint in a separate action. Id. It is from that
separate action that 3M appeals.
Early in the case, Avery moved under Federal Rule of
Civil Procedure 12(b)(1) to dismiss 3M’s declaratory
judgment claims for lack of subject matter jurisdiction. In
its motion, Avery asserted a factual challenge to 3M’s
declaratory judgment complaint. DJ Op., 2011 WL
1193382, at *3; see also Cedars-Sinai Med. Ctr. v. Wat-
kins, 11 F.3d 1573, 1583–84 (Fed. Cir. 1993) (discussing
facial challenges and factual challenges to subject matter
jurisdiction under Federal Rule of Civil Procedure
12(b)(1)). The district court granted Avery’s motion but,
instead of resolving the disputed facts, concluded that
“even accepting the facts as set forth by 3M,” subject
matter jurisdiction did not exist at the time 3M filed its
declaratory judgment complaint. DJ Op., 2011 WL
1193382, at *4.
In dismissing 3M’s declaratory judgment action, the
district court gave a number of reasons why 3M failed to
allege a justiciable controversy. First, the court concluded
that “3M’s subjective belief as to Avery’s motives for
instituting reissue proceedings concerning the Heenan
patents is immaterial” because the jurisdictional inquiry
3M COMPANY v. AVERY DENNISON CORP 6

is objective. Id. at *5. Second, the court concluded that
the prior litigation between the parties did not support
declaratory judgment jurisdiction because it concerned
“unrelated patents and products.” Id. Third, the court
concluded that the discussions between Rhodes and
Sardesai did not create “‘a substantial controversy, be-
tween parties having adverse legal interests, of sufficient
immediacy and reality to warrant the issuance of a de-
claratory judgment.’” Id. (quoting MedImmune, Inc. v.
Genentech, Inc., 549 U.S. 118, 127 (2007)). The court
arrived at that conclusion because the parties engaged
only in informal discussions and Avery did not provide a
detailed infringement analysis or propose deadlines for
3M to respond. Id. Finally, the court concluded that the
passage of time between 3M’s discussions with Avery and
when 3M filed its declaratory judgment action counseled
against holding that the parties’ dispute was of sufficient
immediacy to warrant a declaratory judgment. Id. at *6.
The district court thereafter entered judgment against
3M, from which it timely appealed. We have jurisdiction
under 28 U.S.C. § 1295(a)(1).
DISCUSSION
I.
The Declaratory Judgment Act provides that, “In a
case of actual controversy within its jurisdiction . . . any
court of the United States . . . may declare the rights and
other legal relations of any interested party seeking such
declaration, whether or not further relief is or could be
sought.” 28 U.S.C. § 2201(a). The phrase “a case of actual
controversy” in the Act refers to the types of “cases” and
“controversies” that are justiciable under Article III of the
U.S. Constitution. Aetna Life Ins. v. Haworth, 300 U.S.
227, 239–40 (1937).
7 3M COMPANY v. AVERY DENNISON CORP

Although there is no bright line rule to determine
whether a declaratory judgment action satisfies Article
III’s case-or-controversy requirements, the dispute must
be “definite and concrete, touching the legal relations of
parties having adverse legal interests,” “real and substan-
tial,” and “admi[t] of specific relief through a decree of a
conclusive character, as distinguished from an opinion
advising what the law would be upon a hypothetical state
of facts.” MedImmune, 549 U.S. at 127 (quoting Aetna
Life, 300 U.S. at 240–41). “Basically, the question in each
case is whether the facts alleged, under all the circum-
stances, show that there is a substantial controversy,
between parties having adverse legal interests, of suffi-
cient immediacy and reality to warrant the issuance of a
declaratory judgment.” Id. (quoting Md. Cas. Co. v. Pac.
Coal & Oil Co., 312 U.S. 270, 273 (1941)).
Even if there is a case or controversy, “district courts
possess discretion in determining whether and when to
entertain an action under the Declaratory Judgment Act,
even when the suit otherwise satisfies subject matter
jurisdictional prerequisites.” Wilton v. Seven Falls Co.,
515 U.S. 277, 282 (1995). In this case, having concluded
that jurisdiction was lacking, the district court did not
reach the issue of whether it would exercise its discretion
to hear or dismiss 3M’s declaratory judgment claims.
In determining if an action presents a justiciable Arti-
cle III controversy, one typically employs the doctrines of
standing or ripeness. See MedImmune, 549 U.S. at 128
n.8. In this case, the parties frame the issue as a stand-
ing question.
“[T]he irreducible constitutional minimum of standing
contains three elements.” Lujan v. Defenders of Wildlife,
504 U.S. 555, 560 (1992). “First, the plaintiff must have
suffered an injury in fact—an invasion of a legally pro-
3M COMPANY v. AVERY DENNISON CORP 8

tected interest which is (a) concrete and particularized,
and (b) actual or imminent, not conjectural or hypotheti-
cal.” Id. (internal citations and quotations omitted).
“Second, there must be a causal connection between the
injury and the conduct complained of–the injury has to be
‘fairly . . . trace[able] to the challenged action of the
defendant . . . .’” Id. (quoting Simon v. E. Ky. Welfare
Rights Org., 426 U.S. 26, 41–42 (1976)). “Third, it must be
‘likely,’ as opposed to merely ‘speculative,’ that the injury
will be ‘redressed by a favorable decision.’” Id. at 561
(quoting Simon, 426 U.S. at 38, 43). Following MedIm-
mune, we have held that to establish an injury in fact
traceable to the patentee a declaratory judgment plaintiff
must allege an affirmative act by the patentee relating to
the enforcement of his patent rights. SanDisk Corp. v.
STMicroelecs., Inc., 480 F.3d 1372, 1380–81 (Fed. Cir.
2007)
“Whether an actual case or controversy exists so that
a district court may entertain an action for a declaratory
judgment of non-infringement and/or invalidity is gov-
erned by Federal Circuit law.” MedImmune, Inc. v. Cen-
tocor, Inc., 409 F.3d 1376, 1378 (Fed. Cir. 2005), overruled
on other grounds, MedImmune, 549 U.S. at 130-31. We
review de novo a district court’s dismissal of a patent
claim for lack of an actual controversy in light of a par-
ticular set of facts. See SanDisk Corp., 480 F.3d at 1377.
II.
As an initial matter, the parties dispute which facts
should be considered on appeal. Avery argues that,
because the district court did not resolve Avery’s factual
challenge to 3M’s complaint, it would be improper for this
court to determine the disputed facts in the first instance.
Specifically, Avery alleges that the district court failed to
resolve two key factual disputes: (1) whether 3M proved
9 3M COMPANY v. AVERY DENNISON CORP

that Sardesai stated that 3M “may infringe,” that “li-
censes are available,” and that Avery would “send claim
charts”; and (2) whether those conversations were subject
to a confidentiality agreement precluding their use as a
basis to support a declaratory judgment action. Thus,
argues Avery, even if the facts alleged by 3M support
finding a case or controversy, at most 3M is entitled to a
remand for the district court to resolve the parties’ factual
disputes and determine if jurisdiction is proper under
those facts.
3M responds that it would be improper to remand this
case for additional fact finding. Specifically, 3M argues
that it is “not truly disputed” what Sardesai communi-
cated to Rhodes over the telephone. Reply Br. 3M Co. at
24, 2011 WL 4071492. With that issue resolved, argues
3M, the facts show the existence of a case or controversy.
We agree with Avery that it is improper for us to de-
termine factual issues in the first instance on appeal. The
disputed facts in this case—the content of and confidenti-
ality of the discussions between Rhodes and Sardesai—
are central to the jurisdictional analysis. Thus, finding
those facts in the first instance would overstep our bounds
as a reviewing court and we cannot resolve the parties’
factual disputes on appeal. The case must therefore be
remanded.
III.
The district court held that it lacked jurisdiction be-
cause, even taking the facts alleged by 3M as true, there
was not a justiciable controversy between the parties. We
disagree. As discussed below, the facts alleged by 3M, if
true, would be sufficient to give rise to a case or contro-
versy under the Declaratory Judgment Act. However,
“[o]nce challenged, allegations alone are insufficient to
meet the complainant’s burden” to establish jurisdiction.
3M COMPANY v. AVERY DENNISON CORP 10

Cedars-Sinai, 11 F.3d at 1584. The district court must
satisfy itself that there is a factual basis for it to exercise
jurisdiction, and in doing so it “may review evidence
extrinsic to the pleadings, including affidavits and deposi-
tion testimony.” Id. The district court on remand must
find the salient facts and, after finding those facts, deter-
mine whether those facts support a conclusion that a case
or controversy between 3M and Avery exists.
Challenging the district court’s dismissal of its de-
claratory judgment action, 3M argues that all of the
circumstances demonstrate a substantial, real, and im-
mediate controversy between 3M and Avery. 3M specifi-
cally asserts that the 2009 discussions between Rhodes
and Sardesai demonstrate the existence of such a contro-
versy because, in those discussions, Avery accused a
specific 3M product of infringing the Heenan patents, 3M
denied infringement and refused to accept a license to the
Heenan patents, and Avery then stated that it would send
3M claim charts. In addition, 3M points to the parties’
history of patent litigation, Avery’s initiation of reissue
proceedings for the Heenan patents, and Avery’s refusal
to grant 3M a covenant not to sue. Finally, 3M argues
that the district court legally erred when it concluded that
the passage of time between the parties’ discussions and
3M’s filing of the declaratory judgment complaint coun-
seled against concluding that the parties’ dispute was real
and immediate.
Avery responds that the telephone conversations be-
tween Rhodes and Sardesai, even as alleged by 3M, were
informal, equivocal, and did not include any threat of
litigation. Regarding the surrounding circumstances,
Avery argues that 3M’s subjective fears based on Avery’s
decision to reissue the Heenan patents and its prior
litigation conduct in unrelated patent cases are irrelevant
to establishing declaratory judgment jurisdiction. Simi-
11 3M COMPANY v. AVERY DENNISON CORP

larly, Avery argues that its refusal to grant an uncondi-
tional and unconstrained covenant not to sue to 3M
cannot be used to manufacture declaratory judgment
jurisdiction. Finally, Avery argues that the district court
properly considered 3M’s more than one-year delay in
filing suit as weighing against finding a case or contro-
versy.
We agree with 3M that the facts alleged in its com-
plaint, if found by the district court on remand, would
demonstrate the existence of a case or controversy under
the Declaratory Judgment Act. To establish the existence
of a “definite and concrete” dispute, more is required than
“a communication from a patent owner to another party,
merely identifying its patent and the other party’s prod-
uct line.” Hewlett-Packard Co. v. Acceleron LLC, 587 F.3d
1358, 1362 (Fed. Cir. 2009). How much more is required
is determined on a case-by-case analysis. In Hewlett-
Packard, for example, we concluded that a case or contro-
versy existed based upon the patentee’s letters to the
declaratory judgment plaintiff that identified the patent
as “relat[ing]” to a specific product line, imposed two-week
deadlines to respond, and insisted that the declaratory
judgment plaintiff not file suit. Id. at 1362–63. And, of
course, if “a party has actually been charged with in-
fringement of the patent, there is, necessarily, a case or
controversy adequate to support [declaratory judgment]
jurisdiction.” Cardinal Chem. Co. v. Morton Int’l, 508
U.S. 83, 96 (1993).
Here, 3M’s complaint alleges facts indicating that
Avery effectively charged 3M with infringement of the
Heenan patents. According to 3M’s complaint, Avery’s
Chief Intellectual Property Counsel, Sardesai, telephoned
3M’s Chief Intellectual Property Counsel, Rhodes, and
expressly stated that a specific product, the Diamond
Grade DG3, “may infringe” the Heenan patents and that
3M COMPANY v. AVERY DENNISON CORP 12

“licenses are available.” Two days later, Rhodes tele-
phoned Sardesai and responded that 3M had rejected
Avery’s license offer. During that call, Sardesai re-
sponded that Avery had analyzed the Diamond Grade
DG3 with regard to the Heenan patents and that Avery
would provide 3M with claim charts.
Those communications, if found by the district court,
would be sufficient to constitute a case or controversy
between 3M and Avery. That Sardesai employed the term
“may infringe” instead of “does infringe” is immaterial in
light of his offer to license the Heenan patents, his repre-
sentation that Avery had analyzed the Diamond Grade
DG3, and his statement that claim charts would be forth-
coming. See Hewlett-Packard, 587 F.3d at 1362 (explain-
ing that the purpose of a declaratory judgment action
cannot be defeated by avoiding “magic words” and noting
that, post-MedImmune, it is implausible to expect that
correspondence from a patentee would “identify specific
claims, present claim charts, and explicitly allege in-
fringement”).
To counter 3M’s allegations, Avery, relying on our de-
cision in Innovative Therapies, Inc. v. Kinetic Concepts,
Inc., 599 F.3d 1377 (Fed. Cir. 2010), argues that the
communications were passing remarks made informally
over the telephone, not in a formal cease-and-desist letter
with prescribed deadlines, and that these facts weigh
against concluding that jurisdiction is proper. We dis-
agree. In Innovative Therapies, all communications
between the parties were initiated by an employee of the
declaratory judgment plaintiff and were directed to em-
ployees of the patentee who lacked relevant decision-
making authority and had not evaluated the potentially
infringing device. 599 F.3d at 1381. The district court
described the declaratory judgment plaintiff’s efforts as a
“sub rosa” effort to create jurisdiction, a conclusion we
13 3M COMPANY v. AVERY DENNISON CORP

affirmed, holding that “the indirection reflected in these
conversations did not produce a controversy of such
‘immediacy and reality’ as to require the district court to
accept declaratory judgment jurisdiction.” Id.
This case is markedly different from Innovative
Therapies. Under the facts alleged in this case, Sardesai
initiated the communications and, without provocation,
asserted Avery’s patent rights and represented that claim
charts were forthcoming. There is no allegation that
Sardesai, as Avery’s Chief Intellectual Property Counsel,
lacked the authority to make those assertions. Nor is
there any indication that the communications were part
of an attempt to manufacture jurisdiction by 3M.
Similarly, that Avery might not have imposed a dead-
line to respond in its communications does not weigh
against finding a case or controversy. While a patentee’s
imposition of a deadline is a circumstance to consider
under a MedImmune analysis, Hewlett-Packard, 587 F.3d
at 1362–63, we have found that declaratory judgment
jurisdiction existed in cases in which the patentee’s com-
munications did not impose strict deadlines, ABB Inc. v.
Cooper Indus., LLC, 635 F.3d 1345, 1348–49 (Fed. Cir.
2011); Ass’n for Molecular Pathology v. U.S. Patent &
Trademark Office, 653 F.3d 1329, 1345–46 (Fed. Cir.
2011) (“AMP”).
Here, after 3M denied infringement, it was Avery’s
turn to act—it represented that claim charts were forth-
coming—and, in that context, it would make little sense if
a deadline to respond were imposed on 3M. In addition,
by stating that it had analyzed the Diamond Grade DG3
and would send 3M claim charts, Avery perhaps signaled
its intent to escalate the dispute. Thus, the lack of dead-
lines in this case would not favor a conclusion that a case
or controversy is lacking.
3M COMPANY v. AVERY DENNISON CORP 14

The remaining circumstances would not strongly
weigh in either direction toward concluding that 3M has
proven the existence of a case or controversy. On the one
hand, while “[p]rior litigious conduct is one circumstance
to be considered,” a history of litigation “concerning
different products covered by unrelated patents is not the
type of pattern of prior conduct that makes reasonable an
assumption” that the patentee will file suit regarding a
new or different product. Prasco, LLC v. Medicis Pharm.
Corp., 537 F.3d 1329, 1341 (Fed. Cir. 2008); see also
Innovative Therapies, 599 F.3d at 1382. On the other
hand, there was much prior litigation between the parties
and one lawsuit was related to retroreflective sheeting
products. We note that the prior lawsuit, which Avery
filed over a decade ago and has long since been settled,
involved different products and patents from this case.
Thus, the prior litigious conduct is equivocal in resolving
the question.
We do agree with Avery that its decision to initiate re-
issue proceedings for the Heenan patents would not weigh
strongly in favor of finding a case or controversy. The
purpose of reissue proceedings is to correct errors in an
issued patent, In re Bennett, 766 F.2d 524, 528 (Fed. Cir.
1985) (en banc), and, in this case, even with the unrelated
litigation between the parties, there is no evidence that
an objective observer in 3M’s position would conclude that
Avery initiated reissue proceedings for the purpose of
bringing a lawsuit against 3M accusing the Diamond
Grade DG3 product of infringement.
We disagree, however, with Avery’s assertion that the
district court properly concluded that 3M’s delay in filing
suit weighed against finding subject matter jurisdiction in
this case. It is true that “[i]n many cases a controversy
made manifest by a patentee’s affirmative assertion of its
patent rights will dissipate as market players and prod-
15 3M COMPANY v. AVERY DENNISON CORP

ucts change.” AMP, 653 F.3d at 1346. But the passage of
time does not counsel against finding declaratory judg-
ment jurisdiction if “the relevant circumstances” sur-
rounding the patentee’s assertion of patent rights “have
not changed despite the passage of time.” Id. Indeed, in
AMP, we concluded that an over ten-year passage of time
between the patentee’s assertion of its rights and the
filing of a declaratory judgment action did not dissipate
the existing controversy. Id. In reaching that conclusion,
we explained that the patentee’s enforcement activity
caused the declaratory judgment plaintiff to cease per-
forming the accused activities, the parties had not altered
their respective positions, the declaratory judgment
plaintiff was “still laboring under” the threat of infringe-
ment liability, and nothing in the record suggested that
any institution contacted by the patentee had successfully
attempted to compete with it. Id.
In this case, the relevant circumstances surrounding
Avery’s assertion of its patent rights appear to have
remained unchanged during the over one-year period
between Avery’s assertion of patent rights and 3M’s filing
of the declaratory judgment complaint. There is no alle-
gation that the Diamond Grade DG3 product has changed
in relation to the Heenan patents or that either 3M or
Avery altered its respective position. Moreover, we note
that, as part of a pre-filing investigation, it takes time to
review a set of asserted patents, the record generated
before the PTO, and the accused products before a poten-
tial infringer can make an informed decision to file a
declaratory judgment complaint. Thus, we would be
disinclined to hold that the case or controversy between
the parties sufficiently dissipated in the more than one-
year passage of time between Avery’s assertion of patent
rights and 3M’s filing of the declaratory judgment com-
plaint.
3M COMPANY v. AVERY DENNISON CORP 16

Finally, the parties dispute what effect Avery’s failure
to provide a covenant not to sue should have on the juris-
dictional analysis. We have explained that “although a
patentee’s refusal to give assurances that it will not
enforce its patent is relevant to the determination [of
declaratory judgment jurisdiction], it is not dispositive.”
Prasco, 537 F.3d at 1341 (quoting BP Chems. Ltd. v.
Union Carbide Corp., 4 F.3d 975, 980 (Fed. Cir. 1993)).
However, if the district court on remand concludes that
Avery’s communications with 3M, considering all the facts
and circumstances as pled by 3M, are sufficient to raise a
case or controversy, it might also conclude that Avery’s
failure to provide 3M with a covenant not to sue did not,
at the very least, lessen that existing controversy. See
Arris Grp., Inc. v. British Telecomms. PLC, 639 F.3d 1368,
1381 (Fed. Cir. 2011) (concluding that, under the circum-
stances, the patentee’s refusal to grant a covenant not to
sue provided “a level of additional support for our finding
that an actual controversy exists”).
In sum, the facts as alleged by 3M, if found by the dis-
trict court, would demonstrate the existence of an ongoing
case or controversy under the Declaratory Judgment Act.
Under the Supreme Court’s decision in MedImmune, the
basic question for declaratory judgment jurisdiction is
whether there is “a substantial controversy” between
parties “having adverse legal interests” that is “of suffi-
cient immediacy and reality to warrant the issuance of a
declaratory judgment.” 549 U.S. at 127 (quoting Md.
Cas., 312 U.S. at 273). That test would be satisfied here
because 3M filed its declaratory judgment complaint
reasonably promptly after Avery, a direct competitor with
a history of enforcing its patent rights against 3M, as-
serted its rights in the Heenan patents against 3M and
accused a specific 3M product of infringement.
17 3M COMPANY v. AVERY DENNISON CORP

IV.
Having concluded that the facts in 3M’s complaint, if
found by the district court, demonstrate a case or contro-
versy, we now consider how the case should be postured
on remand. As explained above, the district court should
resolve Avery’s factual challenges and determine, in light
of those factual findings, if 3M has proven the existence of
a case or controversy under the Declaratory Judgment
Act.
In addition to fact-finding issues, the parties seek a
ruling on whether the district court would abuse its
discretion if on remand it declined to exercise jurisdiction
over 3M’s declaratory judgment action, should it deter-
mine that such jurisdiction exists. We decline, however,
to opine on a discretionary decision that the district court
has yet to make, especially because that decision will
ultimately be based on a set of facts that the district court
has yet to find. See Fina Research, S.A. v. Baroid Ltd.,
141 F.3d 1479 (Fed. Cir. 1998).
CONCLUSION
We have considered the parties’ remaining arguments
and conclude that they are without merit. For the forego-
ing reasons, the judgment of the district court is
VACATED AND REMANDED