NOTICE: This opinion is subject to formal revision before publication in
    the preliminary print of the United States Reports.  Readers are
    requested to notify the Reporter of Decisions, Supreme Court of the
    United States, Washington, D.C. 20543, of any typographical or other
    formal errors, in order that corrections may be made before the
    preliminary print goes to press.

                       SUPREME COURT OF THE UNITED STATES

                                    --------
                                   No. 92-114
                                    --------

                    CARDINAL CHEMICAL COMPANY, ETC., ET AL.,
                      PETITIONERS v. MORTON INTERNATIONAL,
                                 ____
                                      INC.

                       ON WRIT OF CERTIORARI TO THE UNITED
                     STATES COURT OF APPEALS FOR THE FEDERAL
                                     CIRCUIT

                                 [May 17, 1993]

  JUSTICE STEVENS delivered the opinion of the Court.

  The question presented is whether the affirmance by the Court of Appeals for
the Federal Circuit of a finding that a patent has not been infringed is a
sufficient reason for vacating a declaratory judgment holding the patent
invalid.
  Respondent, Morton International, Inc. (Morton), is the owner of two patents
on chemical compounds used in polyvinyl chloride (PVC). (Ftnote. 1)  In 1983
                                                        (Ftnote. 1)
Morton filed this action in the United States District Court for the District of
South Carolina alleging that petitioners, Cardinal Chemical Company and its
affiliates (Cardinal), had infringed those patents.  Cardinal filed an answer
denying infringement and a counterclaim for a declaratory judgment that the
patents are invalid.  While this case was pending in the District Court, Morton
filed two other actions against other alleged infringers of the same patents. 
One was filed in the Eastern District of Louisi-














                    
____________________

   1)   United States Patent No. 4,062,881, dated December 13, 1977, and No.
   1)  
4,120,845, dated October 17, 1978.  The two patents are directed to organotin
mercaptoalkyl carboxylic acid ester sulfides - basically, compounds of sulfur
and tin that serve as heat stabilizers for PVC, protecting it from
decomposition, discoloration, and loss of strength.  See 959 F. 2d 948, 949, and
n. 1 (CA Fed. 1992).

                                92-114 - OPINION

2                  CARDINAL CHEMICAL CO. v. MORTON INT'L, INC.
                                        ____

ana, the other in the District of Delaware.  The defendants in both cases, like
Cardinal, filed counterclaims for declaratory judgments that the patents were
invalid.  Of the three, the Louisiana case was tried first and, in 1988,
resulted in a judgment for the defendant finding no infringement and declaring
the patents invalid. (Ftnote. 2)  On appeal, the Federal Circuit affirmed the
                     (Ftnote. 2)
finding of no infringement but vacated the judgment of
invalidity. (Ftnote. 3)  The Delaware case is still pending.
            (Ftnote. 3)
  In 1990 this case proceeded to a 5-day bench trial.  The South Carolina
District Court concluded, as had the Louisiana District Court, that the patentee
had failed to prove infringement and that the defendant-counterclaimant had
proved by clear and convincing evidence that both patents were
invalid. (Ftnote. 4)  Accordingly, the Court mandated two separate judgments:
         (Ftnote. 4)
one dismissing the action for infringement with prejudice, and another on the
counterclaim, declaring the patents invalid. (Ftnote. 5)
                                             (Ftnote. 5)

















                    
____________________

   2)   Morton Thiokol, Inc. v. Witco Chemical Corp., No. 84-5685 (ED La. June
   2)  _____________________    ____________________
22, 1988), App. 10, 24-31, 36. 
   3)   Morton Thiokol, Inc. v. Argus Chemical Corp., 11 USPQ 2d 1152 (CA Fed.
   3)   ____________________    ____________________
1989), judgt. order reported at 873 F. 2d 1451 (CA Fed. 1989) (nonprecedential). 
The court explained its disposition of the judgment of invalidity as follows:
"We hold that the finding of no literal infringement is not clearly erroneous
and on that basis we affirm the portion of the judgment of the district court
that determined that the patents are not infringed and dismissed the suit.  We
therefore find it unnecessary to reach the district court's determination that
the patents are invalid, and vacate the portion of the judgment that so
determined."  Id., at 1153, App. 39.  
              ____
   4)   "The evidence clearly and convincingly establishes that a person skilled
   4)  
in the art is unable to ascertain the claimed structures in order to avoid
infringement . . . .  Therefore, this court concludes that the language of the
[claims] is too vague to satisfy the definiteness requirement of S112."  App.
to Pet. for Cert. 67a.
   5)   "Now, therefore,
   5)  
  "IT IS ORDERED that the Clerk is directed to enter judgment for the defendants
in this case, dismissing the plaintiff's action for infringement with prejudice
and at its costs.
  "IT IS FURTHER ORDERED that the Clerk is directed to enter judgment for the
defendants on their counterclaim of invalidity of the patents, as patents
4,062,881 and 4,120,845 are found to be invalid."  Id., at 70a.
                                                   ____

                                92-114 - OPINION

                   CARDINAL CHEMICAL CO. v. MORTON INT'L, INC.                 3
                                        ____

  Again, Morton appealed to the Federal Circuit, challenging both the dismissal
of its infringement claim and the judgment of invalidity.  Cardinal filed a
cross-appeal contending that it was entitled to an award of fees pursuant to 35
U. S. C. S285 and that Morton should be sanctioned for prosecuting a frivolous
appeal. The defendant in the third, Delaware, case filed a brief amicus curiae
                                                                 _____________
urging the Court to affirm the judgment of invalidity. (Ftnote. 6)  Again,
                                                       (Ftnote. 6)
however, after affirming the dismissal of the infringement claim, the Federal
Circuit vacated the declaratory judgment.  It explained:

     "Since we have affirmed the district court's holding that the patents at
   issue have not been infringed, we need not address the question of validity. 
   Vieau v. Japax, Inc., 823 F. 2d 1510, 1517, 3 USPQ2d 1094, 1100 (Fed. Cir.
   _____    ___________
   1987).  Accordingly, we vacate the holding of invalidity."  959 F. 2d 948,
   952 (CA Fed. 1992).

The court also ruled that Morton was not liable for fees because it had advanced
an argument that "apparently it was not in a position to raise earlier."  Ibid. 
                                                                         _______
Judge Lourie concurred in the result, but believed the parties were entitled to
an affirmance of the invalidity holding "so that they can plan their future
affairs accordingly."  Id., at 954.
                       ___
  Both parties then filed petitions for rehearing, arguing that the court should
have decided the validity issue




























                    
____________________

   6)  See 959 F. 2d, at 950, n. 2 (referring to Morton International, Inc.  v.
   6)                                            ___________________________
Atochem North America, Inc., No. 87-60-CMW (Del., filed Feb. 9,1987)).  Atochem
___________________________
has also filed a brief amicus curiae in this Court, urging our reversal of the
                       _____________
Federal Circuit practice.

                                92-114 - OPINION

4                  CARDINAL CHEMICAL CO. v. MORTON INT'L, INC.
                                        ____

instead of vacating the District Court's declaratory judg-
ment;  (Ftnote. 7) they also filed suggestions for rehearing en banc, urging the
       (Ftnote. 7)
Court of Appeals to reconsider its post-1987 practice of routinely vacating a
declaratory judgment of invalidity whenever noninfringement is found.  Over the
dissent of three of its judges, the court declined those
suggestions. (Ftnote. 8)  Chief Judge Nies filed a thorough explanation of that
             (Ftnote. 8)
dissent; she found no "justification for our Vieau decision either legally or as
                                             _____
a `policy'. . . .  The parties can now look only to the Supreme Court for
correction."  967 F. 2d 1571, 1578 (CA Fed. 1992).  
  Cardinal filed a petition for certiorari asserting that the Federal Circuit
errs in applying a per se rule to what should be a discretionary matter.  Pet.
                   ______
for Cert. 13.  Morton did not oppose the grant of certiorari, but instead
pointed out that it also had an interest in having the validity issue
adjudicated. (Ftnote. 9)  It explained that, after the Federal Circuit had twice
             (Ftnote. 9)
refused substantive review of findings that its two patents were invalid, the
patents have been





















                    
____________________

   7)  Those petitions were denied.  1992 U. S. App. LEXIS 7580 (CA Fed. 1992),
   7)  
App. to Pet. for Cert. 71a, 72a.
   8)  1992 U. S. App. LEXIS 10067 (CA Fed. 1992), App. to Pet. for Cert. 73a,
   8)  
74a.
   9)  Because both parties agree that we should reject the Federal Circuit's
   9)  
practice, it might be thought that they lack the adversarial posture required by
Article III.  Although both Morton and Cardinal do agree on the correct answer
to the question presented, they do so only so that they can reach their true
dispute: the validity of Morton's two patents, a subject on which they are in
absolute disagreement.  Further, it is clear that no collusion between the
parties has brought them here; if anything has dulled the adverseness between
them, it is the Federal Circuit practice which is the subject of this case.  Cf.
INS v. Chadha, 462 U. S. 919, 939 (1983) (finding Art. III adverseness even
___    ______
though the two parties agreed on the unconstitutionality of the one-House veto
that was the subject of that case; the parties remained in disagreement over the
underlying issue of whether Chadha should be deported).  The Federal Circuit's
improper finding of mootness cannot itself moot this case.  

                                92-114 - OPINION

                   CARDINAL CHEMICAL CO. v. MORTON INT'L, INC.                 5
                                        ____


   "effectively stripped of any power in the marketplace.  If Morton were to
   proceed against another infringer, the district court, in all likelihood
   would accept the twice-vacated invalidity holdings, just as the district
   court below adopted wholesale the [Louisiana] district court's invalidity
   holdings, without any independent evaluation as to whether those holdings
   were correct.  Further, any future accused infringer would, in all
   likelihood, argue for an award of attorney's fees as Cardinal has done here,
   on the ground that Morton should have known better than sue on an `invalid
   patent' . . . .  The value of Morton's patents is therefore essentially zero
   - effectively not enforceable and viewed with a jaundiced eye by competitors
   and district courts alike.  [Morton] has lost valuable property rights . . .
   without due process of law."  Brief for Respondent 16-17.

  Because the Federal Circuit has exclusive jurisdiction over appeals from all
United States District Courts in patent litigation, the rule that it applied in
this case, and has been applying regularly since its 1987 decision in Vieau v.
                                                                      _____
Japax, Inc., 823 F. 2d 1510, is a matter of special importance to the entire
___________
Nation.  We therefore granted certiorari.  506 U. S. ___ (1992).

                                        I
  The Federal Circuit's current practice of routinely vacating declaratory
judgments regarding patent validity following a determination of noninfringement
originated in two cases decided by different panels of that Court on the same
day.  In Vieau, the patentee had appealed adverse rulings on damages,
         _____
infringement, and validity and the alleged infringer had filed a cross-appeal
asserting that the District Court should have declared the patent invalid. 
After affirming the District Court's finding of noninfringement, the Federal
Circuit concluded:

                                92-114 - OPINION

6                  CARDINAL CHEMICAL CO. v. MORTON INT'L, INC.
                                        ____


     "Our disposition on the issue of infringement renders moot the appeal of
   the propriety of a directed verdict on the issues of damages and willful
   infringement.  There is no indication that Japax's cross-appeal on invalidity
   extends beyond the litigated claims or the accused devices found to be
   noninfringing.  Accordingly, we also dismiss the cross-appeal as moot.  The
   judgment entered by the district court with respect to each of the mooted
   issues is therefore vacated.  It is affirmed with respect to infringement." 
                       _______         ________
   Id., at 1517.
   ____


  Judge Bennett filed a concurring opinion, fleshing out this perfunctory
holding and explaining that there was no need to review the declaratory judgment
of invalidity in the absence of any "continuing dispute (such as the presence or
threat of further litigation) regarding other claims or other accused devices
that remain unresolved by the finding of
noninfringement." (Ftnote. 10)
                  (Ftnote. 10)
  In the second case, Fonar Corp. v. Johnson & Johnson, 821 F. 2d 627 (CA
                      ___________    _________________
Fed. 1987), the District Court had held that the patent was not infringed and
that the defendant-counterclaimant had failed to prove invalidity.  On appeal,
the Court affirmed the noninfringement holding, and vacated the judgment on the
counterclaim as moot.  In his opinion for the panel, Chief Judge Markey
explained:






















                    
____________________

   10)  Vieau, 823 F. 2d, at 1520.  He added: "It is the burden of the party
   10)  _____
seeking the declaratory judgment to illustrate, either in its briefs or at oral
argument, the continued existence of a case or controversy should a decision of
noninfringement be made by this court in deciding the appeal.  See International
                                                               _________________
Medical Prosthetics, 787 F. 2d at 575, 229 USPQ at 281 (burden is on declaratory
___________________
plaintiff to establish that jurisdiction existed at, and has continued since,
the time the complaint was filed).  This requirement avoids having this court
unnecessarily address what might turn out to be a hypothetical situation." 
Ibid.  
_____

                                92-114 - OPINION

                   CARDINAL CHEMICAL CO. v. MORTON INT'L, INC.                 7
                                        ____


     "There being no infringement by J & J of any asserted claim, there remains
   no case or controversy between the parties.  We need not pass on the validity
   or enforceability of claims 1 and 2. . . .  [C]f. Altvater v. Freeman, 319
                                               ______________    _______
   U. S. 359, 363-65 . . . (1943) (`To hold a patent valid if it is not
   infringed is to decide a hypothetical case,' but a counterclaim for
   invalidity is not mooted where counterclaim deals with additional patent
   claims and devices not involved in the complaint and with license issues.).
          .     .      .      .      .
   "The judgment that J & J has not proven claims 1 and 2 invalid or
   unenforceable is vacated and the appeal from that judgment is dismissed as
   moot."  Id., at 634.
           ___

A footnote emphasized that there was no longer any dispute between the parties
beyond the specific charge of infringement that had been resolved by the finding
of non-infringement. (Ftnote. 11)
                     (Ftnote. 11)
  The three opinions in Vieau and Fonar indicate that the Federal Circuit's
                        _____     _____
practice of vacating declaratory judgments of patent validity (or invalidity) is
limited to cases in which the court is convinced that the finding of non-
infringement has entirely resolved the controversy between the litigants by
resolving the initial complaint brought by the
patentee. (Ftnote. 12)  The Federal Circuit has concluded that
          (Ftnote. 12)
                    
____________________

   11)  "The record contains no assertion that J & J infringes the '832 patent
   11)  
by any methods other than those found not to infringe, or that J & J's machines
infringe the nonasserted apparatus claims.  J & J's counterclaim merely repeated
the affirmative defenses of invalidity and unenforceability and the verdict
form, with no objection by J & J, dealt only with the asserted claims.  J & J's
motion for JNOV dealt only with claims 1 and 2."  Fonar, 821 F. 2d, at 634,
                                                  _____
n. 2.
   12)  That the holdings of Vieau v. Japex, Inc., 823 F. 2d 1510 (CA Fed.
   12)                       _____    ____________
1987), and Fonar Corp. v. Johnson & Johnson, 821 F. 2d 627 (CA Fed. 1987), can
           ___________    __________________
be said to have developed into a uniform practice or rule is made clear by the
regularity with which they have been applied.  See Shat-R-Shield, Inc. v.
                                                   ___________________
Trojan, Inc.,  1992 U. S. App. LEXIS 9860, *7, judgt. order reported at 968
____________
F. 2d 1226 (CA Fed.) (nonprecedential), cert. denied, 506 U. S. ___ (1992);
Winner Int'l Corp. v. Wolo Mfg. Corp., 905 F. 2d 375, 377 (CA Fed. 1990); Wilson
__________________    _______________                                     ______
Sporting Goods Co. v. David Geoffrey & Assoc., 904 F. 2d 677, 686 (CA Fed.
__________________    _______________________
1990); Neville Chemical Co. v. Resinall Corp., 1990 U. S. App. LEXIS 16549,
       ____________________    ______________
judgt. order reported at 915 F. 2d 1584 (CA Fed. 1990) (nonprecendential),
Freeman v. Minnesota Mining and Mfg. Co., 13 USPQ 2d 1250, judgt. order reported
_______    _____________________________
at 884 F. 2d 1398 (CA Fed. 1989) (nonprecedential), cert. denied, 494 U. S. 1070
(1990); Senmed, Inc. v. Richard-Allan Medical Industries, Inc., 888 F. 2d 815,
        ____________    ______________________________________
817 (CA Fed. 1989); Environmental Instruments, Inc. v. Sutron Corp., 877 F. 2d
                    _______________________________    ____________
1561, 1566 (CA Fed. 1989); Julien v. Zeringue, 864 F. 2d 1569, 1571 (CA Fed.
                           ______    ________
1989); Morton Thiokol, Inc. v. Argus Chemical Corp., 11 USPQ 2d 1152, judgt.
       ____________________    ____________________
order reported at 873 F. 2d 1451 (CA Fed. 1989) (nonprecedential);  Pfaff v.
                                                                    _____
Wells Electronic, Inc., 12 USPQ 2d 1158, judgt. order reported at 884 F. 2d 1399
______________________
(CA Fed. 1989) (nonprecedential); Specialized Electronics Corp. v. Aviation
                                  _____________________________    ________
Supplies & Academics, Inc., 12 USPQ 2d 1918, judgt. order reported at 884 F. 2d
__________________________
1397 (CA Fed. 1989) (nonprecedential); Sun-Tek Industries Inc. v. Kennedy Sky
                                       _______________________    ___________
Lites, Inc., 848 F. 2d 179, 183 (CA Fed. 1988), cert. denied, 488 U. S. 1009
___________
(1989); Advance Transformer Co. v. Levinson, 837 F. 2d 1081, 1084 (CA Fed.
        _______________________    ________
1988); Pennwalt Corp. v. Durand-Wayland, Inc., 833 F. 2d 931, 939 (CA Fed. 1987)
       ______________    ____________________
(en banc); Perini America, Inc. v. Paper Converting Machine Co., 832 F. 2d 581,
           ____________________    ____________________________

                                92-114 - OPINION

8                  CARDINAL CHEMICAL CO. v. MORTON INT'L, INC.
                                        ____

in such cases the declaratory judgment is "moot" in a jurisdictional sense, a
conclusion that it considers dictated by two of our earlier opinions, Electrical
                                                                      __________
Fittings Corp. v. Thomas & Betts Co., 307 U. S. 241 (1939) and Altvater v.
______________    __________________                           ________
Freeman, 319 U. S. 359 (1943). (Ftnote. 13)  We therefore begin
                               (Ftnote. 13)
_______
with a comment on those two cases.

                                       II
  In Electrical Fittings, the District Court held one claim
     ___________________








































                    
____________________

584, n. 1 (CA Fed. 1987).  In only one published opinion after 1987, Dana Corp.
                                                                     __________
v. IPC Ltd. Partnership, 860 F. 2d 415 (CA Fed. 1988), did the Court address the
   ____________________
District Court's validity determination without reaching the issue of
infringement, but it did so without referring to Vieau or Fonar. 
                                                 _____    _____
   13)  See Vieau, 823 F. 2d, at 1518-1519 (Bennett, J., concurring); Fonar,
   13)      _____                                                     _____
821 F. 2d, at 634.

                                92-114 - OPINION

                   CARDINAL CHEMICAL CO. v. MORTON INT'L, INC.                 9
                                        ____

of a patent valid but not infringed. (Ftnote. 14)  The patentee was
                                     (Ftnote. 14)
content with that judgment, but the successful defendant appealed, seeking a
reversal of the finding of validity.  The Court of Appeals dismissed the appeal
based on the rule that a prevailing party may not appeal from a judgment in its
favor.  We reversed, and held that although the defendant could not compel the
appellate court to revisit the finding of validity (which had become immaterial
to the disposition of the case), it could demand that the finding of validity be
vacated.  That finding, we explained, "stands as an adjudication of one of the
issues litigated.  We think the petitioners were entitled to have this portion
of the decree eliminated, and that the Circuit Court of Appeals had
jurisdiction, as we have held this Court has, to entertain the appeal, not for
the purpose of passing on the merits, but to direct the reformation of the
decree."  Electrical Fittings, 307 U. S., at 242 (footnotes omitted).
          ___________________
  Our command that the validity decision be eliminated was similar to the
Federal Circuit's mandate in the Fonar case (both cases suggest that an
                                 _____
appellate court should vacate unnecessary decisions regarding patent validity),
but the two cases are critically different.  The issue of invalidity in
Electrical Fittings was raised only as an affirmative defense to the charge that
___________________
a presumptively valid patent had been infringed, (Ftnote. 15) not
                                                 (Ftnote. 15)
(as in Fonar, and as here) as a basis for a counterclaim seeking a declaratory
       _____
judgment of patent invalidity.  An unnecessary ruling on an affirmative defense
is not the same as the neces-

























                    
____________________

   14)  "Instead of dismissing the bill without more, it entered a decree
   14)  
adjudicating claim 1 valid but dismissing the bill for failure to prove
infringement."  307 U. S., at 242.
   15)  Under 35 U. S. C. S282, all patents are presumed valid.  Although that
   15)  
presumption is obviously resurrected after the Federal Circuit vacates a finding
of invalidity, Morton's current situation makes clear that the revived
presumption lacks some of its earlier strength.

                                92-114 - OPINION

10                 CARDINAL CHEMICAL CO. v. MORTON INT'L, INC.
                                        ____

sary resolution of a counterclaim for a declaratory judgment.
  In Altvater, as here, the defendant did file a counterclaim seeking a
     ________                         ___
declaratory judgment that the patent was invalid.  The District Court found no
infringement, but also granted the declaratory judgment requested by the
defendant.  The Court of Appeals affirmed the non-infringement holding but,
reasoning that the validity issue was therefore moot, vacated the declaratory
judgment.  We reversed.  Distinguishing our holding in Electrical Fittings, we
                                                       ___________________
wrote:

   "To hold a patent valid if it is not infringed is to decide a hypothetical
   case.  But the situation in the present case is quite different.  We have
   here not only bill and answer but a counterclaim.  Though the decision of
   non-infringement disposes of the bill and answer, it does not dispose of the
   counterclaim which raises the question of validity. . . .  [T]he issue of
   validity may be raised by a counterclaim in an infringement suit.  The
   requirements of a case or controversy are of course no less strict under the
   Declaratory Judgments Act (48 Stat. 955, 28 U. S. C. S400) than in case of
   other suits.  But we are of the view that the issues raised by the present
   counter-claim were justiciable and that the controversy between the parties
   did not come to an end on the dismissal of the bill for non-infringement,
   since their dispute went beyond the single claim and the particular accused
   devices involved in that suit."  319 U. S., at 363-364 (footnotes omitted;
   citations omitted).

Presumably because we emphasized, in the last clause quoted, the ongoing nature
of the Altvater parties' dispute, the Federal Circuit has assumed that a
       _________
defendant's counterclaim under the Declaratory Judgment Act should always be
vacated unless the parties' dispute extends

                                92-114 - OPINION

                   CARDINAL CHEMICAL CO. v. MORTON INT'L, INC.                11
                                        ____

beyond the terms of the patentee's charge of infringe-
ment. (Ftnote. 16)
      (Ftnote. 16)
  While both of our earlier cases are consistent with the Federal Circuit
practice established in Vieau and Fonar, neither one required it.  Electrical
                        _____     _____                            __________
Fittings did not involve a declaratory judgment, and Altvater does not
________                                             ________
necessarily answer the question whether, in the absence of an ongoing dispute
between the parties over infringement, an adjudication of invalidity would be
moot.  We now turn to that question.

                                       III
  Under its current practice, the Federal Circuit uniformly declares that the
issue of patent validity is "moot" if it affirms the District Court's finding of
noninfringement and if, as in the usual case, the dispute between the parties
does not extend beyond the patentee's particular claim of infringement.  That
practice, and the issue before us, therefore concerns the jurisdiction of an
intermediate appellate court - not the jurisdiction of either a trial court or
this Court.  In the trial court, of course, a party seeking a declaratory
judgment has the burden of establishing the existence of an actual case or
controversy.  Aetna Life Ins. Co. v. Haworth, 300 U. S. 227, 240-241
              ___________________    _______
(1937). (Ftnote. 17)
        (Ftnote. 17)
  In patent litigation, a party may satisfy that burden, and seek a declaratory
judgment, even if the patentee has not filed an infringement action.  Judge
Markey has described

























                    
____________________

   16)  See Vieau, 823 F. 2d, at 1518-1521 (Bennett, J., concurring); Fonar,
   16)      _____                                                     _____
821 F. 2d, at 634, and n. 2.
   17)  As we have noted, the Declaratory Judgment Act affords the district
   17)  
court some discretion in determining whether or not to exercise that
jurisdiction, even when it has been established.  See Brillhart v. Excess Ins.
                                                      _________    ___________
Co., 316 U. S. 491, 494-496 (1942).
___

                                92-114 - OPINION

12                 CARDINAL CHEMICAL CO. v. MORTON INT'L, INC.
                                        ____


   "the sad and saddening scenario that led to enactment of the Declaratory
   Judgment Act (Act), 28 U. S. C. S2201.  In the patent version of that
   scenario, a patent owner engages in a danse macabre, brandishing a Damoclean
                                         _____________
   threat with a sheathed sword. . . .  Before the Act, competitors victimized
   by that tactic were rendered helpless and immobile so long as the patent
   owner refused to grasp the nettle and sue.  After the Act, those competitors
   were no longer restricted to an in terrorem choice between the incurrence of
                                   ___________
   a growing potential liability for patent infringement and abandonment of
   their enterprises; they could clear the air by suing for a judgment that
   would settle the conflict of interests.  The sole requirement for
   jurisdiction under the Act is that the conflict be real and immediate, i.e.,
   that there be a true, actual `controversy' required by the Act."  Arrowhead
                                                                     _________
   Industrial Water, Inc. v. Ecolochem, Inc. 846 F. 2d 731, 734-735 (CA Fed.
   ______________________    _______________
   1988) (citations omitted).

Merely the desire to avoid the threat of a "scarecrow" patent, in Learned Hand's
phrase, (Ftnote. 18) may therefore be sufficient to establish
        (Ftnote. 18)
jurisdiction under the Declaratory Judgment Act.  If, in addition to that
desire, a party has actually been charged with infringement of the patent, there
is, necessarily, a case or controversy adequate to support jurisdiction of a
    ___________
complaint, or a counterclaim, under the Act.  In this case, therefore, it is
perfectly clear that the District Court had jurisdiction to entertain Cardinal's
counterclaim for a declaratory judgment of invalidity.
  It is equally clear that the Federal Circuit, even after affirming the finding
of noninfringement, had jurisdiction to consider Morton's appeal from the
                        ____________
declaratory judgment


























                    
____________________

   18)  Bresnick v. United States Vitamin Corp., 139 F. 2d 239, 242 (CA2 1943).
   18)  ________    ___________________________

                                92-114 - OPINION

                   CARDINAL CHEMICAL CO. v. MORTON INT'L, INC.                13
                                        ____

of invalidity.  A party seeking a declaratory judgment of invalidity presents a
claim independent of the patentee's charge of infringement.  If the District
Court has jurisdiction (established independently from its jurisdiction over the
patentee's charge of infringement) to consider that claim, so does (barring any
intervening events) the Federal Circuit.
  There are two independent bases for this conclusion.  First, the Federal
Circuit is not a court of last resort.  If that court had jurisdiction while the
case was pending before it, the case remains alive (barring other changes) when
it comes to us.  The Federal Circuit's determination that the patents were not
infringed is subject to review in this Court, and if we reverse that determina-
tion, we are not prevented from considering the question of validity merely
because a lower court thought it superfluous.  As a matter of practice, the
possibility that we would grant certiorari simply to review that Court's
resolution of an infringement issue is extremely remote, but as a matter of law
we could do so, and if we did, we could also reach the declaratory judgment, as
long as the parties continued to dispute the issue of validity, as they do
here. (Ftnote. 19)  As
      (Ftnote. 19)


















                    
____________________

   19)  Commenting on Electrical Fittings,  in Deposit Guarantee Nat. Bank v.
   19)                ___________________      ___________________________
Roper, 445 U. S. 326, 335 (1980), we wrote: "Although the Court limited the
_____
appellate function to reformation of the decree, the holding relevant to the
instant case was that the federal courts retained jurisdiction over the
controversy notwithstanding the District Court's entry of judgment in favor of
petitioners.  This Court had the question of mootness before it, yet because
policy considerations permitted an appeal from the District Court's final
judgment and because petitioners alleged a stake in the outcome, the case was
still live and dismissal was not required by Art. III.  The Court perceived the
distinction between the definitive mootness of a case or controversy, which
ousts the jurisdiction of the federal courts and requires dismissal of the case,
and a judgment in favor of a party at an intermediate stage of litigation, which
does not in all cases terminate the right to appeal."  See also 959 F. 2d, at
953 (Lourie, J., concurring) ("[B]ecause this court is not a court of last
resort, a holding of either invalidity or non-infringement by our court does not
render the case moot because it is not over.  Therefore, when both infringement
and validity issues are presented on appeal, we can base our affirmance on both
grounds, thereby leaving a complete judgment available for review by the Supreme
Court").

                                92-114 - OPINION

14                 CARDINAL CHEMICAL CO. v. MORTON INT'L, INC.
                                        ____

this case demonstrates, nothing prevents us, as a jurisdictional matter, from
reviewing the Federal Circuit's disposition (even its vacatur) of the District
Court's resolution of the declaratory judgment counterclaim.
  Second, while the initial burden of establishing the trial court's
jurisdiction rests on the party invoking that jurisdiction, once that burden has
been met courts are entitled to presume, absent further information, that
jurisdiction continues.  If a party to an appeal suggests that the controversy
has, since the rendering of judgment below, become moot, that party bears the
burden of coming forward with the subsequent events that have produced that
alleged result.  See United States v. W. T. Grant Co., 345 U. S. 629, 633
                     _____________    _______________
(1953). (Ftnote. 20)  In this case Cardinal properly invoked the
        (Ftnote. 20)
original jurisdiction of the District Court, and Morton properly invoked the
appellate jurisdiction of the Federal Circuit.  That court unquestionably had
the power to decide all the issues raised on Morton's appeal.  If, before the
Court had decided the case, either party had advised it of a material change in
circumstances that entirely terminated their controversy, it would have been
proper either to dismiss the appeal or to vacate the entire judgment of the
District Court.  Cf. United States v. Munsingwear, Inc., 340 U. S. 36, 39
                     _____________    _________________
(1950).  In fact, however, there was no such change in this case.  The Federal
Circuit's decision to rely on one




























                    
____________________

   20)  To the extent that the Federal Circuit, relying on Judge Bennett's
   20)  
concurrence in Vieau, see n. 10, infra, would have imposed the burden on
               _____             _____
Cardinal to show that jurisdiction over its counterclaim, once established in
the District Court, continued to attach before the Court of Appeals, it would
therefore have been in error.  Bearing the initial burden of establishing
jurisdiction is different from establishing that it has disappeared.

                                92-114 - OPINION

                   CARDINAL CHEMICAL CO. v. MORTON INT'L, INC.                15
                                        ____

of two possible alternative grounds (noninfringement rather than invalidity) did
not strip it of power to decide the second question, particularly when its
                _____
decree was subject to review by this Court.  Even if it may be good practice to
decide no more than is necessary to determine an appeal, it is clear that the
Federal Circuit had jurisdiction to review the declaratory judgment of
invalidity.  The case did not become moot when that Court affirmed the finding
of noninfringement.

                                       IV
  The Federal Circuit's practice is therefore neither compelled by our cases nor
supported by the "case or controversy" requirement of Article III.  Of course,
its practice might nevertheless be supported on other grounds.  The Courts of
Appeal have significant authority to fashion rules to govern their own
procedures.  See, e.g., Ortega-Rodriguez v. United States, 507 U. S. ___, ___
                  ____  ________________    _____________
(1993) (slip op., at 10); Thomas v. Arn, 474 U. S. 140, 146-148 (1985).  Just as
                          ______    ___
we have adhered to a practice of deciding cases on statutory rather than
constitutional grounds when both alternatives are available, see, e.g.,
                                                                  ____
DeBartolo Corp. v. Florida Gulf Coast Building and Construction Trades Council,
_______________    ___________________________________________________________
485 U. S. 568, 575 (1988), there might be a sufficient reason always to address
the infringement issue before passing on the patent's validity.  If, for
example, the validity issues were generally more difficult and time-consuming to
resolve, the interest in the efficient management of the Court's docket might
support such a rule.
  Although it is often more difficult to determine whether a patent is valid
than whether it has been infringed, there are even more important countervailing
concerns.  Perhaps the most important is the interest of the successful litigant
in preserving the value of a declaratory judgment that, as Chief Judge Nies
noted, "it obtained on a valid

                                92-114 - OPINION

16                 CARDINAL CHEMICAL CO. v. MORTON INT'L, INC.
                                        ____

counterclaim at great effort and expense." (Ftnote. 21)  A company
                                           (Ftnote. 21)
once charged with infringement must remain concerned about the risk of similar
charges if it develops and markets similar products in the future.  Given that
the burden of demonstrating that changed circumstances provide a basis for
vacating the judgment of patent invalidity rests on the party that seeks such
action, there is no reason why a successful litigant should have any duty to
disclose its future plans to justify retention of the value of the judgment that
it has obtained. (Ftnote. 22)
                 (Ftnote. 22)
  Moreover, our prior cases have identified a strong public interest in the
finality of judgments in patent litigation.  In Sinclair & Carroll Co. v.
                                                ______________________
Interchemical Corp., 325 U. S. 327 (1945), we approved of the District Court's
___________________
decision to consider the question of validity even though it had found that a
patent had not been infringed.  Criticizing the contrary approach taken by other
courts, we stated that "of the two questions, validity has the greater public
importance, Cover v. Schwartz, 133 F. 2d 541 [CA2 1943)],
            _____    ________





















                    
____________________

   21)  967 F. 2d, at 1577 (Nies, C.J., dissenting from denial of rehearing en
   21)  
banc).  As she added in a footnote: "Nor should we be unmindful of the expense
and effort of the district court.  Judge Avern Cohn of the Eastern District of
Michigan (the Vieau trial judge) stated, in a panel discussion at our most
              _____
recent Judicial Conference: `I took six months to write a JNOV, found the patent
invalid and not infringed and was very proud of my work product.  And when I
read that court of appeals opinion and found that my finding of invalidity had
been vacated, there was no case or controversy, I was in a state of shock for
ten minutes.'  Cohn, Remarks at the Patent Breakout Session of the Tenth Annual
Judicial Conference of the United States Court of Appeals for the Federal
Circuit 65 (April 30, 1992)."  Id., at 1577, n. 9. 
                               ___
   22)  Altvater cannot be read to require such a disclosure.  In that case,
   22)  ________
the counterclaimant was a licensee, and there was no question but that its
obligations to the patentee would continue unless the patent were found invalid. 
Our holding did not depend on that fact, however, and we nowhere stated that a
counterclaimant could seek the affirmance of a declaratory judgment only if it
ensured that its future actions would continue to violate the patentee's alleged
rights.

                                92-114 - OPINION

                   CARDINAL CHEMICAL CO. v. MORTON INT'L, INC.                17
                                        ____

and the District Court in this case followed what will usually be the better
practice by inquiring fully into the validity of this patent."  Id., at 330.
                                                                ___
  We also emphasized the importance to the public at large of resolving
questions of patent validity in Blonder-Tongue Laboratories, Inc. v. University
                                _________________________________    __________
of Illinois Foundation, 402 U. S. 313 (1971).  In that case we overruled
______________________
Triplett v. Lowell, 297 U. S. 638 (1936), which had held that a determination of
________    ______
patent invalidity does not estop the patentee from relitigating the issue in a
later case brought against another alleged infringer.  We also commented at
length on the wasteful consequences of relitigating the validity of a patent
after it has once been held invalid in a fair trial, (Ftnote. 23)
                                                     (Ftnote. 23)
and we noted the danger that the opportunity to relitigate might, as a practical
matter, grant monopoly privileges to the holders of invalid pat-
ents. (Ftnote. 24)  As this case demonstrates, the Federal
      (Ftnote. 24)













                    
____________________

   23)  "In any lawsuit where a defendant, because of the mutuality principle,
   23)  
is forced to present a complete defense on the merits to a claim which the
plaintiff has fully litigated and lost in a prior action, there is an arguable
misallocation of resources.  To the extent the defendant in the second suit may
not win by asserting, without contradiction, that the plaintiff had fully and
fairly, but unsuccessfully, litigated the same claim in the prior suit, the
defendant's time and money are diverted from alternative uses - productive or
otherwise - to relitigation of a decided issue.  And, still assuming that the
issue was resolved correctly in the first suit, there is reason to be concerned
about the plaintiff's allocation of resources.  Permitting repeated litigation
of the same issue as long as the supply of unrelated defendants holds out
reflects either the aura of the gaming table or `a lack of discipline and of
disinterestedness on the part of the lower courts, hardly a worthy or wise basis
for fashioning rules of procedure.'  Kerotest Mfg. Co. v. C-O-Two Co., 342 U. S.
                                     _________________    ___________
180, 185 (1952)."  402 U. S., at 329.  
   24)  "In each successive suit the patentee enjoys the statutory presumption
   24)  
of validity, and so may easily put the alleged infringer to his expensive proof. 
As a consequence, prospective defendants will often decide that paying royalties
under a license or other settlement is preferable to the costly burden of
challenging the patent."  Id., at 338.  
                          ___
  "The tendency of Triplett to multiply the opportunities for holders of invalid
                   ________
patents to exact licensing agreements or other settlements from alleged
infringers must be considered in the context of other decisions of this Court. 
Although recognizing the patent system's desirable stimulus to invention, we
have also viewed the patent as a monopoly which, although sanctioned by law, has
the economic consequences attending other monopolies.  A patent yielding returns
for a device that fails to meet the congressionally imposed criteria of
patentability is anomalous."  Id., at 342-343 (footnotes omitted).  
                              ___

                                92-114 - OPINION

18                 CARDINAL CHEMICAL CO. v. MORTON INT'L, INC.
                                        ____

Circuit's practice of routinely vacating judgments of validity after finding
noninfringement creates a similar potential for relitigation and imposes ongoing
burdens on competitors who are convinced that a patent has been correctly found
invalid.
  Indeed, as Morton's current predicament illustrates, see supra, at 5, the
                                                           _____
Federal Circuit's practice injures not only the alleged infringer, and the
public; it also may unfairly deprive the patentee itself of the appellate review
that is a component of the one full and fair opportunity to have the validity
issue adjudicated correctly.  If, following a finding of noninfringement, a
declaratory judgment on validity is routinely vacated, whether it invalidated
the patent (as in Vieau) or upheld it (as in Fonar), the patentee may have lost
                  _____                      _____
the practical value of a patent that should be enforceable against different
infringing devices.  The Federal Circuit's practice denies the patentee such
appellate review, prolongs the life of invalid patents, encourages endless
litigation (or at least uncertainty) over the validity of outstanding patents,
and thereby vitiates the rule announced in Blonder-
                                           ________
Tongue. (Ftnote. 25)
        (Ftnote. 25)
______






















                    
____________________

   25)  The Federal Circuit's practice has been the subject of a good deal of
   25)  
scholarly comment, all of which has consistently criticized the practice.  See
R. Harmon, Patents and The Federal Circuit 551-554 (2d ed. 1991); Wegner,
Morton, The Dual Loser Patentee: Frustrating Blonder-Tongue, 74 J. Pat. &
______                                       ______________
Trademark Off. Soc. 344 (1992) ("A dual loser patentee at a trial court who
fails both on infringement and validity and then loses at the Federal Circuit on
infringement is given the judicial blessing of that appellate tribunal to sue
and sue again against third parties, to the extent the invalidity ruling is
vacated under Vieau"); Re & Rooklidge, Vacating Patent Invalidity Judgments Upon
              _____
an Appellate Determination of Noninfringement, 72 J. Pat. & Trademark Off. Soc.
780 (1990).  See also Donofrio, The Disposition of Unreviewable Judgments by the
Federal Circuit, 73 J. Pat. & Trademark Off. Soc. 462, 464 (1991) ("[T]he
Federal Circuit's present practice of vacating such judgments [even if it
correctly considers them unreviewable] should not continue because it permits
litigants to destroy the conclusiveness of invalidity holdings.")

                                92-114 - OPINION

                   CARDINAL CHEMICAL CO. v. MORTON INT'L, INC.                19
                                        ____

  In rejecting the Federal Circuit's practice we acknow-ledge that factors in an
unusual case might justify that Court's refusal to reach the merits of a
validity determination - a determination which it might therefore be appropriate
to vacate.  A finding of noninfringment alone, however, does not justify such a
result.  Nor does anything else in the record of this case.  The two patents at
issue here have been the subject of three separate lawsuits, and both parties
have urged the Federal Circuit to resolve their ongoing dispute over the issue
of validity; it would be an abuse of discretion not to decide that question in
this case.  Accordingly, the judgment of the Court of Appeals is vacated, and
the case is remanded to that Court for further proceedings consistent with this
opinion.

It is so ordered.
_________________