United States Court of Appeals for the Federal Circuit 

2007-1443 

CAT TECH LLC (successor to Cat Tech, Inc.), 

 

Plaintiff-Appellant, 

v. 

TUBEMASTER, INC., 

 Defendant-Appellee. 

David M. Gunn, Beck, Redden & Secrest, LLP, of Houston, Texas, and B. Todd 

Patterson, Patterson & Sheridan, LLP, of Houston, Texas, argued for plaintiff-appellant. 

With them on the brief was Henry M. Pogorzelski Patterson & Sheridan, LLP, of 

Houston, Texas. 

 

Dennis D. Murrell, Middleton Reutlinger, of Louisville, Kentucky, argued for 

defendant-appellee. With him on the brief was Robert J. Theuerkauf. 

Appealed from: United States District Court for the Southern District of Texas 

Judge Keith P. Ellison 
United States Court of Appeals for the Federal Circuit 

 

2007-1443 

CAT TECH LLC (successor to Cat Tech, Inc.), 

 Plaintiff-Appellant, 

v. 

TUBEMASTER, INC., 

 Defendant-Appellee. 

Appeal from the United States District Court for the Southern District of Texas in case 

no. 05-CV-3050, Judge Keith P. Ellison. 

 ________________________ 

 

 DECIDED: May 28, 2008 

 _________________________ 

Before MAYER and SCHALL, Circuit Judges and YOUNG*, District Judge. 

MAYER, Circuit Judge. 

Cat Tech LLC (“Cat Tech”) appeals the judgment of the United States District 

Court for the Southern District of Texas holding that none of four configurations of 

loading devices manufactured by TubeMaster, Inc. (“TubeMaster”) infringes U.S. Patent 

No. 6,905,660 (the “’660 patent”). We conclude that the district court correctly 

construed the “spacing” element of claims 3-7 of the ’660 patent and that the dispute 

______________________ 

* The Honorable William G. Young, District Judge for the District of Massachusetts, 

sitting by designation. 
was sufficiently real and immediate to warrant a declaratory judgment of noninfringement. We therefore affirm. 

Background

 The relevant facts are largely undisputed. The ’660 patent describes a method 

for using loading devices to place catalyst particles into multi-tube chemical reactors. 

Multi-tube reactors typically contain thousands of long vertical tubes which are held 

together at either end by a perforated plate called a tube sheet. Cat Tech’s claimed 

method uses a plurality of plates that are positioned to cover the upper tube-sheet of a 

chemical reactor. Catalyst is poured over these plates and then swept into the reactor 

tubes. 

Catalyst must be loaded into reactor tubes evenly to prevent catalyst particles 

from wedging together or “bridging.” Bridging occurs when particles enter the reactor 

tube simultaneously and then “wedge together part way down the tube and leave a void 

space below them—resulting in unevenly and incompletely loaded tubes.” ’660 patent 

col. 1, ll.38-41. The ’660 patent teaches a method of loading reactor tubes that 

minimizes bridging and can be reconfigured to load reactor tubes of varying sizes. 

The ’660 patent calls for “a spacing between adjacent plates having a width not 

greater than the smallest dimension of a single particle to be loaded into the multi-tube 

reactor.” Id. col.6 ll.57-60, col.7 ll.9-22. This spacing is designed “for collecting dust 

and partial particles.” Id. col.6 ll.60-61, col.7 ll.22-23. Independent claims 3 and 4 and 

dependent claims 5, 6 and 7 provide: 

3. A method for loading solid particles into a multi-tube reactor, 

comprising: 

a) positioning a plurality of discrete plates on top of an upper 

tube sheet of the multi-tube reactor, whereby the plates 

2007-1443 2 
rest on and substantially cover at least a portion of the 

upper tube-sheet and provide a spacing between adjacent 

plates having a width not greater than the smallest 

dimension of a single particle to be loaded into the multitube reactor, the spacing for collecting dust and partial 

particles, wherein each plate comprises: an aperture that 

corresponds to a corresponding reactor tube and has a 

diameter not greater than 95% of the inner diameter of the 

corresponding reactor tube and not smaller than 1.1 times 

the greatest dimension of a single particle to be loaded 

into the corresponding reactor tube; and means for 

holding the aperture in correspondence with the 

corresponding reactor tube; 

b) pouring the particles over at least a portion of the plurality 

of plates covering the tube-sheet; 

c) sweeping the particles through the apertures in the plates 

into the corresponding reactor tubes, whereby the 

particles fill the reactor tubes in a uniform manner and 

bridging is avoided; 

d) removing residual particles and any dust remaining on the 

plates and in the spacing between adjacent plates; and 

e) removing the plurality of plates. 

4. A method for loading solid particles into a multi-tube reactor, 

comprising: 

a) positioning a plurality of discrete plates on top of an upper 

tube sheet of the multi-tube reactor, whereby the plates 

substantially cover at least a portion of the upper tubesheet and each plate has a shape that provides a spacing 

between adjacent plates having a width not greater than 

the smallest dimension of a single particle to be loaded 

into the multi-tube reactor, the spacing for collecting dust 

and partial particles; 

b) pouring the particles over at least a portion of the plurality 

of plates covering the tube-sheet; 

c) sweeping the particles through apertures in the plates into 

reactor tubes of the multi-tube reactor, whereby a size of 

the apertures is selected for filling the reactor tubes with 

the particles in a uniform manner and avoiding bridging; 

d) removing residual particles and any dust remaining on the 

plates and in the spacing between adjacent plates; and 

 e) removing the plurality of plates. 

5. The method of claim 4, wherein the positioning the plurality of plates 

comprises inserting fixing means of the plates into a top of reactor 

2007-1443 3 
tubes of the multi-tube reactor to provide for alignment of apertures in 

the plates with corresponding reactor tubes. 

6. The method of claim 4, wherein the sweeping the particles is 

performed mechanically. 

 

7. The method of claim 4, wherein the sweeping the particles is 

performed manually. 

 

’660 patent col.6 ll.52-67, col.7 ll.1-23, col.8 ll.1-21. 

 The ’660 patent is a divisional of a parent application which was issued as U.S. 

Patent No. 6,409,977 (the “’977 patent”). Initially, the independent claims of the ’977 

patent did not contain a spacing element. Instead, a single dependent claim contained 

a limitation requiring the distance between neighboring plates to be “smaller than the 

greatest dimension of a single particle to be loaded.” In addition to rejecting the 

independent claims, the examiner rejected the dependent claim stating: 

[P]roviding a distance between the neighboring segmented plates was 

well known in the analogous art at the time of the invention for the purpose 

of allowing for plate expansion. It would have been obvious to one of 

ordinary skill in the art at the time the invention was made to provide a 

distance between the neighboring polygonal plates, for the purpose of 

allowing for plate expansion. As the specification is silent to unexpected 

results it would have been obvious to one of ordinary skill in the art at the 

time the invention was made to provide any distance between the 

neighboring plates, including a distance being smaller than the greatest 

dimension of a single particle to be loaded. 

Office Action of the Patent and Trademark Office 8 (May 23, 2000). 

 Cat Tech then canceled the dependent claim and amended the independent 

claims to include a limitation requiring “an inter-plate spacing having a width not greater 

than the smallest dimension of a single particle to be loaded into said reactor, said interplate spacing effective in collecting dust and partial particles.” In distinguishing its 

invention from the prior art, Cat Tech stated: 

2007-1443 4 
Adjacent plates do not touch fully, but are separated by a gap, each gap 

having a width that is less than the smallest dimension of a particle to be 

loaded. The gaps are highly effective in collecting dust and partial 

particles, both of which are undesirable . . . . 

None of the prior art teach or disclose dust collection. . . . The present 

invention is able to collect dust and chips because multiple channels are 

formed when the plates are pieced together. The smaller the plates, the 

greater the number of channels per template. 

Remarks Accompanying Preliminary Amendment 3 (Aug. 20, 2001). 

 The claims were thereafter allowed. In explaining the reason for allowance, the 

examiner stated: “The prior art neither teaches nor suggests a loading device, as 

claimed, wherein each plate is displaced from adjacent plates by spacing having a width 

not greater than the smallest dimension of a single particle to be loaded wherein said 

spacing function [is] to collect dust and partial particles.” 

 When Cat Tech filed its application for the ’660 patent, it was preliminarily 

amended to contain four independent claims, each containing a requirement for spacing 

having a width “not greater than the smallest dimension of a single particle.” The 

examiner allowed one independent claim, which limited the loading device to a 

polygonal shape, but rejected the remaining independent claims, stating that the 

“specification, while being enabling for a loading device having a polygonal shape, does 

not reasonably provide enablement for any shape.” In response, Cat Tech argued: 

[T]he claims define the invention based on spacing between adjacent 

plates and not whether the shape of the plate used to achieve this 

spacing is, or is not, polygonal. . . . [T]he present application 

contemplates this aspect of the invention by stating that “a small interplate space is convenient for ease of handling and for accommodating 

the dust which inevitably develops during the loading work, thus 

avoiding that the dust is swept into the reactor pipes.” Additionally, the 

specification . . . states that “the gap was sufficiently small as not to 

allow any whole catalyst particles to enter, but allow small chips and 

broken pieces of catalyst.” Moreover, Applicants note that the 

2007-1443 5 
Examiner has indicated in the reasons for allowance that this spacing is 

not taught or suggested by the prior art. 

 Response to Aug. 16, 2004 Patent and Trademark Office Action 7 (Nov. 11, 2004). 

 Thereafter, the application was allowed. The ’660 patent issued on June 14, 

2005. 

I. TubeMaster’s Accused Method

TubeMaster has developed a method of putting catalyst into reactor tubes using 

loading devices known as Outage Loading Equipment (“OLE’TM”). TubeMaster has 

designed four different configurations for its OLE’TM devices, and has generated 

AutoCAD® drawings for each of its configurations. While all four configurations employ 

circular plates, two of the configurations use circular plates with tab-like projections. In 

each of the four configurations, some of the spaces between adjacent plates are large 

enough to allow whole pieces of catalyst to fall between the plates. 

In May 2005, one month prior to the issuance of the ’660 patent, TubeMaster 

used configuration 3 to load catalyst. This is the only instance in which the accused 

device has been used. When it was used, whole pieces of catalyst fell into the spaces 

between the plates. 

Each reactor is different because the tube diameter, the spacing between tubes 

and the size and shape of catalyst particles can vary significantly. Because 

TubeMaster’s OLE’TM loading devices are customized based upon the dimensions of 

each customer’s reactor, it does not manufacture its devices until it receives an order 

from a customer specifying the appropriate dimensions. 

 TubeMaster’s four loading device configurations are designed “to cover virtually 

all of the reactor configurations that might be encountered at customers’ facilities.” 

2007-1443 6 
Declaration of TubeMaster President Cliff Johns 2 (Mar. 7, 2007) (emphasis added). 

When TubeMaster used its loading device in May 2005, it selected a loading device 

configuration after it received the dimensions of the reactor from its customer. 

TubeMaster asserts that “[a] similar process would be undertaken again if and when 

TubeMaster receives another order for catalyst loading services.” Id. at 3. 

II. Cat Tech’s Infringement Action 

 On August 30, 2005, Cat Tech brought suit against TubeMaster, alleging 

infringement of the ’660 patent by TubeMaster’s OLE’TM loading devices. TubeMaster 

counterclaimed, seeking a declaration that its devices did not infringe the ’660 patent 

and that the patent was invalid and unenforceable. Cat Tech subsequently amended its 

complaint, seeking a declaratory judgment of infringement. 

The district court held a hearing to construe disputed claim language, see Cat 

Tech LLC v. TubeMaster, Inc., No. H-05-3050 (S.D. Tex. Oct. 30, 2006), and the parties 

then filed cross-motions for summary judgment. The court granted TubeMaster’s 

motion for a declaration of non-infringement as to configurations 1, 2 and 4. Cat Tech 

Inc v. TubeMaster., Inc., No. H-05-3050, slip op. at 3-6 (S.D. Tex. May 22, 2007) 

(“Summary Judgment Decision”). The court concluded that a “live controversy” existed 

as to those configurations because TubeMaster was prepared to produce devices using 

those configurations as soon as it received an order with the appropriate dimensions. 

Id. Although configuration 3 was the only configuration that had been commercially 

implemented, the court determined that it had authority to grant declaratory relief 

because “TubeMaster ha[d] taken sufficient concrete steps to conduct loading activity 

with Configurations 1, 2 and 4.” Id. at 5. 

2007-1443 7 
The district court also concluded that use of configuration 3 did not infringe the 

’660 patent. It determined that the spacing limitation of the relevant claims requires a 

“spacing that is not large enough to allow whole particles to fall through.” Id. at 9. 

Because TubeMaster’s configuration 3 uses spacing that allows whole catalyst particles 

to fall through, it does not meet this spacing limitation. 

After the trial court certified its judgment for immediate appeal pursuant to Federal 

Rule of Civil Procedure 54(b), Cat Tech timely appealed to this court. We have 

jurisdiction under 28 U.S.C. § 1295 (a)(1). 

Discussion

 We turn first to the issue of whether the district court could issue a declaratory 

judgment of non-infringement as to TubeMaster’s configurations 1, 2 and 4. Whether 

an actual controversy exists under the Declaratory Judgment Act, 28 U.S.C. § 2201(a),

is a question of law that is subject to plenary appellate review. Teva Pharms. USA, Inc. 

v. Novartis Pharms. Corp., 482 F.3d 1330, 1336 (Fed. Cir. 2007); Amana Refrigeration, 

Inc. v. Quadlux, Inc., 172 F.3d 852, 855 (Fed. Cir. 1999). 

I. Declaratory Judgment Jurisdiction 

The Declaratory Judgment Act can prevent patent owners from “brandishing a 

Damoclean threat with a sheathed sword.” Arrowhead Indus. Water, Inc. v. Ecolochem, 

Inc., 846 F.2d 731, 735 (Fed. Cir. 1988). Before declaratory relief was available, 

“competitors were ‘victimized’ by patent owners who engaged in ‘extra-judicial patent 

enforcement with scare-the-customer-and-run tactics that infect[ed] the competitive 

environment of the business community with uncertainty and insecurity.’” Teva Pharms., 

2007-1443 8 
482 F.3d at 1336 n.2 (quoting Arrowhead, 846 F.2d at 735). The Declaratory Judgment 

Act, in relevant part, provides: 

In a case of actual controversy within its jurisdiction . . . any court of 

the United States, upon the filing of an appropriate pleading, 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) (2000). 

 Passage of the Act was intended “to prevent avoidable damages from being 

incurred by a person uncertain of his rights and threatened with damage by delayed 

adjudication.” Minn. Mining & Mfg. Co. v. Norton Co., 929 F.2d 670, 673 (Fed. Cir. 

1991). The Act is not, however, an independent basis for jurisdiction. Skelly Oil Co. v. 

Phillips Petroleum Co., 339 U.S. 667, 671-72 (1950). Its remedy may lie only if the 

court has jurisdiction from some other source. Aetna Life Ins. Co. v. Haworth, 300 U.S. 

227, 240 (1937); Genentech, Inc. v. Eli Lilly & Co., 998 F.2d 931, 943 (Fed. Cir. 1993). 

 The availability of declaratory relief is limited, moreover, by Article III of the 

Constitution, which restricts judicial power to the adjudication of “Cases” or 

“Controversies.” U.S. Const. Art. III, § 2; see Aetna Life Ins., 300 U.S. at 240

(emphasizing that the Declaratory Judgment Act extends only “to controversies which 

are such in the constitutional sense”). Because of this case or controversy requirement, 

a court may not adjudicate “a difference or dispute of a hypothetical or abstract 

character” or “one that is academic or moot.” Aetna Life Ins., 300 U.S. at 240. 

 There is, however, no facile, all-purpose standard to police the line between 

declaratory judgment actions which satisfy the case or controversy requirement and 

those that do not. See Teva Pharms., 482 F.3d at 1338-39; Arrowhead, 846 F.2d at 

2007-1443 9 
736. To the contrary, “[t]he difference between an abstract question and a ‘controversy’ 

contemplated by the Declaratory Judgment Act is necessarily one of degree, and it 

would be difficult, if it would be possible, to fashion a precise test for determining in 

every case whether there is such a controversy.” Md. Cas. Co. v. Pac. Coal & Oil Co., 

312 U.S. 270, 273 (1941). Accordingly, the analysis must be calibrated to the particular 

facts of each case, with the fundamental inquiry being “‘whether the facts alleged, under 

all the circumstances, show that there is a substantial controversy, between parties 

having adverse legal interests, of sufficient immediacy and reality to warrant the 

issuance of a declaratory judgment.’” MedImmune, Inc. v. Genentech, Inc., 549 U.S. 

118, 127 S.Ct. 764, 771 (2007) (quoting Md Cas. Co., 312 U.S. at 273). 

 Until recently, this court applied a two-prong test for determining the existence of 

declaratory judgment authority. See, e.g., Teva Pharms. USA, Inc. v. Pfizer Inc., 395 

F.3d 1324, 1332 (Fed. Cir. 2005); Super Sack Mfg. Corp. v. Chase Packaging Corp., 57 

F.3d 1054, 1058 (Fed. Cir. 1995). But see Teva Pharms., 395 F.3d at 1339-42 (Mayer, 

J., dissenting) (“We have never said that the traditional two-part test must be satisfied in 

every instance to find a justiciable case or controversy.”). The first prong examined 

whether conduct by the patentee created a “reasonable apprehension” of suit on the 

part of the declaratory judgment plaintiff. Super Sack, 57 F.3d at 1058. The second 

prong focused on the declaratory judgment plaintiff’s conduct, and examined whether

there had been “meaningful preparation” to conduct potentially infringing activity. 

Arrowhead, 846 F.2d at 736; DuPont Merck Pharm. Co. v. Bristol-Myers Squibb Co., 62 

F.3d 1397, 1401 (Fed. Cir. 1995). 

2007-1443 10 
 In MedImmune, the Supreme Court rejected the first prong of our declaratory 

judgment standard, concluding that the “reasonable apprehension of suit test” was 

unduly restrictive. 127 S.Ct. at 770-77. The Court explained that whether a declaratory 

judgment action contains an Article III controversy must be determined based on “all the 

circumstances," not merely on whether the declaratory judgment plaintiff is under a 

reasonable apprehension of suit.1 Id. at 771-77. 

 In the wake of MedImmune, several opinions of this court have reshaped the 

contours of the first prong of our declaratory judgment jurisprudence. See e.g., Caraco 

Pharm. Labs., Ltd. v. Forest Labs., Inc., No. 2007-1404, 2008 U.S. App. LEXIS 6838 

(Fed. Cir. Apr. 1, 2008); Micron Tech., Inc. v. Mosaid Techs., Inc., No. 2007-1080, 2008 

U.S. App. LEXIS 4387 (Fed. Cir. Feb. 29, 2008); Adenta GmbH v. OrthoArm, Inc., 501 

F.3d 1364 (Fed. Cir. 2007); Sony Elecs., Inc. v. Guardian Media Techs., Ltd., 497 F.3d 

1271 (Fed. Cir. 2007); Teva Pharms. USA, Inc. v. Novartis Pharms. Corp., 482 F.3d 

1330 (Fed. Cir. 2007); SanDisk Corp. v. STMicroelectonics, Inc., 480 F.3d 1372, 1380 

(Fed. Cir. 2007). The present dispute, however, involves the second rather than the first 

 

 1

 The declaratory judgment plaintiff in MedImmune was a patent licensee 

who sought a declaratory judgment of non-infringement, patent invalidity and patent 

unenforceability. The licensee, however, continued to pay royalties under its license 

agreement with the patent owner and therefore had no “reasonable apprehension” of 

suit. 127 S.Ct. at 772. The Supreme Court determined that the case presented a 

justiciable controversy, specifically rejecting the notion that Article III jurisdiction is 

defeated when a declaratory judgment plaintiff voluntarily stops or avoids the allegedly 

infringing activity. Id. at 772-74. The Court made clear that “[t]he dilemma posed by . . . 

putting the challenger to the choice between abandoning his rights or risking 

prosecution . . . is ‘a dilemma that it was the very purpose of the Declaratory Judgment 

Act to ameliorate.’” Id. at 773 (quoting Abbott Labs. v. Gardner, 387 U.S. 136, 152 

(1967)). 

2007-1443 11 
prong of our declaratory judgment test.2

 This court has yet to fully consider 

MedImmune’s impact on this prong.3

 See SanDisk, 480 F.3d at 1380 n.2 (“We . . . 

leave to another day the effect of MedImmune, if any, on the second prong.”). 

 We conclude that although MedImmune articulated a “more lenient legal 

standard” for the availability of declaratory judgment relief in patent cases, Micron 

Tech., 2008 U.S. App. LEXIS 4387 at *12, the issue of whether there has been 

meaningful preparation to conduct potentially infringing activity remains an important 

element in the totality of circumstances which must be considered in determining 

whether a declaratory judgment is appropriate. See Teva Pharms., 482 F.3d at 1339 

(MedImmune requires that a court look at “all the circumstances” to determine whether 

a justiciable Article III controversy exists.). If a declaratory judgment plaintiff has not 

taken significant, concrete steps to conduct infringing activity, the dispute is neither 

“immediate” nor “real” and the requirements for justiciability have not been met. See

Lang v. Pac. Marine & Supply Co., 895 F.2d 761, 764 (Fed Cir. 1990) (emphasizing that 

 2 The first prong of our pre-MedImmune declaratory judgment test is not at 

issue here because there is no dispute that it was met. Summary Judgment Decision, 

slip op. at 5. Cat Tech “sued TubeMaster for infringement and [sought] a declaratory 

judgment that TubeMaster’s use of its OLE’TM loading devices infringes the ‘660 patent.” 

Id. at 2-3; see also Cat Tech’s Opposition to TubeMaster’s Motion for Partial Summary 

Judgment 7 n.5 (Feb. 12, 2007) (stating that the reasonable apprehension of suit prong 

“is not disputed in the present litigation”). “If defendant has expressly charged a current 

activity of the plaintiff as an infringement, there is clearly an actual controversy, certainty 

has rendered apprehension irrelevant, and one need say no more.” Arrowhead, 846 

F.2d at 736. 

 3 Benitec Austl., Ltd. v. Nucleonics, Inc., 495 F.3d 1340, 1343-44 (Fed. Cir. 

2007), a decision issued after MedImmune, determined that a dispute was not “of 

sufficient immediacy and reality” to warrant declaratory relief, but did not directly 

address the continued viability of the second prong of this court’s pre-MedImmune test. 

2007-1443 12 
the test for justiciability “looks to the accused infringer’s conduct and ensures that the 

controversy is sufficiently real and substantial”). 

A. Immediacy 

A party may not “obtain a declaratory judgment merely because it would like an 

advisory opinion on whether it would be liable for patent infringement if it were to initiate 

some merely contemplated activity.” Arrowhead, 846 F.2d at 736. Thus, although a 

party need not have engaged in the actual manufacture or sale of a potentially infringing 

product to obtain a declaratory judgment of non-infringement, there must be a showing 

of “meaningful preparation” for making or using that product. Id.; DuPont Merck Pharm., 

62 F.3d at 1401; see also BP Chems. Ltd v. Union Carbide Corp., 4 F.3d 975, 978 (Fed. 

Cir. 1993) (requiring “present activity which could constitute infringement or concrete 

steps taken with the intent to conduct such activity”); Goodyear Tire & Rubber, Co. v. 

Releasomers, Inc., 824 F.2d 953, 955-56 (Fed. Cir. 1987) (requiring that the plaintiff 

“actually have either produced the device or have prepared to produce that device”). In 

general, the greater the length of time before potentially infringing activity is expected to 

occur, “the more likely the case lacks the requisite immediacy.” Sierra Applied Scis., 

Inc. v. Advanced Energy Indus., Inc., 363 F.3d 1361, 1379 (Fed. Cir. 2004). 

In Benitec Austl., Ltd. v. Nucleonics, Inc., 495 F.3d 1340, 1346-50 (Fed. Cir. 

2007), we affirmed the dismissal of a declaratory judgment counterclaim where a party 

who sought declaratory relief had professed plans to engage in human gene-therapy 

treatment, but such activities could not be considered infringing until a new drug 

application ("NDA") was filed with the Food and Drug Administration (“FDA”). The 

plaintiff, who sought declaratory relief in 2005, did not anticipate filing an NDA until "at 

2007-1443 13 
least 2010-2012, if ever," and its current activities consisted entirely of developing and 

submitting preliminary information to the FDA. Id. at 1346. Because it was uncertain 

when, if ever, the declaratory plaintiff would engage in potentially infringing activity, the 

dispute did not present a case or controversy of sufficient immediacy to support a 

declaratory judgment. Id. at 1346-47. 

Similarly, Sierra, 363 F.3d at 1378-81, concluded that a dispute lacked sufficient 

immediacy where the declaratory plaintiff presented no evidence that it had built a 

prototype of its “Billings 150 kW power supply” until at least a year after the 

commencement of suit. And Telectronics Pacing Sys., Inc. v. Ventritex, Inc., 982 F.2d 

1520, 1527 (Fed. Cir. 1992), affirmed a dismissal of a defibrillator component 

manufacturer's claim for future patent infringement where clinical trials of the accused 

product had just begun and it was “years away” from potential FDA approval. See also

Lang, 895 F.2d at 764 (The accused infringing ship hull would not be ready for at least 

nine months after the complaint was filed); Jervis B. Webb Co. v. S. Sys., Inc., 742 F.2d 

1388, 1399 (Fed. Cir. 1984) (The accused device had never been used and there was 

insufficient evidence to show it would be used in the future). 

In the present case, by contrast, TubeMaster has taken significant, concrete 

steps to conduct loading activity with configurations 1, 2 and 4. It has developed two 

basic loading device designs—one with circular plates and one with circular plates with 

tabs—and has developed four loading device configurations. TubeMaster has 

generated AutoCAD® drawings for each of its four configurations. 

Each reactor is different because the tube diameter, the spacing between tubes 

and the size and shape of catalyst particles can vary significantly. Because 

2007-1443 14 
TubeMaster’s loading device designs are customized based upon the dimensions of 

each customer’s reactor, it can take no further steps toward manufacturing its loading 

devices until it receives an order from a customer with the appropriate dimensions. 

TubeMaster has already successfully manufactured and delivered a loading 

device using configuration 3. See Interdynamics, Inc. v. Wolf, 698 F.2d 157, 169-74 (3d 

Cir. 1982) (Declaratory relief appropriate where the manufacturer of a rear window 

defroster had produced a prior version of its product.); see also Super Prods. Corp. v. D 

P Way Corp., 546 F.2d 748, 754-55 (7th Cir. 1976) (Declaratory relief appropriate where 

the plaintiff had a business enterprise specifically directed to the manufacture and sale 

of a potentially infringing product.). It is prepared to produce loading devices using 

configurations 1, 2 and 4 as soon as it receives an order with the appropriate 

dimensions. Furthermore, it expects that it can produce devices using these 

configurations “within a normal delivery schedule” once it receives an order. 

Constitutionally mandated immediacy requirements have been satisfied because once 

the threat of liability to Cat Tech has been lifted, it appears likely that TubeMaster can 

expeditiously solicit and fill orders for loading devices using configurations 1, 2 and 4. 

B. Reality 

The dispute between TubeMaster and Cat Tech also meets constitutionally 

mandated “reality” requirements. In the context of patent litigation, the reality 

requirement is often related to the extent to which the technology in question is 

“substantially fixed” as opposed to “fluid and indeterminate” at the time declaratory relief 

is sought. Sierra, 363 F.3d at 1379. Accordingly, “[t]he greater the variability of the 

subject of a declaratory-judgment suit, particularly as to its potentially infringing 

2007-1443 15 
features, the greater the chance that the court's judgment will be purely advisory, 

detached from the eventual, actual content of that subject—in short, detached from 

eventual reality.” Id.; see also Int'l Harvester Co. v. Deere & Co., 623 F.2d 1207, 1216 

(7th Cir. 1980) (“Our concern is not that the [product in question] will never be produced, 

but rather that because of the relatively early stage of its development, the design which 

is before us now may not be the design which is ultimately produced and marketed.”). 

In Telectronics, we affirmed a dismissal of a declaratory judgment action where 

clinical trials of the accused device had just begun and “[t]here was no certainty that the 

device when approved [by the FDA] would be the same device that began clinical trials.” 

982 F.2d at 1525-27. Likewise, in Sierra we found that jurisdictional reality 

requirements were not met where development of the power supply in question was “at 

an early stage” and its design was “fluid and indeterminate” when the complaint was 

filed. 363 F.3d at 1379-80. In Benitec, we also found no declaratory judgment basis 

where the declaratory plaintiff had only a “vaguely defined” plan to expand into animal 

husbandry and veterinary products and the technology in question was still in a 

“nascent” stage. 495 F.3d at 1349 

Unlike the technology involved in Telectronics, Sierra and Benitec, which was 

fluid and in an early stage of development, TubeMaster’s technology is “substantially 

fixed.” TubeMaster’s four basic loading device designs are designed “to cover virtually 

all of the reactor configurations that might be encountered at customers’ facilities.” 

Thus, TubeMaster does not expect to make substantial modifications to its loading 

device designs once production begins. The dispute with Cat Tech is “real,” not 

hypothetical, because it appears likely that, once the cloud of liability for infringement is 

2007-1443 16 
eliminated, the accused products can be produced without significant design change. 

See Interdynamics, 698 F.2d at 174 (proceeding where the plaintiff planned to market a 

product that it would “be able to manufacture relatively quickly”). 

Cat Tech argues that there is no “live controversy” regarding configurations 1, 2 

and 4 because TubeMaster has made “no disclosure of those configurations to 

customers or potential customers.” Evidence that no preparations have been made to 

advertise or sell a potentially infringing device may, under certain circumstances, 

indicate that a dispute lacks the requisite immediacy. See Sierra, 363 F.3d at 1379 

(considering the fact that there was no “existing or draft advertising literature” for the 

device in question in determining that the dispute was non-justiciable); Lang, 895 F.2d 

at 764-65 (“[T]he accused infringers had not distributed sales literature, prepared to 

solicit orders, or engaged in any activity indicating that the ship would soon be ready for 

sea.”). MedImmune makes clear, however, that “all the circumstances” must be 

considered when making a justiciability determination. 127 S.Ct. at 771. Where, as 

here, there is cogent evidence that a declaratory plaintiff has made meaningful 

preparation to conduct potentially infringing activity, a showing that the plaintiff has 

prepared draft sales literature or otherwise disclosed its products to potential customers 

is not an indispensable prerequisite. See Interdynamics, 698 F.2d at 172 (sufficient that 

although the plaintiff “had not yet advertised or solicited orders for its proposed new 

product,” there was significant evidence that the plaintiff intended to manufacture it). 

C. District Court Discretion 

Even assuming that the immediacy and reality prerequisites for declaratory 

judgment relief have been met, the district court’s exercise of its declaratory judgment 

2007-1443 17 
authority is discretionary. SanDisk, 480 F.3d at 1383; Cardinal Chem. Co. v. Morton, 

Int’l, Inc., 508 U.S. 83, 95 n.17 (1993). “When there is no actual controversy, the court 

has no discretion to decide the case. When there is an actual controversy and thus 

jurisdiction, the exercise of that jurisdiction is discretionary.” Spectronics Corp. v. H.B.

Fuller Co., 940 F.2d 631, 634 (Fed. Cir. 1991). In deciding whether to entertain a 

declaratory judgment request, a court must determine whether resolving the case 

serves the objectives for which the Declaratory Judgment Act was created. Capo, Inc. 

v. Dioptics Med. Prods., Inc., 387 F.3d 1352, 1355 (Fed. Cir. 2004); EMC Corp. v. 

Norand Corp., 89 F.3d 807, 813-14 (Fed. Cir. 1996). 

 A plaintiff need not “bet the farm, or . . . risk treble damages . . . before seeking a 

declaration of its actively contested legal rights.” MedImmune, 127 S.Ct. at 775. 

Absent a declaratory judgment of non-infringement, TubeMaster will be forced to “bet 

the farm” by making the “in terrorem choice,” see Arrowhead, 846 F.2d at 735, between 

a growing potential liability to Cat Tech and abandoning its catalyst loading activities. 

Because this is precisely the type of “‘dilemma that it was the very purpose of the 

Declaratory Judgment Act to ameliorate,’” MedImmune, 127 S.Ct. at 773 (quoting 

Abbott Labs., 387 U.S. at 152), the district court properly exercised its discretion to 

issue a declaratory judgment of non-infringement as to configurations 1, 2 and 4.4

 See

SanDisk, 480 F.3d at 1381 (“Article III jurisdiction may be met where the patentee takes 

a position that puts the declaratory judgment plaintiff in the position of either pursuing 

arguably illegal behavior or abandoning that which he claims a right to do.”); Goodyear, 

 4 Cat Tech does not challenge the district court’s finding of non-infringement 

by TubeMaster’s configurations 1, 2 and 4. The only issue regarding these 

configurations is whether the district court could issue a declaratory judgment of noninfringement. 

2007-1443 18 
824 F.2d at 956 (Declaratory judgment should be used “to provide the allegedly 

infringing party relief from uncertainty and delay regarding its legal rights.”); Wembley,

Inc. v. Superba Cravats, Inc., 315 F.2d 87, 90 (2d Cir. 1963) (“[I]t would be economically 

wasteful to require a plaintiff to embark on an actual program of manufacture, use or 

sale which may turn out to be [infringing].”). 

II. Summary Judgment of Non-Infringement

We next turn to the trial court’s determination of non-infringement as to 

TubeMaster’s configuration 3, the configuration used to load catalyst in May of 2005. 

The central issue regarding configuration 3 is whether it meets the “spacing element” of 

the ’660 patent. The claims of the ’660 patent call for “a spacing between adjacent 

plates having a width not greater than the smallest dimension of a single particle to be 

loaded into the multi-tube reactor, the spacing for collecting dust and partial particles.” 

’660 patent col.6 ll.57-61, col.7 ll.19-23. The district court construed this limitation to 

require “spacing that is not large enough to allow whole particles to fall through.” 

Summary Judgment Decision, slip op. at 9. 

Cat Tech challenges the district court’s claim construction, arguing that the claims 

do not require that all spaces between plates be smaller than the width of a whole 

catalyst particle. According to Cat Tech, the claims require only that there be one point 

between plates (a “pinch point”) that is of the requisite size. 

We are not persuaded by Cat Tech’s “pinch point” argument. The plain language 

of the claims, the specification and the prosecution history support the district court’s 

determination that the ’660 patent requires that every point between adjacent plates be 

smaller than the dimensions of a whole catalyst particle. 

2007-1443 19 
A. Claim Language 

The appropriate starting point for claim construction “is always with the language 

of the asserted claim itself.” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 

1186 (Fed. Cir. 1998); z4 Techs., Inc. v. Microsoft Corp., 507 F.3d 1340, 1348 (Fed. Cir. 

2007). In general, words used in a claim are accorded their ordinary and customary 

meaning. Honeywell Int'l Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 992 (Fed. 

Cir. 2007); Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed. 

Cir. 1999). “[T]he ordinary and customary meaning of a claim term is the meaning that 

the term would have to a person of ordinary skill in the art in question at the time of the 

invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). The 

record contains no persuasive evidence that the word "spacing" has a specially defined 

meaning in the field of art encompassed by the '660 patent. Thus, the ordinary and 

customary meaning attributed to this term by those of ordinary skill in this art at the time 

of invention “involves little more than the application of the widely accepted meaning of 

commonly understood words.” Id. at 1314. 

The term “a spacing” is used in common parlance and its meaning is not difficult to 

ascertain. “Spacing” means the “fixing or arranging of spaces.” Random House 

Webster’s Unabridged Dictionary 1827 (2d ed. 2001); see also The Am. Heritage 

Dictionary of the English Language 1665 (4th ed. 2000) (“Spacing” is “the act of 

arranging with intervening spaces.”). Thus, when the claims call for “a spacing” 

between adjacent plates that is not greater than the width of a whole catalyst particle, it 

means that the plates are “fixed” or “arranged” so that the distance between them will 

not be greater than the width of a whole catalyst particle. In other words, the gaps 

2007-1443 20 
between plates will be narrower than whole pieces of catalyst. See White v. Dunbar, 

119 U.S. 47, 52 (1886) (“The claim is a statutory requirement, prescribed for the very 

purpose of making the patentee define precisely what his invention is; and it is unjust to 

the public . . . to construe it in a manner different from the plain import of its terms.”). 

 “[C]laims are interpreted with an eye toward giving effect to all terms in the claim.” 

Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006). Cat Tech’s strained 

“pinch point” construction of the phrase “a spacing” renders an important claim 

limitation—the requirement that there be a spacing narrower than the width of a whole 

catalyst particle—functionally meaningless. It would be pointless to require that one 

inter-plate space be narrower than a whole catalyst particle if the other inter-plate 

spaces do not meet this sizing limitation. Having one narrow gap between plates would 

be an exercise in futility because whole catalyst particles would simply fall into the other, 

wider gaps between the plates. If the claim limitation requiring “a spacing” between 

plates that is narrower than a whole catalyst particle is not to be rendered functionally 

meaningless, that limitation must be construed to cover all of the gaps between plates. 

See Ortho-McNeil Pharm., Inc. v. Caraco Pharm. Labs., Ltd., 476 F.3d 1321, 1327-28 

(Fed. Cir. 2007) (construing the ratios in one claim in a way that would not render the 

ratios of another claim meaningless); Bicon, 441 F.3d at 950-51 (refusing to allow a 

patentee to argue that characteristics specifically described in a claim were merely 

“superfluous”); Elekta Instrument S.A. v. O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1305, 

1307 (Fed. Cir. 2000) (concluding that claim language requiring gamma units with 

radiation sources between 30 and 45 degrees unambiguously excluded radiation 

2007-1443 21 
sources between 0 degrees and 30 degrees, because “[a]ny other conclusion renders 

the reference to 30 degrees superfluous”). 

Furthermore, claims 6 and 7 of the ’660 patent specify that the inter-plate spaces 

are designed “for collecting dust and partial particles.” ’660 patent col. 6 ll.60-61, col. 7 

ll.22-23 (emphasis added). If the ’660 patent were construed, as Cat Tech advocates, 

to require only one point between adjacent plates that is smaller than a particle to be 

loaded, it is clear that whole catalyst particles would fall between the plates. The interplate spaces would then collect both whole and partial catalyst particles, not just partial 

particles as specified in the claims. See Unique Concepts, Inc. v. Brown, 939 F.2d 

1558, 1563 (Fed. Cir. 1991) (“When the language of a claim is clear . . . and a different 

interpretation would render meaningless express claim limitations, we do not resort to 

speculative interpretation based on claims not granted.”). 

B. Written Description and Prosecution History 

 We see nothing in the specification which would support Cat Tech’s strained 

“pinch point” construction. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 

1582 (Fed. Cir. 1996) (“[I]t is always necessary to review the specification to determine 

whether the inventor has used any terms in a manner inconsistent with their ordinary 

meaning."). The specification of the ’660 patent never describes or suggests an interplate spacing which is narrower than the width of a whole particle at one point, but 

greater than the width of a whole catalyst particle at another. Instead, the specification 

indicates that there will be “small” gaps between plates that are useful “for 

accommodating the dust which inevitably develops during the loading work.” ’660 

patent col.3 ll.65-67. 

2007-1443 22 
 Moreover, a claim construction requiring that all inter-plate spaces be narrower 

than the width of a whole catalyst particle finds clear support in the file history of the

’977 patent, which is the parent of the ’660 patent. See Phillips, 415 F.3d at 1317 

(“[T]he prosecution history can often inform the meaning of the claim language by 

demonstrating how the inventor understood the invention.”). When prosecuting the 

’977 patent, Cat Tech distinguished its invention from the prior art by stating that 

“[a]djacent plates do not touch fully, but are separated by a gap, each gap having a 

width that is less than the smallest dimension of a particle to be loaded.” See Remarks 

Accompanying Preliminary Amendment 2 (Aug. 20, 2001) (emphasis added). Because 

Cat Tech made clear during prosecution that “each” gap between adjacent plates was 

smaller than a whole catalyst particle, it can not now assert that only one gap between 

adjacent plates is required to meet this spacing limitation. 

C. Semantic Antics 

Cat Tech argues that the article “a” in the phrase “a spacing” means that there 

need be only one space between plates that is narrower than a whole catalyst particle. 

Cat Tech’s argument is little more than “semantic antics.” See Laitram Corp. v. 

Cambridge Wire Cloth Co., 863 F.2d 855, 857 (Fed. Cir. 1988). While it is true that the 

indefinite article “a” has been construed to mean “one or more,” see Tate Access 

Floors, Inc. v. Maxcess Techs, Inc., 222 F.3d 958, 966 n.4 (Fed. Cir. 2000), the critical 

issue here is not whether “a” means one, but whether the term “spacing” refers to a 

pinch point or the entire gap between plates. Even if the claims were construed to 

require “one spacing” between plates, the entire length of that spacing must be 

narrower than a piece of whole catalyst particle. Indeed, during prosecution Cat Tech 

2007-1443 23 
2007-1443 24 

distinguished its invention from the prior art by stating that “[t]he present invention is 

able to collect dust and chips because multiple channels are formed when the plates 

are pieced together.”5

 Remarks Accompanying Preliminary Amendment 3 (Aug. 20, 

2001) (emphasis added). Clearly, a “channel” is a space of some length rather than a 

pinch point. See, e.g., The Am. Heritage Dictionary of the English Language 311 (4th 

ed. 2000) (A “channel” is a “trench, furrow or groove.”). 

As the district court correctly concluded, the spacing element of the ’660 patent 

requires an inter-plate spacing that is smaller than the width of a whole catalyst particle. 

See Summary Judgment Decision, slip op. at 9. Because TubeMaster’s accused 

method does not meet this spacing limitation, the district court properly granted 

TubeMaster’s motion for summary judgment of non-infringement as to configuration 3. 

Conclusion

Accordingly, the judgment of the United States District Court for the Southern 

District of Texas is affirmed. 

AFFIRMED

 5

 In distinguishing its invention from the prior art, Cat Tech stated: “None of 

the prior art teach or disclose dust collection. . . . The present invention is able to collect 

dust and chips because multiple channels are formed when the plates are pieced 

together. The smaller the plates, the greater the number of channels per template.” 

Remarks Accompanying Preliminary Amendment 3 (Aug. 20, 2001) (emphasis added).