## 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 Louis ville, Kentucky, argued for defendant-appellee. With him on the brief was Robert J. Theuerkauf

. Appealed from: United States District C ourt 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 judgm ent of the United States District Court for the Southern Distric t of Texas holding th at none of four configurations of loading devices manufactured by TubeMaster, Inc. (“TubeMaster”) infringes U.S. Patent No. 6,905,660 (the “’660 pat ent”). 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 W illiam 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 undis puted. The ’660 patent describes a method for using loading devices to place catalyst par ticles into multi-tube chemical reactors. Multi-tube reactors typically contain thousa nds of long vertical tubes which are held together at either end by a perforated plat e called a tube sheet. Cat Tech’s claimed method uses a plurality of pl ates 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 “bridgi ng.” Bridging occurs when particles enter the reactor tube simultaneously and then “w edge together part way down the tube and leave a void space below them—resul ting in unevenly and incomplete ly 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 dimens ion 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 desig ned “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 parti cles into a multi-tube reactor, comprising: a) positioning a plural ity of discrete plates on top of an upper tube sheet of the multi-tube r eactor, whereby the plates

2007-1443 2rest on and substantially cove r 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 particl e to be loaded into the multitube reactor, the spacing fo r collecting dust and partial particles, wherein each plate co mprises: 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 r eactor 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 plural ity of discrete plates on top of an upper tube sheet of the multi-tube r eactor, whereby the platessubstantially 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, t he 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 m anner 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 pl urality of plates comprises inserting fixing means of the plates into a top of reactor

2007-1443 3tubes of the multi-tube reactor to pr ovide 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, co l.7 ll.1-23, co l.8 ll.1-21. The ’660 patent is a di visional of a parent applicatio n which was issued as U.S. Patent No. 6,409,977 (the “’977 patent”). Initially, the indep endent claims of the ’977 patent did not contain a spacing element. Instead, a singl e dependent claim contained a limitation requiring the dist ance between neighborin g plates to be “smaller than the greatest dimension of a singl e particle to be loaded.” In addition to rejecting the independent claims, the examiner re jected the dependent claim stating: [P]roviding a distance between t he neighboring segm ented 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, includ ing a distance being sm aller than the greatest dimension of a single particle to be loaded. Office Action of the Patent and Tr ademark Office 8 (May 23, 2000). Cat Tech then canceled the dependent claim and amended the independent claims to include a limitation requiring “an inte r-plate spacing having a width not greater than the smallest dimension of a single particle to be loaded in to 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 4Adjacent plates do not touch fully, but are separated by a gap, each gap having a width that is less than the smallest dimensio n of a particle to be loaded. The gaps are highly effect ive in collecting dust and partial particles, both of which are undesirable . . . . None of the prior art teac h or disclose dust collection. . . . The present invention is able to colle ct dust and chips becaus e multiple channels are formed when the plates are pieced toget her. The smaller the plates, the greater the number of channels per template. Remarks Accompanying Prelimin ary 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 s uggests 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 partic le to be loaded wherein said spacing function [is] to collect dust and partial particles.” When Cat Tech filed its application fo r the ’660 patent, it was preliminarily amended to contain four independent claims, each containing a requirement for spacing having a width “not greater t han the smallest dimension of a single particle.” The examiner allowed one ind ependent claim, which limited the loading device to a polygonal shape, but rejected the remain ing independent claims, stating that the “specification, while being enabling for a loading device having a polygonal shape, does not reasonably provide enablement for any s hape.” In response, Cat Tech argued: [T]he claims define the inventi on 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 inv ention 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 t he 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.” Mo reover, Applicant s note that the

2007-1443 5Examiner 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 applicati on was allowed. The ’660 pa tent 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 c onfigurations for its OLE’TM devices, and has generated AutoCAD ® drawings for each of its configurations. While all four conf igurations employ circular plates, two of the configurations use circular plates with t ab-like projections. In each of the four configurations, some of the spaces between adjacent plates are large enough to allow whole pieces of catal yst 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 ca talyst fell into the spaces between the plates. Each reactor is different because the t ube diameter, the spacing between tubes and the size and shape of catalyst particl es can vary significantly. Because TubeMaster’s OLE’TM loading devices are cu stomized based upon the dimensions of each customer’s reactor, it does not manufacture its device s until it receives an order from a customer specifying t he appropriate dimensions. TubeMaster’s four loading device configur ations are designed “to cover virtually all of the reactor configuratio ns that might be encountered at customers’ facilities.”

2007-1443 6Declaration of TubeMaster President Cliff J ohns 2 (Mar. 7, 2007) (emphasis added). When TubeMaster used its loading device in May 2005, it selected a loading device configuration after it receiv ed the dimensions of the r eactor from its customer. TubeMaster asserts that “[a] similar pr ocess would be undertaken again if and when TubeMaster receives another order fo r 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 load ing devices. TubeMaster counterclaimed, seeking a declaration that its devices did not infringe the ’660 patent and that the patent was inva lid and unenforceable. Cat Tech subsequently amended its complaint, seeking a declaratory j udgment 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 ju dgment. 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 determi ned that it had authority to grant declaratory relief because “TubeMaster ha[d] taken sufficient conc rete steps to conduct loading activity with Configurations 1, 2 and 4.” Id. at 5.

2007-1443 7The district court also concluded that us e of configuration 3 did not infringe the ’660 patent. It determined that the spacing lim itation of the relevant claims requires a “spacing that is not large enough to allo w whole particles to fall through.” Id. at 9. Because TubeMaster’s configuration 3 uses spac ing that allows whole catalyst particles to fall through, it does not m eet this spacing limitation. After the trial court certified its judgm ent for immediate appeal pursuant to Federal Rule of Civil Procedur e 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 t he district court could issue a declaratory judgment of non-infringem ent as to TubeMaster’s configur ations 1, 2 and 4. Whether an actual controversy exists unde r the Declaratory Judgment Act, 28 U.S.C. § 2201(a)
, is a question of law that is s ubject 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 prev ent 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 ‘ext ra-judicial patent enforcement with scare-the-cust omer-and-run tactics that in fect[ed] the competitive environment of the business community with uncertainty and insecurity.’” Teva Pharms. ,

2007-1443 8482 F.3d at 1336 n.2 (quoting Arrowhead , 846 F.2d at 735). T he Declaratory Judgment Act, in relevant part, provides: In a case of actual controversy withi n its jurisdiction . . . any court of the United States, u pon the filing of an appr opriate pleading, may declare the rights and other legal re lations 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 in tended “to prevent avoid able damages from being incurred by a person uncertain of his righ ts 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 ind ependent 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 declar atory relief is limited, mor eover, by Article III of the Constitution, which restrict s judicial power to the ad judication of “Cases” or “Controversies.” U.S. Const. Art. III, § 2; see Aetna Life Ins. , 300 U.S. at 240 (emphasizing that the Declar atory Judgment Act extends only “to controversies which are such in the constitutional sense”). Becaus e 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 9736. To the contrary, “[t]he difference between an abstract question and a ‘controversy’ contemplated by the Declarat ory Judgment Act is necessar ily one of degree, and it would be difficult, if it would be possible, to fashion a pr ecise 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 in quiry being “‘whether the facts alleged, under all the circumstances, show that there is a substantial controve rsy, between parties having adverse legal interests, of suffici ent 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 sa id that the traditional two-par t 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 prepar ation” 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 10In MedImmune , the Supreme Court rejected the first prong of our declaratory judgment standard, concluding that the “reasonable apprehens ion 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 contro versy 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 (F ed. 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. ST Microelectonics, Inc. , 480 F.3d 1372, 1380 (Fed. Cir. 2007). The present dispute, however, involv es 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 theref ore had no “reasonable apprehension” of suit. 127 S.Ct. at 772. The Supreme C ourt determined that t he case presented a justiciable controversy, specif ically rejecting the notion t hat Article III jurisdiction is defeated when a declaratory judgment plaintiff vo luntarily stops or av oids the allegedly infringing activity. Id. at 772-74. The Court made clear t hat “[t]he dilemma posed by . . . putting the challenger to the choice between abandoning hi s rights or risking prosecution . . . is ‘a dilemma that it wa s the very purpose of t he Declaratory Judgment Act to ameliorate.’” Id. at 773 (quoting Abbott Labs. v. Gardner , 387 U.S. 136, 152 (1967))

.

2007-1443 11prong of our declarato ry 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 declara tory 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 conduc t potentially infringing activity remains an important element in the totality of circumstances which must be considered in determining whether a declaratory j udgment 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 contro versy exists.). If a declaratory judgment plaintiff has not taken significant, concrete steps to conduct in fringing 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 di spute that it was met. Summary Judgment Decision , slip op. at 5. Cat Tech “sued TubeMaste r for infringement and [sought] a declaratory judgment that TubeMaster’s use of its OLE’TM l oading devices infringes the ‘660 patent.” Id. at 2-3; see also Cat Tech’s Opposition to TubeMas ter’s Motion for Partial Summary Judgment 7 n.5 (Feb. 12, 2007) (stating that the reasonable apprehens ion of suit prong “is not disputed in the present litigation”). “If defendant has expressly charged a current activity of the plaintiff as an infringement, ther e is clearly an actual controversy, certainty has rendered apprehension irrelevan t, 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 viabi lity of the second prong of this court’s pre- MedImmune test.

2007-1443 12the test for justiciability “looks to the accu sed infringer’s conduct and ensures that the controversy is sufficiently real and substantial”). A. Immediacy A party may not “obtain a declaratory j udgment merely because it would like an advisory opinion on whether it would be liable fo r 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 declarator y judgment of non-infringemen t, there must be a showing of “meaningful preparation” for ma king 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 potent ially infringing activi ty 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 dismissa l of a declaratory judgment counterclaim where a party who sought declaratory relief had professe d plans to engage in human gene-therapy treatment, but such activities could not be considered infringing until a new drug application ("NDA") was fil ed with the Food and Drug Administration (“FDA”). The plaintiff, who sought declaratory relief in 200 5, did not anticipate filing an NDA until "at

2007-1443 13least 2010-2012, if ever," and it s 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 woul d engage in potentially in fringing activity, the dispute did not present a case or controve rsy of sufficient immediacy to support a declaratory judgment. Id. at 1346-47. Similarly, Sierra , 363 F.3d at 1378-81, concluded t hat a dispute lacked sufficient immediacy where the declaratory plaintiff presented no evidence t hat 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 dism issal of a defibrillator component manufacturer's claim for future patent infringem ent 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) (T he 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 config urations 1, 2 and 4. It has developed two basic loading device designs—one with circular plates and one with ci rcular plates with tabs—and has developed four loading devic e configurations. TubeMaster has generated AutoCAD ® drawings for each of its four configurations. Each reactor is different because the tube diameter, the s pacing between tubes and the size and shape of catalyst particl es can vary significantly. Because

2007-1443 14TubeMaster’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 cu stomer 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 w here the manufacturer of a rear window defroster had produced a prio r version of its product.); see also Super Prods. Corp. v. D P Way Corp. , 546 F.2d 748, 754-55 (7th Cir. 1976) (Dec laratory relief appropriate where the plaintiff had a business enterprise specific ally 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 t hat it can produce devices using these configurations “wit hin a normal delivery schedule” on ce it receives an order. Constitutionally mandated immediacy requi rements 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 Te ch also meets constitutionally mandated “reality” requirements. In the context of patent liti gation, the reality requirement is often related to the extent to which the technology in question is “substantially fixed” as opposed to “fluid and i ndeterminate” at the time declaratory relief is sought. Sierra , 363 F.3d at 1379. Accordingly, “ [t]he greater the va riability of the subject of a declaratory-judgment suit, parti cularly as to its potentially infringing

2007-1443 15features, the greater the chan ce that the court's judgment will be purely advisory, detached from the eventual, act ual content of that subjec t—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 [produc t in question] will never be produced, but rather that because of t he relatively early stage of it s 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 t he 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” wh en the complaint was filed. 363 F.3d at 1379-80. In Benitec , we also found no decla ratory judgment basis where the declaratory plaintiff had only a “v aguely 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 dev ice designs are designed “to cover virtually all of the reactor configuratio ns 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 di spute with Cat Tech is “real,” not hypothetical, because it appears likely that, onc e the cloud of liability for infringement is

2007-1443 16eliminated, the accused products can be pr oduced without significant design change. See Interdynamics , 698 F.2d at 174 (proceeding where t he plaintiff planned to market a product that it would “be able to m anufacture relatively quickly”). Cat Tech argues that there is no “live controversy” regarding configurations 1, 2 and 4 because TubeMaster has made “no di sclosure of those configurations to customers or potential customer s.” Evidence that no prepar ations have been made to advertise or sell a potentially infringing dev ice may, under certain circumstances, indicate that a dispute lacks the requisite immediacy. See Sierra , 363 F.3d at 1379 (considering the fact that ther e was no “existing or draft advertising literature” for the device in question in determining t hat the dispute wa s non-justiciable); Lang , 895 F.2d at 764-65 (“[T]he accused infr ingers 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 dete rmination. 127 S.Ct. at 771. Where, as here, there is cogent evi dence 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 pro ducts to potential customers is not an indispensable prerequisite. See Interdynamics , 698 F.2d at 172 (sufficient that although the plaintiff “had not yet advertis ed or solicited orders for its proposed new product,” there was significant evidence that the plaintiff in tended to manufacture it). C. District Court Discretion Even assuming that the immediacy and r eality prerequisites for declaratory judgment relief have been met, the district court’s exercise of its declaratory judgment

2007-1443 17authority 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 ther e 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 t hat jurisdiction is discretionary.” Spectronics Corp. v. H.B. Fuller Co. , 940 F.2d 631, 634 (Fed. Cir. 1991). In decidi ng whether to entertain a declaratory judgment request, a court must determine whether resolving the case serves the objectives for which the De claratory Judgment Ac t 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 “‘dile mma 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 jurisdicti on may be met where the patentee takes a position that puts the declaratory judgment pl aintiff in the positio n 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 a nd 4. The only i ssue regarding these configurations is whether t he district court could issue a declaratory judgment of noninfringement.

2007-1443 18824 F.2d at 956 (Declaratory judgment shoul d be used “to prov ide 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 plaint iff to embark on an actual pr ogram 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 det ermination of non-infringement as to TubeMaster’s configuration 3, t he configuration used to load catalyst in May of 2005. The central issue regarding conf iguration 3 is whether it m eets the “spacing element” of the ’660 patent. The claims of the ’660 pa tent call for “a spacing between adjacent plates having a width not greater than the smallest dimens ion of a single particle to be loaded into the multi-tube reac tor, the spacing for collecti ng dust and partial particles.” ’660 patent col.6 ll.57-61, col. 7 ll.19-23. The district cour t construed this limitation to require “spacing that is not large enough to a llow whole particles to fall through.” Summary Judgment Decision , slip op. at 9. Cat Tech challenges the district court’s cl aim construction, argu ing that the claims do not require that all spaces between plat es 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”) t hat is of the requisite size. We are not persuaded by Cat Tech’s “pinch point” argument. The plain language of the claims, the specificat ion 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 19A. Claim Language The appropriate starting point for claim co nstruction “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 ar e accorded their ordinary and customary meaning. Honeywell Int'l Inc. v. Un iversal 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 sk ill 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 th is term by those of ordinary ski ll 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 “f ixing or arranging of spaces.” Random House Webster’s Unabridged Dictionary 1827 (2d ed. 2001); see also The Am. Heritage Dictionary of t he 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 “f ixed” or “arranged” so that t he distance between them will not be greater than the width of a whole cata lyst particle. In other words, the gaps

2007-1443 20between 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 requirem ent that there be a spacing na rrower 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 ca talyst particle if the other inter-plate spaces do not meet this sizi ng limitation. Having one na rrow 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 o ne 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 requiri ng gamma units with radiation sources between 30 and 45 degrees unambiguous ly excluded radiation

2007-1443 21sources 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 pat ent 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 betwe en adjacent plates that is sm aller than a particle to beloaded, 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 expre ss 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 revi ew the specification to determine whether the inventor has used any terms in a manner incons istent with their ordinary meaning."). The specification of the ’660 patent never de scribes or suggests an interplate spacing which is narro wer than the width of a whol e particle at one point, but greater than the width of a whole catalyst pa rticle at another. Inst ead, the specification indicates that there will be “small” gaps between plates that are useful “for accommodating the dust which inevitably devel ops during the loading work.” ’660 patent col.3 ll.65-67.

2007-1443 22Moreover, a claim construction requiring that all inter-plate spaces be narrower than the width of a whole cataly st 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 info rm the meaning of the claim language by demonstrating how the inventor understood the invention.” ). When prosecuting the ’977 patent, Cat Tech distinguis hed 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 t he smallest dimension of a particle to be loaded.” See Remarks Accompanying Preliminary Am endment 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 t hat 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 pl ates 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 c onstrued 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 te rm “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 part icle. Indeed, during pr osecution Cat Tech

2007-1443 232007-1443 24 distinguished its invent ion from the prior art by stating that “[t]he pres ent 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 Dictionar y of the English Language 311 (4th ed. 2000) (A “channel” is a “trenc h, 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 whol e catalyst particle. See Summary Judgment Decision , slip op. at 9. Bec ause TubeMaster’s accused method does not meet this spacing limitation, the dist rict court properly granted TubeMaster’s motion for summary judgment of non-infringement as to configuration 3. Conclusion Accordingly, the judgment of the United States Distric t 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 Pre liminary Amendment 3 (Aug. 20, 2001) (emphasis added).