United States Court of Appeals 

for the Federal Circuit ______________________ 

ALLIED MINERAL PRODUCTS, INC., AN OHIO 

CORPORATION,

Plaintiff-Appellant

v.

OSMI, INC., STELLAR MATERIALS, INC., 

STELLAR MATERIALS, LLC,

Defendants-Appellees

______________________ 

2016-2641

______________________ 

Appeal from the United States District Court for the 

Southern District of Florida in No. 9:15-cv-81753-KAM, 

Judge Kenneth A. Marra.

______________________ 

Decided: September 13, 2017 

______________________ 

 JAMES DAVID LILES, Porter, Wright, Morris & Arthur 

LLP, Cincinnati, OH, argued for plaintiff-appellant.

 JOHN DAVID LUKEN, Dinsmore & Shohl LLP, Cincinnati, OH, argued for defendants-appellees. Also represented by MARK SCHNEIDER, Troy, MI.

______________________ 

Before MOORE, REYNA, and STOLL, Circuit Judges.
2 ALLIED MINERAL PRODUCTS, INC. v. OSMI, INC. 

MOORE, Circuit Judge. 

The present appeal arises from the dismissal of a declaratory judgment action in the Southern District of 

Florida. Allied Mineral Products, Inc. (“Allied”) sued 

three related entities, OSMI, Inc., Stellar Materials, Inc., 

and Stellar Materials, LLC (collectively “Stellar”), seeking 

a declaratory judgment that it did not infringe Stellar’s 

U.S. Patent No. 7,503,974 (the “’974 patent”), the patent 

is invalid, and Stellar committed inequitable conduct. 

The district court dismissed the complaint for lack of 

subject matter jurisdiction. Because the district court 

correctly determined that Stellar’s actions do not create a 

justiciable case or controversy, we affirm. 

BACKGROUND

This dispute centers on a Mexican infringement suit 

between Stellar and two of Allied’s Mexican distributors.1 

Stellar and Allied are American companies; Ferro Alloys 

de Mexico S.A. de C.V. (“Ferro”) and Pyrotek Mexico S. de 

R.L. de C.V. (“Pyrotek”) are Allied’s Mexican distributors. 

On June 24, 2015, Stellar sent notice letters to Ferro and 

Pyrotek accusing them of infringing Stellar’s Mexican 

Patent No. 279757 (the “Mexican Patent”). Allied manufactures the products accused of infringement in the 

United States, which are then sold in Mexico by Ferro and 

Pyrotek. Allied sells the same product in the United 

States under a different name. 

Allied’s U.S. counsel responded to Stellar’s notice letters on behalf of Ferro and Pyrotek. Allied identified 

itself as the manufacturer of the accused products and 

argued that the products do not infringe the Mexican 

Patent. Stellar never responded to Allied’s letter. Instead, Stellar filed infringement actions against Ferro and 

 

1 All facts come from Allied’s complaint and are 

presumed true for the purposes of the motion to dismiss. 
ALLIED MINERAL PRODUCTS, INC. v. OSMI, INC. 3

Pyrotek in Mexico, accusing Ferro and Pyrotek of infringing at least claim 16 of the Mexican Patent. Claim 16 of 

the Mexican Patent is a Spanish translation of claim 16 of 

the ’974 patent.

Allied filed a declaratory judgment action against Stellar in the Southern District of Florida, seeking a declaratory judgment of: (1) non-infringement of the ’974 patent; 

(2) invalidity; (3) unenforceability due to inequitable 

conduct; and (4) tortious interference with business 

relationships under Florida state law. Stellar moved to 

dismiss for lack of subject matter jurisdiction, and the 

district court granted the motion. The district court held 

that “Stellar’s decision to enforce its Mexican patent 

under Mexican law against separate entities cannot, 

without further affirmative action by Stellar, create an 

actual controversy with Allied with regard to its U.S. 

Patent.” J.A. 15. The district court found that the complaint was “devoid of any allegations that Stellar has done 

anything to give Allied a reasonable belief that Stellar 

intends to enforce its ’974 Patent in the United States.” 

Id. Allied appeals. We have jurisdiction pursuant to 28 

U.S.C. § 1295(a)(1).

DISCUSSION

The Declaratory Judgment Act requires “a case of 

actual controversy.” 28 U.S.C. § 2201(a). There is no 

bright-line rule for whether a dispute satisfies this requirement, Prasco LLC v. Medicis Pharm. Corp., 537 F.3d 

1329, 1336 (Fed. Cir. 2008), although the Supreme Court 

has articulated a number of relevant factors:

Our decisions have required that the dispute be 

definite and concrete, touching the legal relations 

of parties having adverse legal interests; and that 

it be real and substantial and admit of specific relief through a decree of a conclusive character, as 

distinguished from an opinion advising what the 

law would be upon a hypothetical state of 
4 ALLIED MINERAL PRODUCTS, INC. v. OSMI, INC. 

facts . . . . Basically, the question in each case is 

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 

(2007) (quotations and alterations omitted). We review 

jurisdictional issues de novo. Prasco, 537 F.3d at 1335.

The totality of the circumstances in this case does not 

rise to the level of a case of actual controversy. Declaratory judgment jurisdiction requires some affirmative act by 

the patentee. SanDisk Corp. v. STMicroelectronics, Inc., 

480 F.3d 1372, 1381 (Fed. Cir. 2007). Stellar has not 

directed any actions towards Allied, nor has it litigated or 

threatened litigation in the United States or on its ’974 

patent. All of Stellar’s conduct has been directed towards 

Allied’s customers Ferro and Pyrotek, unrelated Mexican 

entities, and that contact was limited to Stellar’s Mexican 

Patent and potentially infringing acts in Mexico. Stellar 

sent notice letters to the customers alone, and although 

Allied responded on behalf of its customers, Stellar never 

responded to Allied’s letter. Stellar then sued only the 

customers, not the manufacturer. Stellar also limited its 

actions to Mexico. Stellar filed suit in Mexico, suing for 

infringement of a Mexican patent under Mexican laws. It 

has not threatened or alleged infringement of the ’974 

patent in the United States, much less filed suit. Stellar 

took no actions directed at Allied, no actions with regard 

to its ’974 patent, and no actions under U.S. patent laws.

The actions in this case are even less sufficient than 

those in Innovative Therapies, Inc. v. Kinetic Concepts, 

Inc., 599 F.3d 1377 (Fed. Cir. 2013), which we held did not 

give rise to declaratory judgment jurisdiction. In that 

case, several of the patentee’s employees left the company 

to start their own firm. The new company (the declaratory judgment plaintiff) wished to sell a competing product 
ALLIED MINERAL PRODUCTS, INC. v. OSMI, INC. 5

but worried about potential infringement liability. One of 

the plaintiff’s employees called a former colleague at the 

patentee’s company to raise his concerns, and the patentee’s employee responded that the company would “act 

aggressively . . . . You know that.” Id. at 1380. In a 

subsequent call, the patentee stated it would sue “100% 

no doubt about it” on “any product that scratches the 

surface of our patents.” Id. at 1381. We held that these 

communications did not produce a controversy of such 

immediacy and reality to give the district court jurisdiction to hear the case. Id. 

The Innovative Therapies plaintiff also sought to rely 

on the patentee’s litigation history to establish jurisdiction. The patentee had a history of litigation to enforce its 

patents, and it previously asserted the patents at issue in 

the declaratory judgment action against unrelated third 

parties. We explained that while the patentee’s litigation 

history was a circumstance to consider when evaluating 

jurisdiction, the fact that it had sued other parties without further evidence of acts directed toward the plaintiff 

was insufficient to confer jurisdiction. Id. at 1382. 

Unlike Innovative Therapies, there have been no 

veiled threats of litigation or even any direct communication from Stellar to Allied. There are no allegations that 

Stellar has a history of litigating its patents in the United 

States. In light of this precedent, the district court correctly held that it lacked jurisdiction to hear the case.

Allied seeks to analogize its case to Arkema Inc. v. 

Honeywell International, Inc., 706 F.3d 1351 (Fed. Cir. 

2013), citing our reliance on a foreign litigation as creating a case or controversy regarding a related U.S. patent. 

The declaratory judgment in Arkema, however, differed 

significantly from this case. It is correct that the court 

considered the fact that the patentee had filed suit in 

Germany, alleging infringement of a German patent 

covering a refrigerant used in automobile air conditioning 

systems. In Arkema, however, there was also a compan-
6 ALLIED MINERAL PRODUCTS, INC. v. OSMI, INC. 

ion U.S. litigation over two of the patentee’s U.S. patents 

covering the same refrigerant. While the suit was in 

discovery, the patentee obtained two additional U.S.

patents covering the same refrigerant, both of which 

claimed priority to the patents-in-suit in the U.S. infringement suit. The plaintiff moved to amend its complaint to include a declaration that the new patents were 

also invalid, but the district court denied the motion. We 

reversed. We explained that the combination of the 

German litigation and the U.S. litigation over a related 

patent “creates a sufficient affirmative act on the part of 

the patentee for declaratory judgment purposes.” Id. at 

1358.

In Arkema, it was not the foreign lawsuit alone that 

provided jurisdiction; it was the foreign lawsuit coupled 

with the U.S. lawsuit over a related patent. Id. Moreover, in Arkema, both the foreign lawsuit and the U.S. 

lawsuit on related patents were directed at the same

alleged infringer. Here, Stellar has not sued Allied at all, 

not in the foreign suit and not for infringing any U.S. 

patents related to the ’974 patent. Arkema is not controlling. 

This case is also distinguishable from cases where we 

have held that a patentee’s suit against a customer gave

the manufacturer standing to seek declaratory relief 

against the patentee. In Arris Group v. British Telecommunications PLC, 639 F.3d 1368 (Fed. Cir. 2011), we 

noted that a manufacturer has standing to bring a declaratory action if: (1) the manufacturer is obligated to indemnify its customers in the event of an infringement 

suit; or (2) there is a controversy between the patentee 

and the manufacturer as to the manufacturer’s liability 

for induced or contributory infringement based on acts of 

direct infringement by the customers. Id. at 1375. The 

Arris patentee accused a customer of infringing claims of 

four U.S. patents in which a manufacturer’s product 

functioned as a material component. We held that the 
ALLIED MINERAL PRODUCTS, INC. v. OSMI, INC. 7

allegations of direct infringement of U.S. patents against 

the manufacturer’s customers were an implicit allegation 

of indirect infringement against the manufacturer. Id. 

at 1381. This gave the district court jurisdiction over the 

manufacturer’s declaratory judgment action. Id. 

The dispute between Allied and Stellar does not satisfy either factor articulated in Arris. Allied does not allege 

in the complaint that it is obligated to indemnify Ferro 

and Pyrotek against allegations of infringement of the 

Mexican Patent. Nor have there been any infringement 

allegations against either company in the United States or 

any infringement allegations involving any U.S. patent.2 

There is no Arris-level controversy between Allied and 

Stellar; Stellar has not implicitly accused Allied of infringing the ’974 patent in the United States based on its 

customers’ direct infringement of the Mexican Patent in 

Mexico. 

Allied argues it has been forced into an unwinnable 

business position; it can either continue to sell products in 

the United States knowing it may be the target of an 

infringement suit, or it can cease selling products it 

believes it has a right to sell. But we have held that the 

fear of a future infringement suit is insufficient to confer 

jurisdiction. Prasco, 537 F.3d at 1338. In Prasco, we 

rejected a declaratory judgment plaintiff’s argument that 

it suffered actual harm when it merely feared a future 

infringement suit. Id. at 1339. And in Arris, we noted 

the fear of future lost business because of infringement 

threats against a customer was, by itself, insufficient to 

create standing for the manufacturer. Arris, 639 F.3d at 

1374–75. Allied’s fear alone does not give the district 

 

2 We do not address whether an agreement to indemnify for foreign infringement of a foreign patent gives 

rise to declaratory judgment jurisdiction over a counterpart U.S. patent. 
8 ALLIED MINERAL PRODUCTS, INC. v. OSMI, INC. 

court jurisdiction. See Prasco, 537 F.3d at 1341–42 (“Although we understand [the declaratory judgment plaintiff’s] desire to have a definitive answer on whether its 

products infringe defendants’ patents, were the district 

court to reach the merits of this case, it would merely be 

providing an advisory opinion. This is impermissible 

under Article III.”); see also City of Los Angeles v. Lyons, 

461 U.S. 95, 103 (1983) (holding that a plaintiff’s subjective fear of future injury did not confer jurisdiction over 

his claims). 

Considering the totality of the circumstances, we 

agree with the district court that there is not a substantial controversy of sufficient immediacy and reality to 

confer declaratory judgment jurisdiction. Stellar sent 

notice letters to Ferro and Pyrotek in Mexico, and it sued 

Ferro and Pyrotek in Mexico. Stellar did not even respond to Allied’s letter about the Mexican Patent on 

behalf of Ferro and Pyrotek. Nor has Stellar taken any 

action in the United States or any action on the ’974 

patent. Allied has failed to establish a case or controversy 

regarding Stellar’s U.S. patent in the United States under 

Article III.

CONCLUSION

The judgment of the district court dismissing the case 

for lack of jurisdiction is affirmed.

AFFIRMED

COSTS

Costs to Stellar.