Written by Mark Terry
As a Miami Patent Lawyer specializing in intellectual property issues, I frequently host clients who tell me their patent is being infringed upon. What kinds of letters can I send out to infringers without worrying about a declaratory judgment action in their forum? The Federal Circuit chimed in on this issue this past December and it has (at least somewhat) changed the rules of the game.
The Federal Circuit case of Hewlett-Packard Co. v. Acceleron, LLC involved a letter that patent-holder Acceleron sent to an alleged infringer, Hewlett-Packard. The letter didn’t say much. In short, the letter brought an Acceleron patent to the attention of HP, requested a dialogue between the parties and requested a confirmation that no “case or controversy” existed at the moment. After a few more letters back and forth, HP filed a declaratory action. Acceleron claimed there was no “case or controversy” since they didn’t threaten to sue or even claim that HP was infringing the patent.
Federal Circuit disagreed. The court held the following factors weighed in
favor of a finding of a “case or controversy:” 1) Acceleron stated in the
letter the patent was relevant to HP’s product(s), 2) Acceleron imposed a short
deadline for responding to the letter, 3) Acceleron insisted that HP not file
suit and 4) Acceleron was a non-competitor patent holding company.” The court
held it could be reasonably inferred from this conduct that an intent to
enforce a patent was demonstrated.
should be noted the Federal Circuit did state the following about
what doesn’t constitute grounds for a declaratory judgment
action: “a communication from a patent owner to another party, merely
identifying its patent and the other party’s product line, without more, cannot
establish adverse legal interests between the parties, let alone the existence
of a ‘definite and concrete’ dispute. More is required to establish declaratory
noteworthy, however, was a comment by the court that “Our decision in this case
no doubtedly marks a shift from past declaratory judgment cases.” This tells me
that the standard has changed, and in this case the standard for declaratory
judgment jurisdiction has been relaxed.
What I learned from this case is that you must be careful when drafting a letter from a patent-holder to an alleged infringer. Review the letter in light of the factors considered by the court above to make sure they don’t weigh in favor of declaratory judgment jurisdiction. In fact, in order to avoid declaratory judgment jurisdiction, I recommend sticking to exactly what the court stated doesn’t constitute grounds for a declaratory judgment action, namely: “a communication from a patent owner to another party, merely identifying its patent and the other party’s product line.”