01/18/2010 09:40:17 AM EST
Sung on Standards Relaxation for Declaratory Judgment Jurisdiction for Patents
A declaratory judgment action may be brought where there is an actual controversy between interested parties. MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (U.S. 2007) abrogated the two part test for determining whether an actual controversy exists: (1) is there an explicit threat or other action by the patentee, which creates a reasonable apprehension on the part of the declaratory plaintiff that it will face an infringement suit; and (2) is there present activity which could constitute infringement or concrete steps taken with the intent to conduct such activity? In this Analysis, Lawrence Sung discusses the continuing relaxation of standards for declaratory judgment jurisdiction in patent cases post-MedImmune. Specifically, he examines Hewlett-Packard Co. v. Acceleron LLC, 587 F.3d 1358 (Fed. Cir. 2009). Mr. Sung writes:
(1) HP: Up Through the District Court
On December 4, 2009, the Federal Circuit reversed and remanded the district court's dismissal of HP's suit seeking a declaratory judgment of noninfringement and invalidity of U.S. Patent No. 6,948,021, which related to blade computer servers. Acceleron is a patent holding company incorporated in Delaware and headquartered in Tyler, Texas. Acceleron acquired the '021 patent on May 31, 2007. On September 14, 2007, Thomas B. Ramey, III, President of Acceleron, wrote to Michael J. Holston, HP's “Executive Vice-President, General Counsel/Secretary,” regarding “U.S. Patent No. 6,948,021 to Derrico et al. . . .”
I am writing to call your attention to the referenced patent. . . . This patent was recently acquired by Acceleron, and relates to Blade Servers.
We would like an opportunity to discuss this patent with you. In order to provide a productive atmosphere in which we can do so, we ask that you agree that all information exchanged between the parties will not be used for any litigation purposes whatsoever, including but not limited to any claim that Acceleron has asserted any rights against any of your ongoing or planned activities, or otherwise created any actual case or controversy regarding the enclosed patent.
Should you wish to engage in discussions regarding this patent with us, please return an executed copy of this letter to me in the enclosed stamped, self-addressed envelope. When we receive your acknowledgement, we will send you a package of information relating to this patent. I will look for your response by September 28, 2007, and if I do not hear from you by that time, I will assume you have no interest in discussing this patent.
. . . .
(2) HP: On Appeal
On review of the district court's dismissal of HP's suit, the Federal Circuit reminded that a court has subject matter jurisdiction under the Declaratory Judgment Act only if 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. In patent cases, declaratory judgment jurisdiction exists where a patentee asserts rights under a patent based on certain identified ongoing or planned activity of another party, and where that party contends that it has the right to engage in the accused activity without license. 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 judgment jurisdiction. The purpose of a declaratory judgment action cannot be defeated simply by the stratagem of a correspondence that avoids the magic words such as “litigation” or “infringement.” Of course, if a party has actually been charged with infringement of the patent, there is, necessarily, a case or controversy adequate to support declaratory judgment jurisdiction. The Federal Circuit opined that it is implausible (especially after MedImmune and several post-MedImmune decisions from the Federal Circuit) to expect that a competent lawyer drafting such correspondence for a patent owner would identify specific claims, present claim charts, and explicitly allege infringement.