The recent CAFC decision in Hewlett-Packard Company v Acceleron (http://www.patentlyo.com/09-1283.pdf) provides a good reminder that sending an invitation to license or discuss licensing of a patent to a potential target might be enough post-MedImmune to justify declaratory judgment (DJ) jurisdiction when the target wishes to challenge the patent-in-interest in district court.
Indeed, the case inspires the Inventive Step blog (http://inventivestep.net/) to question whether “is there any limit left on Declaratory Judgment jurisdiction”? (http://inventivestep.net/2009/12/08/is-there-any-limit-left-on-declaratory-judgment-jurisdiction/) (concluding “in a word – – no”!). I am not sure it’s that bad, but it may be getting close…
Acceleron sent a letter to HP identifying a specific patent and inviting HP to meet and discuss licensing if HP would agree that no “case or controversy” existed between the parties. After Acceleron rejected HP’s request for a mutual litigation hold period, HP filed a DJ action.
CAFC affirmed the district court’s jurisdiction to hear that case (pre-MedImmune this would not have been sufficient, see, e.g., the now overruled decision in Gen-Probe Inc. v. Vysis). CAFC did not see this as a simple case of a party suggesting incorporation of patented technology into a product, in view of the fact Acceleron (1) asserted the patent as relevant to a specific product; (2) gave a short deadline for response; (3) insist the other party not file suit; and (most importantly?) is a patent holding company (a point noted twice in the Court’s opinion).
Anyone concerned about (1) putting a patent at risk or (2) ending up in a certain court might wish to think twice before sending a similar letter.