When Can a Patent-Related Letter Spawn a Declaratory Judgment Action?

MARK TERRY, ESQ.

A patent owner often wants to contact a suspected infringer before filing suit. But the wording, timing, and tone of that communication can allow the recipient to file a declaratory-judgment action in a forum of its choosing.

The Federal Circuit addressed this issue in Hewlett-Packard Co. v. Acceleron, LLC. Acceleron sent Hewlett-Packard a letter identifying a patent, stating that it was relevant to HP products, requesting a prompt response, and asking HP not to file suit. After further correspondence, HP sought a declaration concerning the patent.

Acceleron argued that no actual controversy existed because it had not expressly accused HP of infringement or threatened litigation. The court disagreed and considered the complete course of conduct rather than looking only for an explicit threat.

Factors supporting jurisdiction included the statement that the patent was relevant to HP products, the short response deadline, the request that HP refrain from suing, and Acceleron’s status as a non-competing patent-holding entity. Taken together, those facts reasonably suggested an intent to enforce the patent.

The court also explained that merely identifying a patent and another company’s product line, without more, generally does not establish the definite and concrete dispute required for declaratory-judgment jurisdiction.

The practical lesson is that patent owners should draft outreach letters carefully. A communication intended to begin a business discussion can become evidence of an enforceable controversy when it includes deadlines, accusations, demands, or other pressure.

Before sending a patent-related letter, owners should evaluate both the enforcement objective and the risk that the recipient could use the letter to select the timing and location of litigation.