If your competitor is telling your clients or his clients that you infringe his patent, then you likely have one or more sustainable causes of action. Contrary to Eric's assertions, statements by a patent holder that you are infringing may be enough, depending on other factors, to bring a DJ action -- overt threats of litigation are not necessary always.
Let's put some meat on this. Title 28 of the United States Code, Section 2201(a) states:
“In a case of actual controversy within its jurisdiction …. any court of the United States, upon the filing of an appropriate pleading, may declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought. Any such declaration shall have the force and effect of a final judgment or decree and shall be reviewable as such.”
In short, this means that certain conditions must be met before an accused infringer may file a preemptory lawsuit (i.e. DJ action) against a licensor asking a court to declare the patent in question invalid, or not infringed.
Normally, patent holders refrain from making a literal accusation of infringement to avoid creating an actual controversy and gving the accused infringer a chance to file a DJ action, but it is the totality of their actions that makes the determination. Moreover, it is not just the patent holder's actions that are taken into account:
“Numerous district courts have held that even a letter which is insufficiently detailed to satisfy the usual notice standard may be deemed adequate if the recipient’s response indicates that the letter was understood as a charge of infringement.”
- Lando & Rader, The National Law Journal, June 2000
I suspect in this case the patent holder has no product to mark and part of his motivation for sending letters is to place accused infringers on notice that the patent exists so that they can set the damages clock ticking.
The challenge for the licensor is to serve notice of infringement without creating an actual controversy which would allow the accused infringer to seek declaratory relief.
Thus, the licensor will usually be intentionally vague as to her intentions.
The challenge for the accused infringer is to avoid, through his own actions, perfecting notice when the licensor’s communication is by itself insufficient to do so.
The accused infringer is thus presented with a dilemma. He cannot act as though a notice of infringement has been received – while at the same time awareness of the patent requires him to take affirmative action to prevent any infringement from being seen as willful.
There is a lot at stake:
“[W]ho filed the suit is a significant predictor of win rate in jury trials. [U.S.] Juries are significantly pro-patentee in suits for infringement (68% patentee win rate); but when a possible infringer initiates a declaratory judgment action the patentee only has a 38% win rate.”
- Kimberly A. Moore, Judges, Juries, and Patent Cases: An Empirical Peek Inside the Black Box, 99 Mich. L. Rev. 365, 368 (2000)
In bar fights and in litigations, if fists are going to be thrown, landing your blow first gives you a sustainable advantange through the rest of the fight.
What does bfast do? He quits asking questions in this public forum and sits down with a qualified attorney who can review the facts and circumstances of his specific case and give him proper advice. None of this is black and white.
/Eric
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Topic: Filing Declaratory Jugement suit (Read 4448 times)
