The court will weigh its declaratory judgment jurisdiction under a “totality of the circumstances” test, while weighing the objective words and actions of a patentee.

Hewlett-Packard Co v. Acceleron LLC., No. 2009-1283 (Fed. Cir. Dec. 4, 2009)

The district court granted a patentee´s motion to dismiss a preemptive suit filed by an alleged infringer because at the time the plaintiff filed the suit, the litigation was “too speculative a prospect to support declaratory judgment jurisdiction.” The Federal Circuit reversed after weighing the “totality of the circumstances.”

In the context of declaratory judgment jurisdiction, the existence of a “definite and concrete” dispute is weighed while examining the objective words and actions of the patentee. It is irrelevant whether the patentee has actually conducted an infringement investigation, or subjectively believes infringement is occurring. Jurisdiction cannot be established merely by pointing to a patentee´s communication identifying its patent and the other party´s product line, nor is there a requirement that the patentee explicitly threaten to sue or demand a license.

Here, the patentee 1) asserted that its patent was “relevant” to the alleged infringer´s product line, 2) imposed a short deadline to respond, 3) insisted that the alleged infringer not file suit, 4) failed to propose a confidentiality agreement, 5) refused an offer for a standstill proposal, and 6) failed to provide any reassurance that it would not sue. The patentee´s refusal to agree to a standstill was significant because the patentee was a non-competitor patent holding company which would receive “no benefits from its patents” without enforcement: “the receipt of such correspondence from a non-competitor patent holding company . . . may invoke a different reaction than would a meet-and-discuss inquiry by a competitor, presumably with intellectual property of its own to place on the bargaining table.” The case “marks a shift from past declaratory judgment cases,” but in light of MedImmune, the facts here “demonstrate adverse legal interests that warrant judicial resolution.”

A copy of the opinion can be found here.