The recently decided case of Hewlett-Packard v. Acceleron (C.A.F.C. 2009-1283) serves as a warning to any patent owner wishing to offer a license to a patent.¬† If you’re in that position, be careful or you may end up in court.¬† Here’s why.
In the distant past (which, in this instance, means before 2007) a patent owner actually had to threaten someone with an infringement suit before the target company or individual could race to Federal Court to file a “declaratory judgment action.”¬† Patent owners thus became careful not to issue threats, but only to inform potential licensees about their patents and offer licenses under the patents. ¬†(After all, courts have long written that a patent is not worth anything unless the owner of the patent has the right to let others know about it.)¬† For more details about how this standard evolved see the MedImmune and SanDisk cases.
On December 4, 2009, the court in¬†Acceleron changed the standard for bringing a declaratory judgment action.¬† It held that a lawsuit may be filed by any party who is led to believe that there is an, “intent to enforce a patent”¬† by another party.¬† Thus, for patent owners (including universities, research and development companies, and early-stage ventures) there appears to be almost no way to enter into discussions about patent licensing without risk of a declaratory judgment lawsuit, short of having a stand-still agreement before starting discussions.
This threat to patent owners is not academic. ¬†A declaratory judgment action is usually a full patent infringement and validity law suit, and the average cost to defend such a suit is now well over $1 million. The state of the law now: ¬†you cannot be sued for just having a patent, but talking about it can land you in court.
– Lawrence A. Husick, Esq.