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Reasonable Apprehension of Suit Remains Even After Ameliorative Correspondence Sent

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May a company threatening an infringement action avoid a declaratory judgment action against it by sending ameliorative correspondence after the d.j. action is filed? That was the question a Delaware judge recently rejected in Positec USA Inc. v. Milwaukee Electric Tool Corp.), C.A. No. 05-890 (D. Del. Sept. 25, 2006) (Sleet, J.).

After Milwaukee sent letters to Positec USA and its foreign counterpart indicating that it would commence a patent infringement action against any manufacturers and importers, Positec filed a declaratory judgment action. Milwaukee then sent a letter explaining that the earlier correspondence “was only intended to initiate a dialogue in the hopes of reaching an amicable global business resolution.”

Judge Sleet found that the letter came too late to mitigate an apprehension of suit: “The court finds that Milwaukee’s attempt, after the commencement of litigation of this lawsuit, to backpedal and ‘explain’ the real intention of its prior letters belies its assertion that it did not threaten litigation against Positec USA.” Slip op. at 6 n.1. That Milwaukee sent the letter to the sister corporation – and not Positec USA – was equally unavailing: Milwaukee’s original identification of manufacturers and importers sufficiently threatened litigation to all potential infringement defendants.

The lesson? Be prepared to follow through with your threats.

Positec USA Inc. v. Milwaukee Electric Tool Corp.), C.A. No. 05-890 (D. Del. Sept. 25, 2006) (Sleet, J.)

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