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Judge Sue L. Robinson – DJ Jurisdiction –What is Enough?

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Businesses continue to struggle with the “post-MedImmune” environment and determining when a sufficient “case or controversy” exists to file a declaratory judgment suit against a patentee. Judge Robinson recently provided some further guidance on this issue in an even more particular area of interest–where the patentee is a patent troll. Hewlett Packard Co. v. Acceleron, LLC, C.A. No. 07-650-SLR, Memo. Op. (D. Del. Mar. 10, 2009).

As with every declaratory judgment suit, the factual scenario is highly relevant, so I wil lay out some of the most important facts here:

– The initial contact was made by the patentee “patent troll’s” president to the declaratory judgment plaintiff’s excecutive vice president/general counsel/secretary. The letter did not identify a particular product by tradename but did mention the patent by number and its relevance to a certain type of product.

– Shortly thereafter, an attorney for the declaratory judgment plaintiff responded by asking for a mutual standstill.

– The patentee would not agree to this standstill request and shortly thereafter this declaratory judgment suit was filed.

Hewlett Packard asked the Court to take judicial notice of a complaint Acceleron filed in another district eleven days after the Delaware suit asserting infringement of the same patent against HP. Because that suit “post-dated” the filing of the Delaware suit it does not relate to the whether declaratory judgment jurisdiction existed at the time this lawsuit was filed and therefore the Court would not consider it. Id. at 7.

The Court found that although Acceleron did identify the product line and provided a correspondence deadline, that these factors alone were insufficient for jurisdiction where the defendant’s direct contact with plaintiff did not reference or directly imply litigation and there was no history of litigation by this defendant regarding this patent. Id. at 13.

Judge Robinson noted that courts should “take defendant’s business model into consideration” and appreciated that correspondence from a so-called “patent troll” may evoke a different reaction than from a direct competitor but that the facts in this case showed that litigation was “too spectulative” to find jurisdiction appropriate. Id.

Hewlett Packard Co. v. Acceleron, LLC, C.A. No. 07-650-SLR, Memo. Op. (D. Del. Mar. 10, 2009).

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