Fact pattern. You send a competitor a letter putting them on notice of a patent you own (it isn’t a “cease & desist” letter per se, but that is ultimately your intent). You are very careful not to threaten suit, use the word “infringement,” or give any other reason for the competitor to have a “reasonable apprehension of immediate suit.”
Question: Have you opened yourself up for a dec. action?
Answer: Maybe.
“MAYBE?” Yes, the Federal Circuit just last week (SanDisk Corporation v. STMicroeletronics) tossed out the old “reasonable apprehension” test. Now it is possible that merely implying that an opponent should consider taking a license could be enough to give rise to a case or controversy under Article III where the opponent denies infringement.
Matt Buchanan at FedCirc.us believes the new test looks like:
1) an assertion of patent rights
2) based on identified ongoing or planned activity; and
3) a contention of the right to engage in the accused activity without a license.
If you litigate (or send out cease & desist letters) you need to READ THIS CASE NOW.
Related posts:
