Considerations in Addressing Potential Patent Infringement

A patent owner’s strategy for addressing potential infringement should be tailored to account for both legal and commercial concerns specific to his or her circumstances. For instance, if a patent owner is primarily seeking to initiate licensing negotiations with a potential infringer, the patent owner’s communication(s) with the potential infringer should be conveyed differently than if the patent owner is primarily seeking to deter competition and put the potential infringer on notice. A patent owner should also be careful to avoid communications that can provide the potential infringer with an advantage in subsequent litigation, but also provide sufficient notice to allow for recovery of damages resulting from any infringement. For instance, a letter to the potential infringer identifying the patent believed to be infringed, abating the alleged infringement, and making an aggressive and detailed assertion of infringement might constitute sufficient notice to allow recovery, but such a letter could also provide grounds for declaratory judgment jurisdiction, which can allow the potential infringer control over timing and forum selection in subsequent litigation. Unfortunately, there is no specific language that categorically suffices to provide notice and avoid declaratory judgment jurisdiction. Rather, courts consider the totality of circumstances in a particular case in determining whether declaratory judgment jurisdiction is appropriate. Such a consideration involves many factors, including, without limitation, the history of adversity between the parties and the contents of their communications. 

Consequently, patent owners bear the burden of balancing the foregoing factors when addressing potential infringement, which can be a challenging analysis without professional guidance. However, with a strong understanding of the relevant laws and a diligent evaluation of the circumstances of a particular case, a patent owner can develop a strategy for addressing infringement that reduces the risks of undermining commercial goals and putting a potential infringer at an advantage in the event of litigation. 

This information is provided by Bailey & Company, Attorneys & Counselors, P.A. (“Bailey & Company”), solely for informational purposes. This information does not form, nor should it be construed to form, an attorney-client relationship, or any other fiduciary relationship, with Bailey & Company or any attorney, agent, or employee of Bailey & Company. For additional information about the topic of this article, contact Drew Bailey.