A recent decision from the Federal Circuit makes it even more difficult for patent holders seeking to open talks with a potential infringer to avoid becoming the target of a declaratory judgment action. Such is the takeaway from the December 4, 2009 decision of the Federal Circuit in Hewlett-Packard Company vs. Acceleron, LLC.
The background to the Acceleron case is a familiar one to patent litigators: Acceleron, a patent holding company, acquired a patent and several months later sent a letter to Hewlett-Packard about it, noting that the patent related to blade servers. As “demand” letters go, it was relatively mild, asking HP for “an opportunity to discuss this patent with you.” It also included a request: that HP agree that all of the information the parties were to exchange “will not be used for any litigation purposes whatsoever, including but not limited to any claim that Acceleron has assserted any rights against any of your ongoing or planned activities, or otherwise created any actual case or controversy regarding the enclosed patent.”
Acceleron asked HP to respond by two weeks from the date of the letter, stating that if HP had not done so by then, Acceleron would “assume you have no interest in discussing this patent.”
HP's response indicated its interest in learning more about the patent, and proposed that the parties agree to a 120-day “mutual standstill,” during which time neither company would sue the other. Acceleron demurred, contending that HP did not have “any basis for filing a declaratory judgment action,” and extending for another two weeks the time for HP to return a signed copy of the original Acceleron letter, agreeing to the discussion terms proposed therein.