Declaratory Judgment Action Challenging Patent Validity and Infringement Was Dismissed Despite a Patent Owner's Statement that the Plaintiff's Product May Infringe Certain Patents


When a party is threatened with a patent infringement lawsuit, it may preemptively sue the patent owner in a declaratory judgment action and seek to have the patent declared invalid or not infringed. A party cannot, however, bring such a claim merely because it would like such a determination regarding a particular patent. Rather, it must show that there is an actual case or controversy between the parties relating to that patent. In recent years the standard for demonstrating that such a case or controversy exists has been significantly lowered. For example, even implicit threats of litigation have been held sufficient to create a case or controversy permitting a declaratory action to proceed. This has raised many questions regarding how "little" is required to bring and sustain such a lawsuit.

The U.S. District Court for the District of Minnesota recently addressed these issues in 3M Co. v. Avery Dennison Corp., No. 10-3849 (D. Minn. Mar. 29, 2011).1 The court ruled that mere statements by a patent owner that a competitor's product may infringe, that licenses are available, and that infringement has been evaluated were not sufficient to sustain a declaratory judgment action. The court further determined that a party's subjective beliefs regarding the actions of a patent owner were not relevant to the analysis.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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