Today, Mon., Mar. 26, 2012, in 3M v. Avery, No. 2011-1339, the Federal Circuit (Rader, Lourie and Linn) reversed a district court’s ruling that it lacked declaratory judgment jurisdiction over a patent action.  This case provides insight into the fine line walked when discussing patents with a party without creating sufficient grounds for them to seek a declaratory judgment action.

The Court found sufficient grounds for declaratory judgment may exist in this case where there were communications between decision-makers (chief IP counsel for both parties) in which the patent owner identified specific products that “may infringe”, indicated that “licenses are available”, and later indicated it would “send claim charts.”  The Court found in equipoise some factual circumstances, such as (i) a history of patent litigation between the parties on unrelated patents and products,  (ii) the plaintiff delayed a year before filing the declaratory judgment action, (iii) the patent owner was seeking reissue of the patents and (iv) the patent owner did not respond to request for a covenant not to sue.