1/21/2010
In Hewlett-Packard v. Acceleron LLC, a decision rendered by the Federal Circuit in December 2009, objective factors surrounding Acceleron’s licensing initiative did indeed implicate specific HP products giving rise to the right of HP to bring a declaratory judgment action.
Yet understanding the objective factors that may cause a potential licensee to believe that the relationship drawn by the patent holder does indeed implicate a specific product is easier said than done. Further complicating this subject is that this exercise is very case specific and fact intensive.
That is why the more you can do to understand these objective factors the more, if you are a patent holder, steps you can take to immunize yourself against a declaratory judgment action, or, if you are a licensee target, confidence you can have in bringing a declaratory judgment action on an offer to license. The Juhasz Burge PC Firm can help you to better understand the effect of this body of law on your licensing and litigation programs, including, if you are a patent holder, the strategic use of confidentiality agreements and relationships to minimize the likelihood of triggering a declaratory judgment action, or, if you are licensing target, strategic counseling on bringing a declaratory judgment action.
Speaking about strategic relationships, The IP Path to Value program offered by The Juhasz Burge PC Firm through a Strategic Alliance with The Sage Group provides companies with important strategic licensing options. In Hewlett-Packard v. Acceleron LLC, the Federal Circuit found significant the objective factor that the letters to HP came from a patent holder company Acceleron, whose sole business was to license patents. As stated by the Court “Acceleron is solely a licensing entity, and without enforcement it receives no benefit from the patent. This adds significance to the fact that Acceleron refused HP’s request for a mutual standstill.” See discussion in the Juhasz Burge PC Advisory noted above. The IP Path to Value(SM) program enables a company to leverage the strategic business counseling skills of The Sage Group in managing some or all parts of a licensing program, like initiating and conducting licensing discussions. As strategic business consultants, they provide a compelling alternative to trolls or licensing companies whose business involves patent litigation or patent litigators or lawyers. For more on The Sage Group, visit www.the-sage-group.com
Posted by Paul R. Juhasz, President