As long as they have been notified of possible infringement, the clock starts there...no matter if the patents have expired by the time they settle or not. The problem is that recent SC rulings make notification a touchy subject. Used to be that it was normal to notify everyone and their grandmother if there was a question of infringement. Now the fear is that if not done correctly the potential infringer will just go to court and ask for a declaratory judgement.

Be Careful What You Say

The recent decisions of the U.S. Supreme Court in MedImmune, Inc. v. Genentech, Inc., 127 S. Ct. 764 (2007) and the Federal Circuit in Sandisk v. STMicroelectronics, Inc., 2007 U.S. App. LEXIS 7029 (Fed. Cir., March 26, 2007) have injected uncertainty into the process of communicating with potential infringers because of the potential for declaratory judgment actions. Following the MedImmune decision, the Federal Circuit in Sandisk overturned its long-standing precedent and held that the apprehension of "imminent litigation" is no longer required for a prospective licensee to initiate a declaratory judgment action. Instead, "all of the circumstances" must be examined to determine whether a case and controversy exists under Article III of the Constitution. And "where a patentee asserts rights under a patent based on a certain identified or planned activity of another party, and where that party contends that it has the right to engage in the accused activity without license," the accused party may bring a declaratory judgment action.

In light of Sandisk, a patent holder can no longer contact a potential licensee, detail an infringement case and, provided the patent holder did not overtly threaten litigation, still avoid the risk of a declaratory judgment jurisdiction. This pre-Sandisk standard allowed a patent holder significant flexibility in communicating with a potential infringer without fear of the potential for a declaratory judgment action.

A patent holder wanting to provide actual notice under 35 U.S.C. § 287(a) and avoid a potential declaratory judgment action must now walk a fine line. Specifically, a patent holder must provide an affirmative communication of a specific charge of infringement, under Amsted, to effectuate actual notice yet, at the same time, based upon all the circumstances, somehow avoid "assert[ing] a right" concerning a patent, under Sandisk.