Your longtime client calls to discuss its latest product and to thank you for providing it with great intellectual property counseling. The sales figures for this product are steadily increasing, and your client expects that the product will become a huge commercial success. This is great news for you, too, as your client notes that at least part of the success is due to its broad patent protection, which you helped to secure. However, this broad protection may be at risk.
Your client believes that a smaller competitor may seek to invalidate some of its patent claims by filing a declaratory judgment action. Arguably, this competitor manufactures a device covered by some of the more critical patent claims. However, your client does not view this competitor’s device as a threat, and, quite frankly, it is not interested in a protracted fight over its patent. The competitor, on the other hand, seems ready to battle in a public and high-profile forum. It has already intimated that it may bring a declaratory judgment action and has been asking for a broad covenant not to sue from your client. In response, your client has informed its competitor that it doesn’t believe that there is an issue at this time and that it won’t attempt to enforce its patent in light of these circumstances. Your client – who is well versed in the law thanks to you – asks if it will be able to avoid defending against the merits of a declaratory judgment action in light of Organic Seed Growers & Trade Association v. Monsanto Co., 718 F.3d 1350 (Fed. Cir. 2013), cert. denied, 134 S. Ct. 901 (2014). As with many questions, the answer to this query will likely be, “It depends.”