All patent owners are equal under the law. After the Hewlett Packard Co. v. Acceleron LLC decision, however, some are more equal than others. In Hewlett Packard Co. v. Acceleron LLC, the Federal Circuit took note of the fact that the patent owner was “solely a licensing entity” in assessing whether HP was entitled to bring a declaratory judgment action. When a patent owner is a patent holding company, one is now entitled to consider that as a relevant factor in assessing whether a court has declaratory judgment jurisdiction.
One might think that the panel that decided the case frowned upon patent holding companies. However, according to these remarks by Chief Judge Michel during the oral argument, such is not the case: [Listen].
Chief Judge Michel seemed frustrated by the vague language used by the US Supreme Court in its Medimmune v. Genentech, 549 US 118 (2007) decision for evaluating when it is proper for a party to bring a declaratory judgment action: [Listen].
This case now begs the question of what constitutes “solely a licensing entity.” Is an independent inventor who doesn’t practice his or her patent solely a licensing entity? Is it sufficient if he or she simply doesn’t practice one claim of the patent, since each patent claim in theory stands on its own? Is a research institution a patent holding company? Is the US government a patent troll? Is IBM, the leader in obtaining US patents, solely a licensing entity with respect to its patents that it doesn’t implement? And, perhaps most importantly, will this special recognition of entities that are soley focused on licensing their patents, make it easier or more difficult for them to obtain injunctions for patent infringement?
It will be interesting to see in the next few months if there is a surge in filings of declaratory judgment actions based on this case and past correspondence by patent owners.
You can read the court’s decision here: [Read].