U.S. Federal District Courts can only hear actual “cases or controversies,” meaning that there must be a real dispute before a lawsuit can move forward. If you are infringing my patent and I don’t claim that you are infringing, there is no case or controversy, and you can’t run to federal court to get a declaration of non-infringement. As I point out in the accompanying Innovation Cafe video, when it comes to patents and trademarks, sending letters or making public accusations of infringement can unintentionally create such a dispute—potentially dragging you into litigation. Below, we break down how to avoid that pitfall and what inventors or brand owners need to keep in mind.
1. Understanding “Case or Controversy”
- Constitutional Requirement
Article III of the U.S. Constitution mandates that federal courts may only preside over real, active disputes. Simply having a patent or trademark doesn’t create a “case” on its own—accusing someone of infringement can. - Triggering Litigation
If you send a letter to someone implying or claiming that they infringe your patent, you’ve given them the jurisdictional basis to file a federal lawsuit seeking a declaratory judgment. This allows them to ask the court to rule on validity or non-infringement.
2. Patent and Trademark Risks
- Patents
Patent holders may be eager to let others know they have strong IP rights. However, vague or aggressive “cease and desist” letters can provoke the accused party to sue you first. - Trademarks
Similar issues apply if you claim a third party is diluting or infringing your mark. Unclear or threatening notifications can push them to seek a ruling from the court. - Venue
Where the suit is filed can really matter. Some federal districts are backed up and can take years. Others have a “rocket docket”. Some have judges with great familiarity with patent cases, while others have judges with a reputation for invalidating patents. If you give the infringer a basis to sue you first, they get to choose where to sue (subject to the regular rules about where a suit can be brought).
3. Why Copyrights Are Different
- Harder to Invalidate
Copyright protection generally attaches automatically to creative works, and there is less of an invalidity risk than with patents or trademarks (but watch for this to change — as generative AI takes a greater role in helping authors and other creators, you should expect copyright validity to become a much more important issue). - Lower Likelihood of Case or Controversy
While copyright infringement suits do happen, it’s less common for an accused infringer to proactively seek a declaratory judgment that the copyright is invalid. Copyright owners seldom face the same concerns about “invalidity” as patent or trademark holders.
4. Strategies for Avoiding Unwanted Litigation
- Careful Communication
- Instead of accusing someone of infringement outright, consider first sending a polite inquiry or using licensing discussions that don’t directly threaten legal action. “We have some intellectual property that might complement your existing intellectual property portfolio” is far less likely to be a problem than “We have patents that look like they might be infringed by your products”. Be aware, though, that merely letting an infringer know about your patent’s relevance to their business could trigger an IPR, which is an Article II executive branch proceeding and does not require a case or controversy. They’re “cheap” for big companies, at around $500,000 per side, which is usually too expensive for a startup or individual to defend.
- Engage counsel to help draft language that reserves your rights without immediately provoking a lawsuit.
- Conduct a Thorough Analysis
- Ensure you have strong grounds for infringement claims before contacting the suspected party. Weaker allegations are more likely to trigger a defensive lawsuit.
- Know Your End Goal
- Are you interested in licensing, a partnership, or simply protecting your market share? Clarifying this internally can inform a more strategic approach to potential infringers.
5. Balancing Rights and Risks
- Enforcement vs. Collaboration
Enforcing IP rights is essential to maintain exclusivity. However, reckless or aggressive tactics can backfire, leading you into a federal courtroom battle you might otherwise have avoided. - Potential Consequences
A federal judge could invalidate your patent or trademark if it’s successfully challenged in a declaratory judgment action. Keeping disputes out of court might help you retain stronger bargaining positions. - Fraud, Anti-Trust and State “Non-Practicing Entity” laws:
Claiming patent infringement without a good faith basis to believe in it raises all kinds of liability. Make sure to get a patent litigator to sign off on anything you plan to send.
Want More Details?
Watch the accompanying Innovation Cafe video to hear Gary Shuster’s quick insights on how making or avoiding certain accusations can determine whether you end up in a U.S. District Court.
Pingback: Understanding Intellectual Property: Terms of Art and Types of IP, Simplified and Explained