The following is an actual letter that was taken from a landmark case in the Court of Appeals for the Federal Circuit.
February 22, 1982
Mr. W. N. Macartney, President
INDIUM CORPORATION OF AMERICA
Box 269, 1676 Lincoln Avenue
Utica, NY 13503
Dear Mr. Macartney:
Semi-Alloys, Inc. presently has assigned to it the N. Hascoe patents on preassembled lids and solder preforms for the hermetic sealing of semiconductor packages. These are U.S. Patent Numbers 3,823,468; 3,874,549; and 3,946,190.
We wish to let you know that the patents are available for licensing on a non-exclusive basis. If INDIUM does have an interest in obtaining a license, I would be pleased to discuss the matter with you.
Yours very truly,
Samuel W. Levine
As you can see, the letter identifies three patent numbers and expressly states that it is an invitation to take a license. There is no mention of litigation or infringement in the letter.
The letter does not identify a product or service that is offered by the potential licensee. The letter also does not expressly state or necessarily imply that the potential licensee should refrain from activity in the event that it does not decide to enter into a license.
Prior to the Supreme Court decision, MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007), the law was clear that a patentee who sent a similar letter to this one and took no other action that could be construed as a threat to initiate litigation would not be subject to litigation. However, the law also clearly indicated that a patentee who sent such a letter and followed up the letter with a telephone call threatening to file an infringement lawsuit could be subject to litigation (i.e. a declaratory judgment action).
The MedImmune decision changed the standard for filing a declaratory judgment action so that it is no longer clear that a patentee who sent the above-identified letter could not be subject to a declaratory judgment action. Accordingly, a patentee who would like to send an invitation to license its patent should consult its attorneys before sending such an invitation.