A patent owner who attempts to inform a potential infringer about his or her patent rights runs the risk that the accused infringer might decide to file a declaratory judgment action. Through such an action, the accused infringer can seek to have a court declare that the accused infringer is not infringing the patent-at-issue. Alternatively, the accused infringer might seek to have the court declare that the patent is invalid.

I discussed declaratory judgment actions in more detail in my June 16, 2016, blog post.

Patent owners, as a result of the threat of a declaratory judgment action, must carefully weigh the risks of being hauled into court, often a distant court, before informing an accused infringer that he or she is infringing the patent. However, accused infringers do not have an automatic right to seek a declaratory judgment. They must satisfy a two-pronged test to maintain a lawsuit seeking such a judgment.

The first prong concerns subject-matter jurisdiction, which means that the accused infringer must establish that a federal district court has the authority to hear the case. Usually, subject-matter jurisdiction can be established when a communication that directly or indirectly threatens a patent-infringement lawsuit is made and when the accused infringer is engaging in the allegedly infringing activity.

The threshold for proving subject-matter jurisdiction exists is not very difficult to meet. Indeed, as indicated in my June 16, 2016 blog post, the threshold became even easier to meet when the Supreme Court issued its decision in MedImmune, Inc. v. Genentech, Inc., 549 U. S. 118, 128 (2007).

We will finish this discussion next time in part 2.