[{"data":1,"prerenderedAt":-1},["ShallowReactive",2],{"detail-sidebar-cat-1-en-105":3,"doc-seo-274903-105":53,"doc-detail-274903-en":127},{"code":4,"msg":5,"data":6},0,"success",[7,14,19,24,29,34,39,44,49],{"id":8,"doc_module":9,"doc_module_name":10,"category_name":11,"show_sort_weight":12,"slug":13},11,1,"Template","Presentations",90,"presentations",{"id":15,"doc_module":9,"doc_module_name":10,"category_name":16,"show_sort_weight":17,"slug":18},12,"Resumes",80,"resumes",{"id":20,"doc_module":9,"doc_module_name":10,"category_name":21,"show_sort_weight":22,"slug":23},14,"Invoices",70,"invoices",{"id":25,"doc_module":9,"doc_module_name":10,"category_name":26,"show_sort_weight":27,"slug":28},15,"Posters",60,"posters",{"id":30,"doc_module":9,"doc_module_name":10,"category_name":31,"show_sort_weight":32,"slug":33},16,"Social Media",50,"social-media",{"id":35,"doc_module":9,"doc_module_name":10,"category_name":36,"show_sort_weight":37,"slug":38},17,"Forms",40,"forms",{"id":40,"doc_module":9,"doc_module_name":10,"category_name":41,"show_sort_weight":42,"slug":43},18,"Letters",30,"letters",{"id":45,"doc_module":9,"doc_module_name":10,"category_name":46,"show_sort_weight":47,"slug":48},21,"Paper Templates",5,"papers-templates",{"id":50,"doc_module":9,"doc_module_name":10,"category_name":51,"show_sort_weight":4,"slug":52},158,"General","general-158",{"code":4,"msg":54,"data":55},"ok",{"site_id":56,"language":57,"slug":58,"title":59,"keywords":60,"description":61,"schema_data":62,"social_meta":120,"head_meta":122,"extra_data":124,"updated_unix":126},105,"en","walking-the-tightrope-of-cease-and-desist-letters-volume-30-june-2018","Walking the Tightrope of Cease-and-Desist Letters - Volume 30 - June 2018","","The article examines how patent owners can use cease-and-desist letters and less aggressive notice letters to advance licensing talks, warn competitors, support notice-for-damages arguments, and establish knowledge for indirect infringement. It focuses on the litigation risk created by declaratory judgment jurisdiction after MedImmune v. Genentech. Courts apply a “totality of the circumstances” test, so the wording and surrounding actions must be designed to avoid triggering a forum and timing choice for potential defendants.",{"@graph":63,"@context":119},[64,80,102],{"@type":65,"itemListElement":66},"BreadcrumbList",[67,71,74,77],{"item":68,"name":69,"@type":70,"position":9},"https://docshare.wps.com","Home","ListItem",{"item":72,"name":10,"@type":70,"position":73},"https://docshare.wps.com/template/",2,{"item":75,"name":11,"@type":70,"position":76},"https://docshare.wps.com/template/presentations/",3,{"item":78,"name":59,"@type":70,"position":79},"https://docshare.wps.com/template/walking-the-tightrope-of-cease-and-desist-letters-volume-30-june-2018/274903/",4,{"url":78,"name":59,"@type":81,"image":82,"author":87,"headline":59,"publisher":90,"fileFormat":93,"inLanguage":57,"description":61,"dateModified":94,"datePublished":95,"encodingFormat":93,"isAccessibleForFree":96,"interactionStatistic":97},"DigitalDocument",{"url":83,"@type":84,"width":85,"height":86},"https://docshare.wps.com/thumbnails/walking-the-tightrope-of-cease-and-desist-letters-volume-30-june-2018/274903.png","ImageObject",442,249,{"name":88,"@type":89},"Bill Black","Person",{"url":68,"name":91,"@type":92},"DocShare","Organization","application/pdf","2026-10-19","2026-09-15",true,{"@type":98,"interactionType":99,"userInteractionCount":101},"InteractionCounter",{"@type":100},"ViewAction",7,{"@type":103,"mainEntity":104},"FAQPage",[105,111,115],{"name":106,"@type":107,"acceptedAnswer":108},"What purposes do cease-and-desist and notice letters serve for patent owners?","Question",{"text":109,"@type":110},"They can open licensing negotiations, warn competitors, create notice for damages, and help establish knowledge for indirect infringement.","Answer",{"name":112,"@type":107,"acceptedAnswer":113},"How did MedImmune v. Genentech affect the risk associated with sending these letters?",{"text":114,"@type":110},"After MedImmune, cease-and-desist letters may more easily create declaratory judgment jurisdiction, letting a potential defendant choose the forum and timing of the action.",{"name":116,"@type":107,"acceptedAnswer":117},"How do courts evaluate declaratory judgment jurisdiction when a cease-and-desist letter is sent?",{"text":118,"@type":110},"Courts apply a totality-of-the-circumstances test, analyzing the letter’s contents alongside factors such as the parties’ relationship and litigation history, and actions and communications surrounding the letter.","https://schema.org",{"og:url":78,"og:type":121,"og:title":59,"og:site_name":91,"og:description":61},"article",{"robots":123,"canonical":78},"index,follow",{"doc_id":125,"site_id":56},274903,1791720208,{"code":4,"msg":5,"data":128},{"doc_id":125,"user_id":129,"nickname":88,"user_avatar":130,"doc_module":9,"category_id":8,"category_name":11,"doc_title":59,"doc_description":61,"doc_content":131,"file_id":132,"file_url":133,"file_type":134,"file_size":135,"view_count":101,"is_deleted":4,"is_public":9,"is_downloadable":9,"audit_status":9,"page_count":101,"language":136,"language_code":57,"site_id":56,"html_lang":57,"table_of_contents":137,"faqs":138,"seo_title":139,"seo_description":61,"update_tm":140,"read_time":76,"preview_page_count":4},24189269381491,"https://ap-avatar.wpscdn.com/avatar/160000cf11732dd8392?x-image-process=image/resize,m_fixed,w_180,h_180&k=1788146458752108895","IntellectuaTechnologlyProperLaw Jo&rnal   \nEdited by the Technology and Proprietary Rights Group of Weil, Gotshal & Manges LLP  \nVOLUME 30 • NUMBER 6 • JUNE 2018  \nWalking the Tightrope of Cease-and-Desist Letters  \nBy Jason E . Stach and Nathan I. North  \nCease-and-desist letters, and less aggressive  \nnotice letters, can serve several purposes for patent owners.Among other things, they can open licensing negotiations, serve as warnings to competitors, create notice for damages, and establish knowledge for indirect infringement. But sending these letters can also be risky. Following the U.S. Supreme Court’s MedImmune v. Genentech decision,1 the letters may more easily create declaratory judgment (DJ) jurisdiction, allowing a potential defendant to select its preferred forum and to control the timing of an action. Despite the tension between these competing doctrines, courts have acknowledged that it is possible to send legally effective cease-and-desist letters2 while also avoiding DJ jurisdiction. To do so, patentees must carefully approach these letters to minimize risks while still achieving their goals. A  \nJason E. Stach, a partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, chairs the firm’s PTAB Trials practice and practices patent law with an emphasis on post-grant proceedings at the U.S. Patent and Trademark Office and litigation in district courts and at the International Trade Commission. Nathan I. North is an associate at the firm, where he focuses on patent litigation, patent prosecution, and proceedings before the U.S. Patent and Trademark Office.  \nThe authors may be reached [at](at jason.stach@finnegan.com)[ jason.stach@finnegan.com](at jason.stach@finnegan.com)  \nand [nathan.north@finnegan.com](nathan.north@finnegan.com), respectively.  \ncloser look at these issues reveals several ways to minimize this risk.  \nDeclaratory Judgment Jurisdiction: A Look at the Totality of the Circumstances  \nIn MedImmune, the Supreme Court evaluated DJ jurisdiction under a totality-of-the-circumstances test, where there must be “a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant relief.”3 Looking to the totality of the circumstances, courts analyze the contents of a cease-and-desist letter asa key factor—but often not the only factor—in assessing DJ jurisdiction. Other factors include the relationship of the parties, litigation history of the patent owner, actions of the parties, and more, as discussed below in the context of the MedImmune test.  \nCreating a “Substantial Controversy”through Cease-andDesist Letters  \nThe “substantial controversy” requirement allows potential infringers to challenge infringement claims and patent validity without “betting the farm”4 by requiring potential infringers to make (or continue to make) a potentially infringing product. But when do a patentee’s actions  \n| create a substantial controversy? In SanDisk v. STMicroelectronics , for example, the U.S. Court of Appeals for the Federal Circuit’s analysis searched for an act by the patent owner indicating it would enforce its rights. The court found that the patent owner provided a clear intent to enforce its rights by, among other things, providing detailed infringement charts explaining how the accused infringer violated its patents. But patentees rarely provide such clear accusations when they want to avoid DJ jurisdiction, and the court refused to define the boundaries in this case.\u003Cbr>The court extended its analysis in decisions following SanDisk. The Federal Circuit has consistently stated that “a communication from a patent owner to another party, merely identifying its patent and the other party’s product line” is not enough for a definite and concrete dispute.5 Still, simply avoiding specific threatening phrases, such as “you are infringing my patent,” generally does not inoculate a patent owner’s letter from creating DJ jurisdiction. Instead, the language","cbCaicIUInkA51gn","https://ap.wps.com/l/cbCaicIUInkA51gn","pdf",262370,"English","# Walking the Tightrope of Cease-and-Desist Letters\n## Cease-and-Desist Letters: Purposes and Risks\n## Declaratory Judgment Jurisdiction: Totality of the Circumstances Test\n## Creating a “Substantial Controversy” through Cease-and-Desist Letters\n## “Sufficient Immediacy and Reality” in the Wake of Cease-and-Desist Letters","[{\"question\":\"What purposes do cease-and-desist and notice letters serve for patent owners?\",\"answer\":\"They can open licensing negotiations, warn competitors, create notice for damages, and help establish knowledge for indirect infringement.\"},{\"question\":\"How did MedImmune v. Genentech affect the risk associated with sending these letters?\",\"answer\":\"After MedImmune, cease-and-desist letters may more easily create declaratory judgment jurisdiction, letting a potential defendant choose the forum and timing of the action.\"},{\"question\":\"How do courts evaluate declaratory judgment jurisdiction when a cease-and-desist letter is sent?\",\"answer\":\"Courts apply a totality-of-the-circumstances test, analyzing the letter’s contents alongside factors such as the parties’ relationship and litigation history, and actions and communications surrounding the letter.\"}]","Walking the Tightrope of Cease-and-Desist Letters - Volume 30 - June 2018 | PDF",1789483804]