A district court judge has applied not only MedImmune, but also SanDisk and Teva, to determine whether declaratory judgment jurisdiction exists after a patentee has sent a routine licensing letter. Answer? “Yes.”

Here’s the key language from the court’s brief opinion denying the patentee’s motion to dismiss:

There is no reasonable way to distinguish the circumstances of this case from that held by the Sandisk court to confer upon this Court Article III jurisdiction over Crutchfield’s declaratory judgment complaint. In its May 2006 letter to Crutchfield Hill clearly enunciated its intent to assert its right to seek a licensing agreement under its patents with Crutchfield. In addition, the letter makes clear that, as an Internet retailer, Hill put Crutchfield in the same category as other Internet retailers against whom Hill had filed a patent infringement suit. Furthermore, it is clear that Hill was of the opinion that Crutchfield was engaging in allegedly infringing activity or it would not have offered a license in the first place. Having been put on notice that Hill had Crutchfield within its sight, Crutchfield sought to confirm its position that it did not infringe by filing the instant declaratory judgment action.

Hill asserts that the Court should require Crutchfield to notify Hill of its claims that it does not infringe and that one of Hill’s patents is invalid or to enter into license negotiations before Crutchfield seeks intervention from the Courts because, otherwise, there is no substantial controversy. This carries the standard enunciated by the Supreme Court too far. The only requirement is that the circumstances show “a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” MedImmune, 127 S.Ct. at 771. The content of the May 2006, letter, including the clear articulation of Hill’s willingness to litigate against potential infringers of the patents in suit, its offer of a license to Crutchfield under its patents, and its request for a response by a date certain, indicate to any reasonable reader that a substantial controversy exists between parties with adverse legal interests and it is of sufficient immediacy and reality to warrant the issuance of a declaratory judgment. Furthermore, Crutchfield’s counsel had first-hand knowledge of Hill’s patent enforcement tactics and self-proclaimed goals. Coupled with the letter, Crutchfield was faced with a decision to agree to a license or seek a declaration that it does not infringe or that the patents in suit were invalid. There has never been a requirement that a declaratory judgment plaintiff inform its adversary before it files suit; this Court will not change that long-standing practice under the circumstances presented here.

Crutchfield New Media, LLC v. Charles E. Hill & Assocs., Inc., No. 06-0837, 2007 WL 1320750 (S.D. Ind. May 4, 2007).