What this Brief Needed was Better Facts

Thanks to the Delaware I/P Blog for discussing Positec USA Inc. v. Milwaukee Electric Tool Corp., C.A. No. 05-890 (D. Del., Sept. 25, 2006) (Sleet, J.) where Milwaukee sent a letter to Positec China on December 15, 2005 stating that Milwaukee “will be forced to commence an infringement action to enforce its intellectual property rights and to stop your company’s infringement,” if Positec China has not ceased infringing activities by December 29, 2005. After Positec USA's Declaratory Judgment Action was filed, Milwaukee then sent another letter to Positec China explaining that its earlier correspondence threatening legal action, “was only intended to initiate a dialogue in the hopes of reaching an amicable global business resolution.”

According to the Order denying Milwaukee's motion to dismiss the Declaratory Judgment Action,

Milwaukee contends in its reply brief that its January 17, 2006 letter to Positec China [sent the same day as its reply brief] regarding the patents-in-suit evidences an intention to address patent issues directly with Positec China, the manufacturer of the saw. According to Milwaukee, the letter “explains that its prior correspondence, including the December 15, 2005 letter, was intended to ‘initiate a dialogue in the hopes of reaching an amicable global business resolution.’” (D.I. 14, at 10; D.I. 15, Ex. 9 at 1.) The letter discusses the present case, and states that Milwaukee “has no intention of litigating its referenced patents against Positec USA or any other customer, distributor or sales representative of Positec China at this time.” (Id.) The letter also states that Milwaukee hopes to avoid litigation entirely by communicating directly with Positec China. (Id.) The court finds that Milwaukee’s attempt, after the commencement of this lawsuit, to backpedal and “explain” the real intention of its prior letters belies its assertion that it did not threaten litigation against Positec USA.

The court therefore concluded that Positec USA has demonstrated a reasonable apprehension of an infringement suit by Milwaukee, based upon Milwaukee’s indirect threat of infringement in its December 15, 2005 letter.