Patent Infringement Demand Letters: Does Noerr-Pennington or the First Amendment Preempt State-Law Liability for Misleading Statements?

• Published in: Berkeley technology law journal 2016-09, Vol.31 (2), p.623-658
• Main Author: Riedel, Eric J.
• Format: Article
• Language: English
• Subjects: Antitrust; Claims; Competition; Competition policy; Consumer protection; First Amendment-US; Immunity; Infringement; Law; Liability; Licensing; Litigation; Patent Law; Petition; Privileges & immunities; Supreme courts
• ISSN: 1086-3818; 2380-4742

This note argues that these new laws are often superfluous because states should already have the ability under unfair competition and consumer protection laws to impose liability for false and misleading statements used in commerce. From the illustration, for example, the claim that the $1000 licensing fee had been based on good faith negotiations and the claim that Company X intended to initiate litigation were both objectively false. Only the state of Vermont has used consumer protection law to bring a claim against MPHJ for its licensing practices. This dearth of litigation is likely a consequence of Federal Circuit precedent stating that the Petition Clause of the First Amendment preempts any state-law liability based on an assertion of one's patent rights, a standard derived from the Supreme Court's Noerr-Pennington doctrine, which originated in the context of antitrust. This note dissects the evolution of petitioning immunity and concludes that this immunity does not apply to statements tangential to a claim of patent infringement contained in a demand letter.