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Top 5 Considerations for Patent Owners Seeking to Assert Patents Against Infringers

Posted on Apr 8, 2016 in Blog

What do you do when someone is infringing your patent? They say imitation is the highest form of flattery, but flattery will get you nowhere when you are attempting to protect your hard-earned intellectual property rights.

After consulting with your patent attorney to confirm your impression that your competitor’s imitation could qualify as patent infringement, your first impulse may be to dash off a cease and desist letter to the infringing competitor. However, a cease and desist letter allows the infringer to preemptively seek protection for themselves against a potential infringement lawsuit by filing for a declaratory judgment. The end goal of a declaratory judgment action is simple – the competitor seeks to have the patent in question declared invalid or not infringed.  This gives the infringer at least two advantages: 1) The infringer becomes the plaintiff in the action and you become the defendant in the action. 2) The infringer will have the home court advantage by being able to file the suit in its home jurisdiction. A third probable advantage is that you may not yet be able to bear the cost of the lawsuit.

So, is there a way to let your competitor know it is infringing your patent without triggering a declaratory lawsuit? The answer is yes, maybe.

Offer a license. This is the safest way to proceed after a trio of cases, MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) by the Supreme Court, and SanDisk Corporation v. STMicroelectronics, Inc. et al., C.V. 05-1300 and Hewlett-Packard Company v. Acceleron LLC, CV 09-1283 by the Court of Appeals for the Federal Circuit.  Thus you may notify an infringer of the existence of your patent by offering a license.  However, this requires an extreme amount of care.  In the last of the three cases, Hewlett-Packard Co. v. Acceleron LLC, No. 09-1283 (Fed. Cir. Dec. 4, 2009),  there appeared to be a path to notification while avoiding a declaratory judgment action if a license was offered. Based on this case, it is safe to identify to the potential infringer the patent(s) of interest and the products and/or services offered by the infringer, if known.

When notifying the infringer, you must take five precautions which are gleaned from the Hewlett Packard case.

  1. Do not impose a deadline to respond to your initial letter.
  2. Do not say in the letter that you would “understand” that the accused did not have anything to say about the merits of the patents, or their relevance to your patent if the accused did not answer your letter within a deadline.
  3. Propose a confidentiality agreement if the accused says that it would like to speak but wishes to do so in confidence.
  4. Accept the accused’s proposal for a reasonable “stand-still” period such as 120 days in which both sides agree not to sue.
  5. Do not demonstrate or suggest how the accused product infringes your patent. That means that under no conditions should you send the accused a claim chart showing how the accused infringes your patent or compare the looks of a design to the drawings of a design patent.

Even if you follow the five precautions above, there is still the chance that you will say or do something which a court may cite to permit the accused infringer to have declaratory judgment jurisdiction.

If you want to be sure you have the home court advantage and the procedural advantage of being plaintiff, we recommend contacting the infringer after filing suit and before serving the complaint on the infringer.

– by Manny Pokotilow

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