So you got a patent cease and desist letter. Now what?
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So You Received a Patent Cease and Desist Letter… Now What? Jason M. Schwent Thompson Coburn, LLP
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In this Oct. 21, 2014 webinar, “You’ve Got Mail: How Your Company Can Better Respond to Patent Cease and Desist Letters,” Jason Schwent detailed the actions you can and should take after receiving a cease and desist letter concerning allegations of patent infringement. While patent law cease and desist letters can be upsetting and sometimes confusing, there are a series of steps that companies can take to be better prepared in the event that they do receive one. By taking a closer look at the risk involved in such cease and desist letters, companies can better assess the strategies to deal with them.
Transcript of So you got a patent cease and desist letter. Now what?
So You Received a Patent Cease and Desist Letter…Now What? Jason M. Schwent
Thompson Coburn, LLP
Welcome and Introduction
Jason SchwentPartnerThompson Coburn LLP
Patent Cease and Desist Letters For those unfamiliar…
Frustrating, frightening, and infuriating
For those familiar… Routine Beginning of a
known course of events
Patent Cease and Desist LettersWhat is a “cease and desist” letter?
Why would you receive one?
What information is found in a cease and desist letter?
What should you do if you receive one?
What are your options?
What is a Cease and Desist Letter?Letter asking you to stop doing something
Doesn’t always say “stop infringing”“Helpful” suggestion to licenseDJ lawMay not look adversarial
DON’T BE FOOLEDIf letter sent, litigation is contemplated
Why would you receive a Cease and Desist Letter? You’re infringing
Making, using, selling, offering for sale, or importing technology covered by a patent Having your own patent not a defense
You’re not infringing, but doing something close Can’t always tell
You’re being targeted incorrectly Supplier issue Customer issue
You’re the target of fraudulent conduct Hoping you won’t investigate Protection scheme
What’s in a Cease and Desist Letter? What to expect?
Law firm representing party or company sending letter
List of one or more patents at issue (not always)
Offer to license
What’s in a Cease and Desist Letter? What may not be included?
Responsible party Actual owner of the patent A valid patent Clear ID of allegedly infringing technology Term remaining on patents Careful/detailed comparison of patent to your
technology
What NOT to Do After Receiving C/D Letter? DO NOT IGNORE
May look unprofessional May be unclear May be mistaken May have no accusation of
infringement PATENT INFRINGEMENT IS ON
SENDER’S MIND Even if not, you should
assume it is
Ignoring will not make go away Could make much worse (3X)
What Must You Do After Receiving C/D Letter? #1 – Investigate the claims in the letter
Preferably in conjunction with an attorney Affirmative duty Willful infringement
#2 – Preserve information related to accusations C/D letter provides notice of possible litigation
Spoliation All information relevant to any claim or defense
ID custodians Halt automatic delete Inform of duty to preserve
Electronic and hard copy
What Must You Do After Receiving C/D Letter? #3 – Read the letter
Not as easy as it sounds Cryptic/technical language Goal: ID certain key facts
ID who is sending ID the patent number(s) at
issue ID the technology being
accused
What To Do After Receiving C/D Letter?
#4 – Investigate entity that sent letter Not complicated/No lawyer
needed Google them
Ongoing business? No information? Related companies?
Have they sued others? Successful? Stayed?
Were patents invalidated?
#5 – Get to know the asserted patents
What does letter say about the patented technology? Does this match the patents?
Any mention of the patent(s) on Google? Key words: invalid, unenforceable, reexamination, post-grant review
(PGR), inter partes reexamination (IPR), covered business method review
What To Do After Receiving C/D Letter?
Read the patents USPTO.gov Google patents
Issue date
Assignee (does it match letter)
Priority claim
How long pending?
Related patents?
What To Do After Receiving C/D Letter?
#6 – Investigate the accused technology
Did you develop? If not, who did? How did you acquire? Indemnity? If so, who was involved? When?
Why was the technology developed/acquired?
How valuable is the technology? Mission critical? Alternatives? Sets strategy going forward…
What To Do After Receiving C/D Letter?
#7 – Take an action
Required to undertake reasonable investigation and response Request more information
Put ball in their court Develop
noninfringement/invalidity arguments Prior art search Legal opinion PGR/IPR/CBM DJ action
What To Do After Receiving C/D Letter?
Stop infringing/switch to noninfringing alternative Is this possible? Won’t absolve Stops damages
Seek license Involve an attorney Open discussions Early discounts?
What To Do After Receiving C/D Letter?
#1 – Investigate the claims in the letter
#2 – Preserve information related to accusations
#3 – Read the letter
#4 – Investigate entity that sent letter
#5 – Get to know the asserted patents
#6 – Investigate the accused technology
#7 – Take an action
What To Do After Receiving C/D Letter?
Jason M. SchwentThompson Coburn, [email protected]
On Twitter -- @STLPatent
Author of the “Patent Billy Goat” blog —addressing patent litigation news and providing tips/strategies for effectively and efficiently dealing with patent litigation
Thank you!
TCLE So You Received a Patent Cease and Desist Letter .. Now What?October 21, 2014
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The transmission of information from this webinar does not establish an attorney-client relationship with the viewer. The viewer should not act on the information contained in any of the materials or presentation of this webinar without first consulting retained legal counsel.
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