You’ve just received a letter or a filed Complaint from someone who claims to hold a patent and which they believe you are infringing. You have many options on how to move forward, the success of which often depends in part on your initial moves. Here are some common first steps in patent infringement cases, cases likely similar to the one you are facing.
- Determine What Product Or Service Allegedly Infringes: Use the letter of complaint to figure out exactly what part of your business or which product(s) allegedly infringes their patent. This will help you understand who within your company may need to be involved, and will likely shed significant light on how you should best proceed. For example, if they are claiming that your primary revenue generating product infringes their patent, you will likely want to fight tooth-and-nail or consider paying a licensing fee.
- Are You Allegedly Infringing Or Is It Really Your Vendor?: You may find that the infringing product or service is provided to you by another vendor. That vendor may already be fighting this patent or may want to — or be required to — help you fight against the patent.
- Identify The Claimed Patent: You can find U.S. patents – and patents from many other countries – for free on Google’s Patent search engine, https://patents.google.com/. Find the actual patent and review it.
- Has This Patent Been Asserted Against Anyone Else?: Often a party will try to assert its patent against numerous defendants to increase the likelihood and size of its payout. Once a complaint has been written, it is simple to change a few names, addresses, and product names, and refile the complaint against another party. You may be the first party, you may be the tenth. If you aren’t the first, the other cases will likely give you insight into the patent holder’s strategy.
- Be Cautious In Talking With The Patent Holder: The patent holder may invite you to discuss a licensing agreement or other settlement. While this may be helpful – the licensing fees they want may be low enough to be worth paying to avoid the costs of litigation – the other side is often simply trying to feel out how much money they can extract from you. For example, they may ask questions about your sales volumes or revenue generated in a supposed effort to calculate the licensing fee, this information can also be used to calculate their damages were they to prevail in the patent litigation itself. Remember, there is no Miranda warning in civil cases; everything you say can be used against you.
After some initial investigation, there are many questions you will want to answer. Many of these questions are best answered with the assistance of an experienced attorney.
Greg Ewing is a litigation attorney at Davis, Agnor, Rapaport & Skalny, LLC. For questions about this article or other questions about IP Litigation, please do not hesitate to contact Greg 410.995.5800 or firstname.lastname@example.org