Claims of Patent Infringement - need perspective

[garyhlucas]

Why am I getting the feeling you are dealing with someone who's name starts with D and ends with ump? From all the costs people have been quoting here you can see how patents have lost all value for the majority of little guys, and have great value for the big guys. I have been sued once, in a personal injury case where I was not the responsible party. From that experience I learned just how ugly this kind of thing can get. I actually had the largest law firm in NJ file a "friend of the court brief" saying they had positively determined that I was at fault and should be held responsible by the court! This despite the fact that ALL the evidence pointed directly to someone else. Scared hell out of my wife, she wanted to divorce me. I wish you luck. I'll refrain from giving you any advice stupid or otherwise.

 

[Jashley73]

I am not a lawyer by any means, and am certainly not qualified to offer "advise" but what I would be doing in this type of situation...

-I like the keep quiet approach. I wouldn't give them any more than is absolutely, legally necessary, for great reasons pointed out already.

-I'd look into some way to record audio calls. I realize the probability is very small that you'll have much phone/audio correspondence with them, but I would want to have that recording if I ever needed it. I can't imagine the "...profit center ... dinner and drinks..." comment would resonate very well, should the case ever come before a judge...

-You mentioned that whatever the issue at hand is, has some potential advantage for their competitors. I would be doing this quietly & discreetly, but I would be looking into which of these competitors of theirs you could collaborate with. If this patent really is bogus and they are planning on pursuing a frivolous suit against you, I would personally not rule out using their competitors as leverage. This could be terrible advise, but I'm beginning to learn more than I ever wanted about sales & business politics, and it's very real.

-These allegations are being run by the company's lawyers & legal department. They have a boss, and they do not represent the intentions of all persons & departments within the company. If there's anyway to take this power away from their legal team, I'd consider that as well... I don't know what that would look like, but you're a creative guy. Maybe consider ANY business ties that you may have to any of their suppliers, or perhaps the negotiated "settlement" of the issues in order to prevent the opening of the issue to all other competitors, including the Chinese if their patent was found invalid, (even though we all understand that this is an almost irrelevant argument, since you publicly disclosed it,) or some other way... Basically any way possible that someone within their company would call off the dogs...

(If they are running a profit center, then this whole case could be a net-negative financially for them, especially if you have any real chance of winning in the end. Some savvy financial guy might not like that, especially if the legal team creates their own initiatives without any kind of guidance on whom to pursue... This might sound incredibly naive, but again, I personally wouldn't rule it out...)

Other good advise from far better qualified people here. Good on you for keeping a healthy perspective, and considering your employee's and their families well-being too. We wish you the best...

 

[El Mustachio]

Mustachio - I am sorry to hear that your company is presently subject to a discovery process. I hope that things go your way and that your case is treated justly.

Oh it went well alright

Case was settled in a way that we were very happy with. I fully believe it was the Discovery process itself that finally clinched it. Each party gets to make a list of documents they want from the other party, called a Request For Production. The RFP is presented as a numbered list of questions to which you would respond with pertinent documents. I think we were somewhere around 30 questions each in our RFP's to each other. Discovery is the process of not only collecting the documents required for each RFP question, but also the formatting of those documents to whatever electronic standard opposing counsel has requested. Ah, you say, "sounds like a job for the .PDF format" right? Wrong! Apparently the legal world is rife with ancient software that predates the text searchable PDF. In our case the database system awaiting our discovery could only import documents that had been stripped down to (2) files per page of document; (1) file was a bare .txt file of the document text and (1) file was to be a .TIFF image of the document page. I don't even have words for how bass-ackwards and pointless that whole process was.

Anyway, short story long, we played the game according to the rules no matter how stupid they were. When it came time to trade Discovery from each others' RFP's we handed over to them nearly 1,000 documents and a Gig of digital data. In return we got 60 pages of Discovery, most of which was pictures. Within a couple weeks the case was settled.

 

[rklopp]

If you publicly disclosed your invention before the offending patent's "priority date" (usually 1 year before the filing date), and then you later decide to make the thing you disclosed, there is no way you are infringing the patent. If the patent is exactly your prior disclosure, then the patent is invalid, because you invented it first. If the patent is a tweak on your prior disclosure, then it may or may not be invalid, but there is still no way you infringe it if you make your prior disclosure. If the thing you are making includes the patent's unique tweaks, then you could have a problem, but not necessarily.

The rules on what counts as prior public disclosure are pretty loose. It does not have to be the front page of the New York Times.

 

[Gordon B. Clarke]

If you publicly disclosed your invention before the offending patent's "priority date" (usually 1 year before the filing date), and then you later decide to make the thing you disclosed, there is no way you are infringing the patent. If the patent is exactly your prior disclosure, then the patent is invalid, because you invented it first. If the patent is a tweak on your prior disclosure, then it may or may not be invalid, but there is still no way you infringe it if you make your prior disclosure. If the thing you are making includes the patent's unique tweaks, then you could have a problem, but not necessarily.

The rules on what counts as prior public disclosure are pretty loose. It does not have to be the front page of the New York Times.

The US patent system/laws/rules tend to have some differences from European but the reason I gave your post a "like" is, in that respect from what I read, then they are the same.

Before "investing" in a patent (and they can be very expensive) then it's always a good idea to pay for a search of existing patents to see if you are in violation. The downside is, and it's to "motions guru's" advantage, is that only existing patents are included in the search list. No patent but already an idea made public knowledge is "good to go".

 

[DanielG]

One point I haven't seen brought up here is that this is the second time they've done this. How will what you do now affect whether they do it a third time? If you drop your product, will they do this again because it worked the first two times? If you fight it and win will they figure you're not an easy mark or keep trying in the future?

I don't know the answer, but it's worth thinking about.

 

[alonzo83]

Unless you got a letter to cease and desist. they are barking at the end of their chain. A phone call of he said they said is bullshit that won't hold up So at least make them get off their ass and make it official intent.

I say fuck em. You have a client base and have no reason to quit doing what you have been doing just do so quietly. If you get an official letter that is a different story, either get ready for a fight or find a new means of making your dollar.

Regards,
Alonzo.

Edit,
My information is out dated but that is contract law in 2010

 

[hanermo]

Alonzo, and others ...
At issue is somewhat the fact that *no matter what you do* anyone can always sue You for no reason.

In some countries, UK and the USA being 2 examples, this may be very expensive *for you* irrespective of any facts.

In some countries, most of the EU and Finland and Spain being 2, a nonsense suit is easily dimissed, and You don´t necessarily even need a lawyer, depending.
You can often/sometimes just show up, tell the judge the other party has no basis/cause, and unless they have documented facts it ends there.

For example, someone adds You or your company into a legal dispute You have nothing to do with.

Thus, real basis in fact re: patents is not necessarily the deciding factor (or the most important one, perhaps) - but the costs $$ and consequences of actions or inactions.

Anyone can write a cease and desist.
I could.
To send it officially, costs about 15€ and is done online these days (via burofax here in Spain) in real time.
Does not make it true, useful, lawyerly or factful - it is just one parties written opinion.

The one thing the official delivered-signed-for letter does do, is it means the other party cannot dispute having received it.
The cannot later tell a judge a version of "they never said ...".