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All Questions in Litigation >> Responding to a Patent Troll

Responding to a Patent Troll

Posted by Anonymous . updated on 2/26/2009
My company got a letter from a patent troll a few months ago.  I have looked at the patents that they are looking to enforce against my company and have completed the infringment analysis.  I would like to respond by sending their patent counsel a letter that SPECIFICALLY and SYSTEMATICALLY shows why our product does NOT infringe by giving specific examples based on the prosecution history and claim language of their patent claims.  In the interest of not reinventing the wheel, I am wondering if there are any samples out there for such letters so I can look at what the general format should be.  I will appreciate any help in this regard.
Answers (23)
 
JSonnab...
There's no magic formula for this type of letter.  You simply lay out the analysis.

That said, you better be damn sure the analysis is well thought out and doesn't come back to bite you in the behind later.  You may want to have an attorney draft it for you.

- Jeff
 
 
Wiscagent
This may be a naive question, but wouldn't a good alternative to a carefully drafted letter be a phone call.  And in the phone call deny that your product infringes, and ask them for a count-by-count recetation of why they believe that your product does infringe?
 
 
hamea
Thanks for the input.  Point well taken on being careful about the infiringement analysis.  I am a patent attorney (albeit a new one  Smiley )myself and I am going to have an outside counsel verify my analysis as well.  As for responding by phone, I doubt they will be up for having the conversation by phone.
 
 
Wiscagent
My point wasn't so much to respond by phone; I was trying to focus on putting the burden of proof back on them.  

I'm not an attorney, but the idea of defending yourself until you have been formally charged (i.e. sued) seems wrong.  Let them do the work, i.e. prove their case.

As Mr. Sonnebend wrote "... be damn sure the analysis is well thought out and doesn't come back to bite you in the behind ... "  I don't see that it helps you to reveal your defense strategy until it is strategically advantageous.

The idea of a phone call was just to avoid documentation that could bite you in the rear.
 
 
kponlogo
Whether or not a phone call is made, does the patentee have any responsibility toward providing an argument supporting alleged infringement early in the game? Is it reasonable for a company (contacted for licensing from a patentee or otherwise accused by a troll) to request an explanation or analysis?
Can anyone describe what letters from patentees typically entail?
If there is nothing "typical," can anyone briefly describe an exemplary situation and the letters/communications involved?
 
 
Isaac
Quote
This may be a naive question, but wouldn't a good alternative to a carefully drafted letter be a phone call. ?And in the phone call deny that your product infringes, and ask them for a count-by-count recetation of why they believe that your product does infringe?


I don't know about the phone call, but it does seem a little strange to me that with all of the hoopla about having  to waive privilege to produce infringement opinion during litigation that you'd just mail the thing to the other side as a first step.



 
 
JimIvey
First, I'd like to go on record as stating that there's no such thing as a patent troll.  Owning a patent and enforcing the rights appurtenant thereto does not make one a troll any more than owning a home and enforcing rights appurtenant thereto makes one a "home troll."

Quote
Whether or not a phone call is made, does the patentee have any responsibility toward providing an argument supporting alleged infringement early in the game? Is it reasonable for a company (contacted for licensing from a patentee or otherwise accused by a troll) to request an explanation or analysis?
Can anyone describe what letters from patentees typically entail?
If there is nothing "typical," can anyone briefly describe an exemplary situation and the letters/communications involved?

The burden to prove infringement rests on the patent holder.  The only reason to push the patent holder for this early on (as far as I know) is to try to get them to show their hand a bit.  In addition, it's a polite way of saying "go ahead, sue us."  It's not unreasonable to ask for such analysis, but it's probably unreasonable (or at least foolish) to expect a detailed and responsive answer.

A letter from a patent owner would usually try to walk a fine line between merely suggesting licensing discussion and overtly threatening a lawsuit.  The latter allows the accused to file a dec action in their forum of choice and according to their schedule.  Some patentees just file suit first (to take those options away) and then discuss licensing.

I don't have any examples of such letters to share.

Regards.
 
 
kponlogo
There are indeed as many patent trolls in the world as one's personal tentative "patent troll" definition encircles.
Thanks for your response.
 
 
TataBox...
Quote
First, I'd like to go on record as stating that there's no such thing as a patent troll. ?Owning a patent and enforcing the rights appurtenant thereto does not make one a troll any more than owning a home and enforcing rights appurtenant thereto makes one a "home troll."


If we are using the constitution as the framework I do not think that property qualifies in the sense that there is not any promoting of the useful arts when granting others rights to an easement, profit or license, whether it be in gross or appurtenant.  Is there a requirement for an "inventor" to openly use an invention?  No.  I do wish there was a scale involved, that way we could better define "troll," because I believe they exist.

 
 
Isaac
Quote
Is there a requirement for an "inventor" to openly use an invention? ?No. ?I do wish there was a scale involved, that way we could better define "troll," because I believe they exist.


The term patent troll appears to include any patent holder who is not amenable to cross licensing and who attempts to enforce a patent.   Unfortunately that means that you have to consider the source whenever the term troll is used.   I'm not sure how seriously we ought to take the term when an infringer uses it.  

 
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