The July issue of Colorado Lawyer features the article “Patent Dispute Primer,” authored by Elizabeth Manno and Manny Caixeiro. The following is an excerpt:
Being accused of infringing someone else’s patent can be disturbing. Not only are the stakes high, but the mere insinuation that a company’s technology really belongs to someone else can be distressing and even hurtful. Moreover, many companies and their in-house counsel may be unfamiliar with patent litigation and lack an established plan for responding to infringement allegations. But it is in this moment that companies and their counsel must keep their composure, act deliberately, and aggressively defend their innovations—all while exploring licensing options, design-arounds, and other resolutions. This process can be exceedingly difficult. In this second part of a three-part series, we discuss general strategies for how to respond to allegations of patent infringement.
The Patent Holder’s Initial Approach
There are several ways that a company can learn that it is being accused of patent infringement. Often, the company receives an unsolicited letter that seeks to open a licensing negotiation. Sometimes these letters are direct and make it clear that the sender has patents that it believes the company must license in order to avoid infringement. Other times, the letters are less explicit; they appear on their face to be friendly descriptions of the sender’s technology and depict a potential license as a benefit the sender is willing to bestow. Either way, the point of the letter is to initiate a licensing negotiation under the express or implied threat of an infringement dispute.
A company receiving such a letter should be especially wary of—and recognize the significance of—the identification of specific patent numbers. When a patent holder identifies specific patents that it claims a company requires a license to use, it can be a covert way of attempting to put the recipient on “notice” of the infringement allegations. If the dispute subsequently proceeds to litigation, the sender may attempt to argue that the company was notified of the specific patent, and that its choice not to take a license amounted to willful infringement—thus exposing the company to treble damages.
For the full article, click here.