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Topic: Responding to a Patent Troll (Read 1760 times) |
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hamea
Newbie
Posts: 16
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Responding to a Patent Troll
« on: Dec 10th, 2006, 8:56pm » |
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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.
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JSonnabend
Moderator
Senior Member
Posts: 2251
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Re: Responding to a Patent Troll
« Reply #1 on: Dec 11th, 2006, 7:39am » |
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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
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SonnabendLaw
Intellectual Property and Technology Law
Brooklyn, USA
718-832-8810
JSonnabend@SonnabendLaw.com
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Wiscagent
Full Member
Posts: 843
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Re: Responding to a Patent Troll
« Reply #2 on: Dec 11th, 2006, 8:35am » |
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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?
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Richard Tanzer
Patent Agent
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hamea
Newbie
Posts: 16
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Re: Responding to a Patent Troll
« Reply #3 on: Dec 11th, 2006, 10:15am » |
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Thanks for the input. Point well taken on being careful about the infiringement analysis. I am a patent attorney (albeit a new one  )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.
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Wiscagent
Full Member
Posts: 843
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Re: Responding to a Patent Troll
« Reply #4 on: Dec 11th, 2006, 11:04am » |
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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.
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Richard Tanzer
Patent Agent
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