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[JSonnabend]

Jim, I wouldn't offer indemnity to anyone until I first had a lawyer analyze the patent.  While bfast has expressed his view on the patent, I have had more clients than I care to count come to me saying "I'm nowhere near infringing this patent," only to find out they were wrong (and that goes for the big corporate clients I had at the big firms as well as the smaller ones I focus on in my solo practice).

bfast - you are thinking correctly regarding jurisdictional issues.  Any qualified patent attorney can analyze the patent for you, and, loosely speaking, any US patent attorney can represent you in your local jurisdiction, although local counsel might also need to be retained.

- Jeff

[eric_stasik]

Eric, when it comes to someone being "honestly and deeply confused" about the patent, I don't know that it is helpful to consider that it is I that is so at this point, even if it is I that is so.  (As it happens I have presented this to a patent attourney who agrees with me that the other party is the confused one.  He then presented a price tag for addressing the issue that was prohibitive.)  The question I bring to the forum is this: if one begins with the premise that the other party is the one that is "honestly and deeply confused", and if clear communications with them have not helped them to quit being "honestly and deeply confused", and if offers for a mediated solution have been rejected, it seems that I am in the position of fronting significant money to convince a court to tell them that they are "honestly and deeply confused".  The bottom line question -- consider the premises to be valid -- is there a way that I, with some but not great means, can enter into the litigation process to de-confuse them.  

Well, bfast, if you are certain of your position then you might want to follow Mr. Ivey's suggestion and indemnify your customers against any claims of patent infringement. Remove it as a commercial issue for them and then wait for the patent holder to file suit against you.

When he does, you can immediately move for summary judgement under rule 11 of the federal rules of civil procedure.

Specifically,

(3) the allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and

http://www.wvnb.uscourts.gov/frcp.htm#rule11

If the case is entirely without basis - and the judge agrees with you - then you can ask for sanctions against the individual attorneys who brought the suit.

That's the low cost option - and it is a slam dunk when it works - but I will add that I have only seen this happen once in 10 years.

Generally, things are more complex than this and that is all I was trying to get across in my previous posts.

Regards,

Eric Stasik

[JimIvey]

Jim, I wouldn't offer indemnity to anyone until I first had a lawyer analyze the patent.

It all comes down to how desperately bfast hopes to keep his customers.  It's just one way to take some of the heat off of them.  But, yes, ask an attorney if your agreement doesn't already provide for indemnification.

any US patent attorney can represent you in your local jurisdiction, although local counsel might also need to be retained.

I think bfast's "local jurisdiction" is in Canada.  I know it's a technicality, but I don't think US counsel can represent him there.

Regards.

[JSonnabend]

I think bfast's "local jurisdiction" is in Canada.  I know it's a technicality, but I don't think US counsel can represent him there.

And my Canadian clients tell me that "51st state" jokes don't go over well.

Of course, if he's in Canada but the clients/acts/patents are in the US, he'll need a US attorney anyway.  

[bfast]

Two questions:  If I offer my customer indemnification, are they then no longer entitled to sue my customer?  If I am in Canada, does the authority of my indemnification still hold?

Question 2:  Litigation is clearly expensive, how come it seems that lawyers tell the client "it'll cost you lots" but never seem to mention "it'll cost the other guy lots, he's likely to want to find a way out."

As far as judging good and bad attourneys, well, I hardly think that the dollar sign is the best judge -- that the attourney with the hightest rates is the best.  The other guy's attourney is a partner at a significant lawfirm.  He obviously isn't cheap.  He has, however, made rediculous and indefensible statements to a third party.  He has bet that I am not going to be able to defend myself, and that my client won't defend himself.  This is a pretty dangerous bet -- dispite his dollar sign, I don't see him as a good attourney.

[bfast]

The real question I have, I guess, is how does one find the right attourney.  

I want an attourney that starts by saying, "let's consider that you are right".  If that be so, here's what I would want to do: first I would want to see if we can communicate clearly with the other side, and get out of this altogether, or indemnify your customers, solving the problem that way, or find any other "easy whay out".  If that doesn't produce good results, then I would be prepared to do this and that.  

I need, however, to have a full plan, with some sort of "these are the risks, this is the costs."  However, I still don't want to deal with "the risk is that you are wrong."  I know you attourneys are painfully cautious sorts, fearing that I don't understand that "let's consider that you are right" may mean that upon careful examination he must say that my picture is too simple, and I really am in an infringement grey area.

The second logical step, probably a step that costs money, is for me to sit down with the attourney, show him/her my technology, show him/her the communications that have gone back and forth, and have the attourney offer an honenst analysis.  This is the time, as I see it, for the attourney to be saying "honestly, the picture of this problem is different than you have presented."  This is where I want a self-confident attourney, an attourney that can either say to me the he agrees with my opinion, because the evidence supports that -- or an attourney who can confidently move on because based upon his analysis of the facts we have a strong case.  I would assume that no attourney in his right mind would consider to make a bona fide offer of working on contingency, for instance, until this point.

But most of all, I want to start with an attourney that I believe that I can finish with.  

Is this not how one selects an attourney for an issue like this?  

[JimIvey]

Two questions:  If I offer my customer indemnification, are they then no longer entitled to sue my customer?

No.  It's merely a contractual obligation you take on to defend the suit and compensate your customers for any liability they face.  The contract for indemnification is between you and your customer.  In theory, they should be comforted by this and go forward if you seem prepared and able to fight this out in court for them.

If I am in Canada, does the authority of my indemnification still hold?

Don't know.  That's a matter of contract law.  However, I doubt this is the first instance of some contract spanning multiple countries.  I'm sure there's a well-know solution to making that particular clause effective over country borders.

Question 2:  Litigation is clearly expensive, how come it seems that lawyers tell the client "it'll cost you lots" but never seem to mention "it'll cost the other guy lots, he's likely to want to find a way out."

Well, to some degree, the latter should be obvious to the other side.  Litigation is, almost be definition, a dispute including at least one incredibly unreasonable party.  The transaction costs (costs paid to neither side but rather the people in the middle making "justice" happen) are so high that any dispute between two reasonable parties would be settled.  The only exception that I can think of are cases in which the stakes are so high that transaction costs are dwarfed -- think Eolas and Immersion.  Okay, one more exception, when at least one side is calling the other side's bluff.

As far as judging good and bad attourneys, well, I hardly think that the dollar sign is the best judge -- that the attourney with the hightest rates is the best.  The other guy's attourney is a partner at a significant lawfirm.  He obviously isn't cheap.  He has, however, made rediculous and indefensible statements to a third party.  He has bet that I am not going to be able to defend myself, and that my client won't defend himself.  This is a pretty dangerous bet -- dispite his dollar sign, I don't see him as a good attourney.

An astute observation.  I know a highly reputable firm in the Silicon Valley whose patent applications are about as well thought out as a pile of horse dung.  Yet, they're a perennial favorite of organizations that rank IP firms.  Go figure.

And, there's a substantial amount of reverse price elasticity in the legal marketplace -- under the belief that you get what you pay for.  That's generally true, but there are substantial exceptions.

Lastly, it's possible that the attorney knows his argument is as well-crafted as that aforementioned pile, but he's trying to get his client an early and inexpensive victory -- a huge raising of the stakes in hopes that you'll fold, to continue the poker analogy.  I don't believe there's any law against puffing up your case in hopes of an early and favorable settlement.

Regards.

[bfast]

Lastly, it's possible that the attorney knows his argument is as well-crafted as that aforementioned pile, but he's trying to get his client an early and inexpensive victory -- a huge raising of the stakes in hopes that you'll fold, to continue the poker analogy.  I don't believe there's any law against puffing up your case in hopes of an early and favorable settlement.

Regards.

This may be a valid statement, at the moment the results would indicate so.  My customer has given them a letter stating that they are no longer using my technology.  However, this remains a strategy frought with danger, the danger being that they have underestimated my tenacity.  In Canada a small creature is revered, the wolverine.  He may be a little guy, but when he gets something into his head, he's a bit unstopable.  By the same token, I may be a little guy, but I am not much for giving up.  When the opposition has opened themselves up to a significantly expensive failure, which I believe that they have, then their attourney, in my opinion, is not a good one.  It is a classic military error -- and poker error -- to underestimate your opponent.  

The options remain, either the laywer doesn't realize that his client doesn't understand his own technology, or the laywer has led the client into a situation where the client has the serious potential of getting into an expensive loosing battle.  Either way, I don't respect this attourney.

[bfast]

No.  It's [indemnification] merely a contractual obligation you take on to defend the suit and compensate your customers for any liability they face.  The contract for indemnification is between you and your customer.  In theory, they should be comforted by this and go forward if you seem prepared and able to fight this out in court for them.

If my company is small, and I cannot find a way to deal with these guys, why would a customer feel confidence from my indemnification?  It sounds like indemnification is a promise made by me to my customer saying "if there is an intellectual property problem, I'll fix it."  Seeing as there is an intellectual property problem on the plate, true functional indemnification calls me to fix it.  I know I could wait until the other guys file -- calling their bluff, but my customer, then, would be counting on my ability to defend them in such a suit.  If I don't defend them, they are in deep doodoo.   Why would any customer trust that?  Ie, as a little guy, I don't believe that a promise of indemnification offers very much comfort at all to the customer.  Am I wrong?  Certainly that is how this customer currently sees it.

[JimIvey]

"if you seem prepared and able ... ." (emphasis supplied).

Regards.

[Dayal]

Cease and Desist notice/ Caution Notice in the leading papers is recommended to announce your bonafide/prior rights . The name of the infringer need not be given. Some party is trading upon my proprietory rights and the trade and public is cautioned.Any loss to the trade and public will be the liability of the infringer. Evidence in support ought to be available before filing the suit to restrain misuse . Stay to be taken and then  further legal proceedings to go on.