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[bfast]

I have computer software that has been accused of infringing on someone's patent.  It isn't, but they don't seem to want to believe me.  How does one go about getting an independant infringement analysis done, and how does one get such an analysis done vaguely affordably.

[JimIvey]

Generally speaking, non-infringement opinions are much cheaper than invalidity opinions.  There are a number of ways to keep the costs down.  Personally, I think you're better off using someone who understands the technology well rather than going for the cheaper rates -- fewer hours required vs. more hours at a lower rate.  But it's entirely plausible I'm influenced by self-interest here.  

Keep in mind what the opinion letter is intended to do -- avoid triple damages for willful infringement by having a legitimate and reasonable belief that you don't infringe a valid patent.  It's pretty clear that an attorney can provide you with the opinion to get you out of triple-damage territory.  Whether an agent can provide you with that opinion appears to be the subject of great debate at the moment.  

Recently, a court found that an opinion rendered by an employee/engineer was sufficient to avoid a finding of "willful" infringement.  So, you might get away with having your own opinion written out and set aside.  It's not an opinion of "independent counsel" so the opinion and its reasoning had better be at least reasonable and plausible, legally speaking.

The interesting implication of that opinion is that an opinion of an agent might be sufficient as well.  The fallout from any rule or law prohibiting agents from providing such opinions would be with the agent, not with you.  In particular, the agent could be in trouble for practicing law without a license.  I'm not intending to start a long agent/attorney debate, just to point out what might happen.

Now, notice that I said that an opinion from an agent or even from yourself might be sufficient to get you out of triple-damage territory.  In short, the bottom line is whether the jury believes you actually and reasonably believed the patent wasn't a problem for you.  The opinion is just one piece of evidence heaped on the scales of justice with all the other evidence of your beliefs in that respect.  The best evidence is an opinion from an attorney.  Next is an opinion from an agent.  Last is your own opinion, documented of course.  And, since we all know that you get what you pay for, the prices are ranked in the same order.

Lastly, the best defense is to counter with your own patent portfolio and enter into cross-licensing negotiations.  Of course, this assumes two things:  1. that you have a patent portfolio.  and 2. that the other guy is in business and might actually infringe one of your patents (e.g., isn't a patent troll).

And, no offense is intended to the patent trolls (can that term be used in a value-neutral manner?).  Many of them legitimately tried to start a business around their technology but didn't get funded.  

I hope that helps.

[eric_stasik]

bfast,

I am not an attorney and I do not accept that simply because you receive a letter accusing you of infringement that you have to start spending money with one.  

I don't go to the doctor everytime I get a headache either.

The burden of proof of infringement lies with the patent holder. Unless he is willing to provide you with a detailed element by element analysis of his claims versus your accused infringing product, he is probably fishing.

In the US there is something called Rule 11 which says in effect that the patent holder has to have a reasonable basis on which to file a lawsuit before filing the lawsuit. He can't file a suit and then use the court's power of discovery to help him fill in the blanks. Absent a court order, you are under no obligation to help him with the details.

Consider that often the patent holder isn't himself certain that you are infringing and may be on a fishing expedition hoping you will help him out. A vaguely worded accusation of infringement is a big red flag for me.

Unless he is willing to provide a detailed claim chart, then he probably can't and you would be a fool to do his job for him.

Do not give him ANYTHING. No prior art, no arguments why you do not infringe, NOTHING. Everything you say can - and will - be used against you.

That being said, depending on the circumstances, it may make sense for you to consult an attorney just to see where you stand. I don't go to the doctor with every headache, but certain pains should not be ignored. You don't need a formal opinion right away, but a consultation to see if an opinion is advised might make sense.

Good luck,

eric stasik

[JimIvey]

Mr. Stasik is right.  When I said you should have a firm and reasonable belief that you don't infringe and that you should document that, I meant that you should have that stored away for the day you end up in court (just in case).  If you're having trouble coming up with a good argument as to why you don't infringe, then you should be considering other actions.

Regards.