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By Joel I. Rosenblatt, Attorney at Law
Mr. Rosenblatt, a Registered Patent Attorney with the U.S. Patent and Trademark Office, practices in the commercial law of technology and the Internet and the law of patents, trademarks, and copyrights. He is a Florida Supreme Court Certified Mediator, a Florida Bar Approved Mediator for Computer Law Disputes, certified as a Mediator and Arbitrator for the U.S. District Court for the Middle District of Florida and is admitted to all U.S. District Courts for Florida. Any questions or comments may be directed to Mr. Rosenblatt at (321) 727-7626; FAX: 727-8209 or by email to jrosenblatt@cfl.rr.com
How To Defend Yourself
No, we are not talking about the manly art of self-defense, as in the days of the Great John L. Sullivan (you may remember his claim to fame was he could “lick any man in the house.” and Gentleman Jim Corbett (so he was called by his friends), but about defending a direct claim, implied allegation or innuendo, of patent infringement. “So what,” you may say or you might say, I’ll deal with it when it comes.” That may be convenient for the here and now but as we hear all the time, we must prepare ourselves for the future. Sorry to bring in the inevitable that awaits us, but in these days when a patentee can literally make millions upon millions and there are “very big” intellectual property law firms who believe they were unfairly excluded from the multi-million dollar personal injury settlements and want an equal opportunity to play in the big leagues under winner take all contingency rules, just like the big boys playing in the medical malpractice, personal injury and product liability areas, there may be nothing between the struggling small business and bankruptcy, without some timely directed defensive preparation.
It all starts innocently, usually by a letter reciting one or more patents, (‘the more, the better, and that will become apparent if it is not already obvious), saying the listed patents should be of interest, or one or more of the listed patents may be infringed. Up to this point, there is no more then a polite suggestion to look at the patent(s) and consider the scope of the claimed invention against the recipient’s products or services, or a more direct invitation to determine whether or not, the recipient infringes the patent claims. Either way, like it or not, it’s like a subponea from Congress; it can’t or shouldn’t be ignored and must be carefully evaluated.
The urgency is the same for the subpoened witness, in the case of a Congressional invitation or for an innocent party manufacturing or selling a product or providing a service, with no prior knowledge of any patent or reason to believe a patent exists or there is any reason to believe any case for infringement can possibly exist, because ignoring the invitation, may lead to escalating irreversible consequences. While in the case before Congress may be easier where there may be only jail time for contempt, a worse case may be faced for patent infringement where the punishment for willful infringement may be treble damages, which means an infringer knew or should have known, it was infringing a patent and went ahead and did it anyway.
So, we come back to preparation or at least knowing what to do when the “suggestion of infringement” arrives in the mail. For the case where even the non-patent professional attorney can read the patent specification and the claims and is able to interpret the scope of the claims “as clearly outside the product or service alleged to infringe,” the solution may appear easy. That is to write the patentee, explain how the product is made or operates or how the service works, and, as directed to a reasonable person, who certainly will see the truth as you do, the problem will disappear. Right or wrong? I’ll take wrong and give 3 to 1 on the outcome. Why? Because we are no longer dealing with a lay person who reads the patent as you or any other educated person might. We are now dealing with a lay person who may have received a little knowledge from his or her patent attorney, and, as the saying goes is not only the “dangerous person with a little knowledge,” but has been treated to visions filled with the kind of easy licensing royalties or, better still, treble damages for willful infringement, that is no better or worse than anyone’s dreams of winning the lottery.
What is it that this “patent attorney” is able to do that changes a person educated like the rest of us to believe the law is “not an ass” (contrary to the opposite assertion by Charles Dickens in one of his well known works of fiction). It could be no more than inadvertently planting the seeds of greed, or inflating the inventor’s self-aggrandizing belief in his or her invention, which to some inventors may come naturally. Whatever, or however, the “mind control” may work, it’s enough to start the process which will create some confusion, trepidation, and risk for the putative infringer. Which brings us back to the reality of how to deal with a “patentee’s letter.”
As a first step, it is suggested that the patents cited in the letter be ordered or from the U.S. Patent & Trademark Office or copied from the Patent Office web site. The web site is www.uspto.gov. Patents can be ordered for $3.00 per copy which is an inexpensive way of initially proceeding with the investigation. I say “initially” because you may be selling a better bowling ball while the patent may be claiming a baseball glove. That would be the easy case. However, you may be selling a baseball glove while the patent is claiming a way specific material used in the manufacture of the glove. But you are just the reseller and how would you know what is in the glove? In that respect, that you are only the reseller, you may have a way out. Look to your contract with the manufacturer. Does it have a warranty or an indemnity and agreement to defend a patent infringement action, and does the party giving the warranty and indemnity have the resources to make good on these agreements. If so, then send the letter and the patents to your warrantor or indemnitor and let them worry about it. Make sure you advise the patentee you are studying the patents and will reply to his letter. Chances are the patentee’s patent attorney knows you are merely the reseller and the real culprit (if there is one), is the manufacturer and the letter sent to reseller like yourself is a tactic for putting pressure on the manufacturer.
However, if all of the potential blame and consequences falls on you, then it’s time to take action. But first a word about the arcane and difficult world of patent claim interpretation. Of course the Patent Law requires the patent claims “particularly point out and distinctly claim the invention.” 35 U.S.C. 112, second paragraph. That means, as a general rule, the claims are analyzed in light of the specification (that’s the part of the patent from, and including the “Summary” to, but not including the numbered claims, the teachings of the prior art, and the interpretation that would have been given the claim by “one of ordinary skill in the art.” By the way, If anyone has met any such person, I would like to know. And that takes in only those claims set in clear unambiguous language describing the parts of the invention by nouns and adjectives. (Sorry if I get a little deep here). What if the claim language includes verbs used to describe the operation or functions of the claimed invention. Operations or functions tend to get a little fuzzy, especially in the case of electronics where the operation may be described in complex mathematics. Perhaps not quite the stuff of the fuzzy math accusations made in one of the past elections, but invariably involving questions of degree and interpretation and you know how engineers and scientists can disagree. If you don’t believe me, try reading competing contractor bids for a Dept. of Defense missile defense program.
If that’s not enough, there may be the added task in interpretation of “means or steps, plus function” claims, where nothing is recited in terms of identifiable tangible objects or steps in a process, but are written in terms limited to the functions performed or by the steps used. Here is nothing less than the absolute requirement to read the specification and interpret the claims as corresponding to the structure, material or acts described in the specification and equivalents thereof. I inserted the equivalents in italics for a reason because that is the real challenge in interpreting the enforceable claim scope. A patent practitioner would start by a careful reading of the specification, looking for any statements of equivalents or equivalency to the structure, material or acts, described in the specification. That would be followed by a thorough reading of the file history. That is the Patent Office record of the application and all of the prosecution history of statements made by the examiner and rebuttals by the patentee. No patent infringement study would be complete without a review of the prior art patents cited by the examiner during the prosecution as well as any other patents discovered in a separate patent infringement search.
It is easy to see how a very expensive project may start with a letter suggestion, implication, or innuendo of patent infringement. That is why some, receiving such a letter, will only study some but not all aspects of the patents validity. While a patent attorney would not advise such a course, available budget may make a limited study inevitable and with it the chance that if inadequate, the patentee may be awarded treble damages for willful infringement.
It is the costs of the patent study that is the real weapon of the patentee. This tactic works especially well where there is a portfolio of patents covering a device, system or process, escalating the study’s cost. Rather than commit to spending an amount for a study that may reveal direct infringement anyway, it may make better sense to take a license, pay royalties and rest secure there will never be an infringement action with a possible injunction perhaps putting you out of business. And, it turns out, the patentee is usually willing to offer generous licensing terms that makes the choice between a study and a license, easy. As my old mentor (old in wisdom and experience and not necessarily in age), in mediation used to say to mediating parties faced with a difficult choice, “if you have to accept a lemon, then use it to make lemonade.”
Next month it will be Trademark infringement, where the possibility of doing battle with a “famous” trademark or the prospect of actual damages, could easily force a putative infringer into a quick but costly settlement
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Joel I. Rosenblatt is state Supreme Court certified and available for mediation and arbitration. He practices as a registered patent attorney in patents, trademarks and copyrights. Specific areas of practice include commercial law related to electronics, computers, data processing, telecommunications, materials and mechanical engineering, the Internet and entertainment and in the development and licensing of technology and creative works. As Intellectual Property and Licensing Counsel for Fortune 200 corporations, he has acquired numerous patents for electronics and computer related inventions, and has prepared and negotiated design, development and distribution agreements for software, telecommunications, electronic technology, and creative works. As a logistics attorney, he has provided counsel and representation in the field of customs, logistics services, and in loss and damage claims.
Mr. Rosenblatt is available for mediation and arbitration in the fields of general law, intellectual property, entertainment, and technology law, and in logistics law and loss and damage claims. Emphasizing technology and the arts, he serves a wide range of intellectual property and commercial needs for individual and business clients. Mr. Rosenblatt, as a senior level attorney can provide clients easy access and quick turnaround.
Education and Professional Affiliations:
Mr. Rosenblatt holds a Bachelor of Electrical Engineering Degree from the New York Polytechnic University, an MBA from the Wharton School of the University of Pennsylvania, and a JD from the Catholic University of America Law School.
Mr. Rosenblatt is a Registered Patent Attorney with the U.S. Patent and Trademark Office and a member of the Florida and New York State Bars. Admitted to practice in the Court of Appeals for the Federal Circuit, the United States Court of Appeals for the 11th Circuit, the United States Court of International Trade and the United States District Courts for the Northern, Southern, and Middle Districts of Florida. Florida Supreme Court Certified for Circuit Court Mediation and approved by the Florida Bar as a Mediator of Computer Law Disputes. Mr. Rosenblatt has completed Florida Supreme Court Certified Arbitration Training and is certified as a Mediator and Arbitrator in the United States District Court for the Middle District of Florida. jrosenblatt@cfl.rr.com . |
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