Patent Infringement Letters: New Considerations and Best Practices for Senders and Recipients

Implications of Jack Henry & Assoc. Decision, Leveraging Letters, Response Strategies for Alleged Infringers

A live 90-minute premium CLE webinar with interactive Q&A


Thursday, May 16, 2019

1:00pm-2:30pm EDT, 10:00am-11:30am PDT

or call 1-800-926-7926

This CLE webinar will guide patent counsel on the use of patent infringement demand letters. The panel will discuss considerations and strategies for both the sender and recipient. The panel will offer best practices for determining whether and when to send a letter as well as responding to an infringement letter.

Description

After identifying potential infringers, patent holders must weigh their options regarding their next steps: Litigation? Do nothing? Many choose to send an infringement demand letter, which puts the recipient on notice of the alleged infringement and demands the cessation of infringing activity. However, patent owners must carefully craft such notices to minimize the risk of a declaratory judgment action.

The Federal Circuit's recent decision in Jack Henry & Assoc. v. Plano Encryption Tech. (Fed. Cir. Dec. 7, 2018) warns patentholders that sending demand letters into a jurisdiction may subject them to venue and personal jurisdiction in the recipient's location. In light of this new precedent and the changed landscape around venue for patent infringement actions, patentholders should carefully consider what their goals are in sending an infringement demand letter, and thus how to balance achieving those goals against declaratory judgment risks.

Recipients of these demand letters must evaluate what course of action to take. Recipients should consider whether they are infringing the patent in question. They must determine who the sender is and what the potential ramifications for business interruption, litigation, or a license agreement may be. How should they respond to the letter to minimize the risk of actual damages, injunctive relief, or even a finding of willful infringement?

Both patent holders and recipients of infringement demand letters must carefully consider their approaches to patent infringement letters, assessing the risks and evaluating the impact of their actions.

Listen as our authoritative panel of patent attorneys examines patent infringement demand letters, discussing the considerations and strategies for both the sender and recipient. The panel will offer best practices for determining whether and when to send a letter as well as responding to an infringement letter.

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Outline

  1. Patent owner considerations
    1. Potential DJ action
    2. Litigation--where and when to file
  2. Patent owner strategies
    1. Careful drafting to avoid DJ action
    2. Timing
  3. The recipient of an infringement letter issues
    1. Is sender a competitor?
    2. Are you infringing?
    3. Business interruption
    4. Litigation
  4. Infringement letter recipient strategies
    1. Defenses
    2. Litigation
    3. Opinion of counsel
    4. Response
  5. Best practices

Benefits

The panel will review these and other noteworthy questions:

  • What factors should patent owners consider before sending such a letter?
  • How can the language of the letter minimize the likelihood of a DJ action?
  • How do the contents of an infringement demand letter help counsel evaluate the risk and create an appropriate response?
  • What steps should counsel take to minimize the risk of actual damages and/or injunctive relief?

Faculty

Brunette, Nathan
Nathan C. Brunette

Partner
Stoel Rives

Mr. Brunette focuses his practice on patent and IP litigation as well as complex business disputes. He has represented...  |  Read More

Donoghue, R. David
R. David Donoghue

Partner
Holland & Knight

Mr. Donoghue is a trial attorney and the deputy practice group leader of the firm’s IP group, focusing his almost...  |  Read More

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