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

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 decision in Jack Henry & Assoc. v. Plano Encryption Tech. (Fed. Cir. 2018) warned 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 precedent and the changing landscape around venue for patent infringement actions, patentholders should carefully consider their goals in sending an infringement demand letter and 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 the potential ramifications for business interruption, litigation, or a license agreement. 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 and responding to an infringement letter.