Responding to Patent Demand Letters: Leveraging State Laws on Bad Faith Assertion of Patents

Determining What to Include or Exclude in Response, Minimizing Risk of Litigation

Recording of a 90-minute CLE webinar with Q&A


Conducted on Thursday, March 2, 2017
Recorded event now available


This CLE webinar will provide guidance to patent counsel for responding to demand letters. The panel will discuss legal and strategic considerations, as well as current and proposed state laws addressing bad faith assertion claims. The panel will also discuss what to include or exclude in the response to avoid creating potential harm in future litigation.

Description

Patent disputes often start with the patent holder sending a demand letter to the alleged infringer. The best way to respond to demand letters, especially those from nonpracticing entities (NPEs), remains a challenge for many companies. After receiving a demand letter, the recipient should act to minimize or remove the risk to its business.

Recent state actions addressing bad faith assertions should also be considered. In the last two years, states have stepped in to fill a void left by Congress regarding bad faith patent assertions.

Over half the states have now passed laws to limit abusive practices by putting restrictions on patent demand letters. States have taken a variety of approaches to tackle the issue of bad faith patent assertions.

Responding to demand letters involves strategic decision-making, including factors such the patent owner’s proclivity for litigation, the relationship with the patent owner, the strength of the allegations, and what is being demanded by the patent owner.

Listen as our authoritative panel of patent attorneys examines how patent counsel should proceed upon receipt of a demand letter, including a discussion of legal and strategic considerations. The panel will also discuss current and proposed state laws, offer guidance on responding to patent demand letters, and outline navigating the new state laws.

Outline

  1. Considerations in determining whether to respond to the demand letter
    1. Legal
    2. Strategic
  2. State laws regarding bad faith assertion of patents
  3. Responding to patent demand letters

Benefits

The panel will review these and other key issues:

  • What are the key considerations for patent counsel when evaluating whether and how to respond to patent demand letters?
  • What is the effect of state laws on bad faith assertion claims on the response to a demand letter?
  • What are some of the pitfalls patent counsel confront in responding to demand letters—and how can they be avoided?

Faculty

Sharon A. Israel, Partner
Mayer Brown, Houston

Ms. Israel focuses her practice on intellectual property law with an emphasis in patent litigation, opinion work and client counseling. She has acted as counsel in IP cases before district and appellate courts, the ITC, and the PTAB. Ms. Israel has litigated patents relating to a variety of technologies, including cellular communications systems and devices, oilfield equipment, consumer electronics, chemical compositions, and medical devices, among others. She is a frequent speaker on patent-related topics, and has served in leadership roles in numerous organizations.

Brian R. Iverson, Member
Bass Berry & Sims, Washington, D.C.

Mr. Iverson concentrates his practice in complex commercial litigation matters, including intellectual property disputes, in federal courts, state courts, administrative proceedings, and alternative dispute resolution proceedings across the country. He has extensive experience representing clients ranging from individuals and small businesses to multi-billion dollar corporations as both plaintiffs and defendants in high-stakes litigation. Mr. Iverson's broad experience allows him to quickly understand his clients' business objectives and offer cost-effective strategies to achieve those objectives.

Baldassare Vinti, Partner
Proskauer Rose, New York

Mr. Vinti’s practice focuses on litigating patent, false advertising, trade secret, trademark and contractual matters in federal and state courts and before the International Trade Commission. He is a skilled IP litigator with extensive experience in all aspects of litigation, including trials (jury and bench), Markman hearings, appeals before the Federal Circuit, case preparation and strategy, depositions, motion practice, and settlement negotiations. Mr. Vinti is an author and frequent commentator on patent issues pertaining to medical devices and a host of other IP topics.


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Strafford provided an enthusiastic presentation that focused on patent practice, not theory.

David H. Vance

Vance Intellectual Property

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Patent Law Advisory Board

Charles S. Baker

Partner

Fulbright & Jaworski

David S. Bloch

Partner

Winston & Strawn

Irah H. Donner

Partner

Stroock & Stroock & Lavan

Ian N. Feinberg

Partner

Feinberg Day Alberti & Thompson

Anthony J. Fitzpatrick

Partner

Duane Morris

David Segal

Senior IP Counsel

Intel

Astrid R. Spain

Partner

Jones Day

Mark P. Wine

Partner

Orrick

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