Response to a C&D

[smalltown2]

What is the name of your state? NY

I (and other people) got a C&D from a very big company with a lot of lawyers. Their C&D was quite nasty and I admit I pretty much put my tail between my legs and ran. I also pulled all the products they objected to from my site, although I believe they were (very) overreaching in what they objected to.

They have since sent more demand letters which I am ignoring since I already pulled the products. However, I am not at all sure that the products were actually infringing. I'm considering bringing this before a patent lawyer for their opinion. However, I don't want to fall into the category of "willfully" infringing and putting myself in danger of triple damages.

Have I already "admitted" that the products are objectionable by pulling them?

If not, and I find a patent lawyer who believes the products are not infringing and I reinstate them, should I then notify the company that I've put them back up, or wait to see if they object?

Also, I realize this is a difficult question to answer, but I would really appreciate a BALLPARK guesstimate of what it might cost me to research whether five or six products are actually infringing on the design patent this company claims it holds.

Thanks for any comments you might have!

 

[quincy]

You can go to www.uspto.gov and conduct a patent search. They explain how at the site. And you were wise to pull the products

 

[divgradcurl]

I'm considering bringing this before a patent lawyer for their opinion. However, I don't want to fall into the category of "willfully" infringing and putting myself in danger of triple damages.

"Wilful infringement" requires a couple of things -- first, it requires that you be put on notice of the specific patent that they believe is being infringed, and point out the specific items or products that they believe are infringing -- then if you continue to sell or make them, and you lose an infringement case, you could be liable for willful infringement. However, "advice of counsel" is a defennse to willful infringement -- if you get an opinion from an attorney that says that he or she has investigated the patents, and in his or her opinion believes that you are not infringing, that is generally a compete defense to willful infringement.

Two things to bear in mind -- a noninfringement opinion can be expensive, especially if there are numerous patents and products involved, and if the technology is complicated. Second, treble damages are bad, but the real problem with willful infringement in most cases is that you may be liable for the other side's legal fees...

Have I already "admitted" that the products are objectionable by pulling them?

No, not in any way.

If not, and I find a patent lawyer who believes the products are not infringing and I reinstate them, should I then notify the company that I've put them back up, or wait to see if they object?

It's up to you. You don't have to discuss anything with the other side, ever. If you get your opinion, you can go back to selling, and it will be up to the other side to sue you or not.

Also, depending on how strongly worded the C&D letters have been, you may be able to sue THEM for a declaratory judgment of noninfringment and invalidity. There are some advantages to being "first to the courthouse" that your lawyer can explain to you -- but that's if you want to go that route in the first place.

Also, I realize this is a difficult question to answer, but I would really appreciate a BALLPARK guesstimate of what it might cost me to research whether five or six products are actually infringing on the design patent this company claims it holds.

Really impossible to say, it will depend in part on where you are located geographically, whether you are working with a solo, or a firm, the size of the firm, the complexity of the patents, etc.

 

[divgradcurl]

You can go to www.uspto.gov and conduct a patent search.

Whether or not you do a search for patents is irrelevant to the question of willful infringement. The only real defense is advice of counsel (well, that and the fact that willfulness has an intent requirement, and must be proven to a "clear and convincing" standard).

They explain how at the site. And you were wise to pull the products

Why? If they are not infringing, why should they pull their products?

 

[smalltown2]

Thank you so much for taking the time to respond. You've given me a lot of useful information.