Infringment claim

[xapeila]

What is the name of your state?What is the name of your state?TX
I have a question.. Our software company was contacted by a Patent holder with claims of infringement.. They also contacted one of our OEM customers with the same claim offering both of us licensing based on their patent.. In the letter they said we may be infringing.. We had a "Infringement Analysis" done (35 pages long) with the attorneys conclusion and Opinion we were no infringing..

Our OEM has stopped shipping our software and will resume when we reach an agreement..

We have several documents consisting of articles on public presentations back in 1970s.. the book “Startup” .

My question why are they using “may be infringing” and not you have to “stop selling”

We feel strongly that their patent is based prior art. Their European Patent application was denied based on “prior art” in 3/05..

We do not want to go through the expense asking for a reexamination is there an other option?

Thanking everyone in advance.. Xapeila

 

[divgradcurl]

My question why are they using “may be infringing” and not you have to “stop selling”

To try and avoid giving you the right to file a declaratory judgment action. If they directly accuse you of infringement, you have an "actual controversy" and have standing to file an action for noninfringement -- basically you can head off to court and have the court decide whether you are infringing or not.

In practice, it ends up being about the same amount of trouble to file a DJ action as it is to defend against an infringement action. The advantage of filing a DJ is that you get to choose venue (you can choose the court the case is heard in), and you can control the timing -- maybe you can catch them before they are ready to sue, and put them on the defensive.

Anyway, there is a fine line between threatening someone enough to get them to cough up a license or other settlement, and going over the line and being subject to DJ. This language is an attempt to threaten you with infringement, but not subject themselves to DJ, although I would guess that the letter is already too threatening, and you would likely have standing to file a DJ based on what you've written. But your lawyer can advise you more accurately once he or she reads the actual letter.

We feel strongly that their patent is based prior art. Their European Patent application was denied based on “prior art” in 3/05..

We do not want to go through the expense asking for a reexamination is there an other option?

Not really. You could file a DJ, but that would be a lot more expensive than a reexam, although it might be quicker. Otherwise, you either have to work something out with them or wait to get sued, and deal with noninfringement and invalidity then. At least with the opinion of counsel you don't have to worry about "willful" infringement.

THE FOLLOWING DOES NOT CONSTITUTE LEGAL ADVICE.

I am NOT your lawyer, you'll want to talk with your own lawyer. Reexam is a like a nuclear missle -- if it hits, it's devastating. Problem is, once it's launched, you can't recall it, and you are stuck with the consequences. If you have really strong prior art, you might want to threaten them with reexam without actually filing -- if your reexam is successful, that will kill the patent (or at least the claims asserted against you), and they won't be able to enforce it against anyone else. Maybe if you and your lawyer can make a convincing case that you are likely to get their patent killed during reexam, they will back off, or at least offer licensing terms that you can live with. Perhaps preparing the reexam papers now, letting them see the strength of your art and how serious you are, would be enough to get them to knuckle under.

 

[xapeila]

Infringement claim

Thank you very much for your reply..

Most of what you wrote is what we have been tossing around.. Hearing it from you makes us more confident of our rights.
Should we provide them with our Infringement Analysis (cost was 10K)..
If we choose to file a DJ can we represent ourselves in court? We have very strong documentation that suggests prior art.
If the court sites on our side can we ask for lost revenue? Last how realistic is a positive outcome assuming our documents show a clear pattern of prior art?

Buenas Noches Xapeila