Patent Infringement on an item we are Selling

[Victrola]

Today I received an email from someone concerning an item we make and sell on eBay. I'm taking out the Company name and replacing it with xxx's. Anyway, this person said:

"Did you know the Advanced design filter is infringing on a patent held by XXXXXXX.? Even though the filter sponge is square and the center tube is made of different material, the concept is the same. Thus, XXX is requesting that you delete this item from your store. "

I replied with:

"Please explain further why you have sent me an email that this filter is infringing on a patent held by XXXXX. You say "the concept is the same". But you do not elaborate. Please let me know your patent # with a company explanation and we will review it and get back to you. "

He then replied with his patent number and said:

"XXXXXXX has the patented the unique concept of the base off of the bottom with a cylindrical tube in the center surrounded by filter foam with air being supplied. The concept of your filter is similar.

As of this day July 11, 2005, you have been provided notice to discontinue selling this product in the United States. Any continued sells will be subject to infringment penalties. Patent infringement is a very complicated issue. Please refer this to your attorney for review. "

Okay.... that is the background information. We then went to his patent and there are six claims. The only one out of the six that we can see that they are inferring as infringement is:

2. An aquarium filter as claimed in claim 1, said plug means comprising a base, said base including a flange for resting on the bottom of an aquarium, said base supporting said sponge filter above the bottom of the aquarium, and having sufficient weight to prevent floating of said aquarium filter.

Yes our filter does have a base (realistically all aquarium sponge filters have a base) but the last part of claim 2, says: having sufficient weight to prevent floating of said aquarium filter. Our filter base is not weighted down like theirs is, the sponge has to be totally saturated before the filter will stay on the bottom of a bare bottom aquarium.

I guess what I'm asking is do all six Claims have to apply for patent infringement or just one and if just one, does every part of that one claim have to apply?

 

[divgradcurl]

I guess what I'm asking is do all six Claims have to apply for patent infringement or just one and if just one, does every part of that one claim have to apply?

Only 1 claim is sufficient for a finding of infringement, but you need to be infringing on every element of that one claim. In the claim you mentioned, it's a dependent claim (dependent on claim 1) so you would need to be infringing on all of the elements of claim 1 as well as the elements in claim 2.

Unfortunately, it's not always easy to determine whether or not you are infringing simply from looking at the claim language -- you need to read the patent in the context of its specification (what the written description says), its prosecution history (what the inventor said to the patent office when they were trying to get the patent issued), and current case law. You really should talk with a patent attorney, who can review your product, the patent, a copy of the prosecution history for the patent, and review everything in light of the current caselaw (the Festo case, amongst others).

Here's the risk -- you have been put "on notice" by the inventor that they believe you are infringing on their patent. If you continue to sell the product, are sued for infringement, and lose, you could be liable for triple damages -- because you are "on notice" of the potential infringement, if you are found to be infringing, the court would likely find that your infringement was "willful" and assess the higher damages.

However, if you get advice from counsel, and you attorney reviews everything and says that he or she believe that you are not infringing, then you can continue to sell the product and not have to worry about "willful" infringement.

If you and your attorney really don't think you are infringing, because you have been accused of infringement, you could (if you wanted) file an action for declaratory judgment of noninfringement -- basically, you don't have to wait and see if they will sue you, you can force their hand by filing the DJ action. If the infringement is really speculative, maybe the threat of a DJ action would be sufficient to get them to back off. Of course, threatening to file a DJ action might be enough to compel them to file an infringement action against you, so who knows... You'll want to discuss these litigation tactics, their benefits and their risks with your attorney.

But don't ignore things because you feel you are not infringing -- even if you do nothing else, protect yourself by getting an opinion of counsel.

 

[Victrola]

However, if you get advice from counsel, and you attorney reviews everything and says that he or she believe that you are not infringing, then you can continue to sell the product and not have to worry about "willful" infringement.

But don't ignore things because you feel you are not infringing -- even if you do nothing else, protect yourself by getting an opinion of counsel.

Thank you very much. You have cleared a lot of things up for us and eased our mind for the most part. We have made an appointment with an attorney.

 

[Victrola]

One more question. As we were going over and printing all the emails we received concerning this "on notice" when we realized that nowhere on the emails does it refer to any company name on the patent. The "From" on the emails is from an aol email addy and the emails are all signed in regards to the email address.

"Please visit the United States Patent and Trademark office. Our patent number is x,xxx,xxx. You can easily access a copy of our patent. (the Company Name) has the patented the unique concept of the base off of the bottom with a cylindrical tube in the center surrounded by filter foam with air being supplied. The concept of your filter is similar.

As of this day July 11, 2005, you have been provided notice to discontinue selling this product in the United States. Any continued sells will be subject to infringment penalties. Patent infringement is a very complicated issue. Please refer this to your attorney for review.


(Initials of Company Name)
Patent Enforcement
xxxsponge@aol.com"

You said:

Here's the risk -- you have been put "on notice" by the inventor that they believe you are infringing on their patent. If you continue to sell the product, are sued for infringement, and lose, you could be liable for triple damages -- because you are "on notice" of the potential infringement, if you are found to be infringing, the court would likely find that your infringement was "willful"
and assess the higher damages.

But have we been put on notice? Since as I mentioned there is nowhere on the patent the Company Name (just the inventor, none of the emails are from the inventor himself) and all the emails have are Initials of the Company. We are now wondering if someone is just giving us a hard time and spoofing emails. How are you supposed to be "officially put on notice" and how should it be signed?

Trying to cover our bases before seeing an attorney. Thanks!

 

[divgradcurl]

One more question. As we were going over and printing all the emails we received concerning this "on notice" when we realized that nowhere on the emails does it refer to any company name on the patent. The "From" on the emails is from an aol email addy and the emails are all signed in regards to the email address.

This isn't clear -- in your first post you said that the company name WAS used -- which is it?

But have we been put on notice? Since as I mentioned there is nowhere on the patent the Company Name (just the inventor, none of the emails are from the inventor himself) and all the emails have are Initials of the Company. We are now wondering if someone is just giving us a hard time and spoofing emails. How are you supposed to be "officially put on notice" and how should it be signed?

Well, there is no exact form which must be followed in order for another party to be put on notice of infringement -- the rule is "reasonable apprehension" of being sued for infringement, and whether or not "enough" notice was given to put the alleged infringer under "reasonable apprehension" of infringement is a question for the courts.

Based solely on what you've written, there are three potential ways of going forward here:

1. Ignore this letter, and wait until something more substantive comes in. If this is a spoof, this is the easiest and cheapest way of handling things. The risk, of course, is if it's not a spoof, then you could be found liable for willful infringement and enhanced damages if things ever got that far. Further, the fact that this comes from an AOL email address is not dispositive -- maybe their attorney trying to threaten you enough to settle in some way, but not threaten you enough such that you are under a "reasonable apprehension" of suit, and therefore have standing to sue THEM for declaratory judgment of noninfringement. If that's the case, the attorney doesn't seem to be doing such a great job, but the AOL address alone doesn't necessarily mean that much.

2. Contact the company who actually owns the patent, and see if this email came from them. The (large) risk here is that, even if it wasn't them, you've now given them info that maybe there is a potential infringement action out there, and maybe get them interested in suing you even if they weren't before. This is probably more risk than its worth.

3. Follow my earlier advice, and go see a lawyer, and follow his or her advice.

 

[Ben the 2L]

3. Follow my earlier advice, and go see a lawyer, and follow his or her advice.

As an I.P summer research intern that spends a fair ammount of time with patents... the comments from divgraducrl are accurate and this is very good advice.

-Bt2L