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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

    Intermediate

  • work Practice Area

    Patent

Date & Time
  • event Date

    Tuesday, October 3, 2023

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will guide patent counsel on the use of patent infringement demand letters. The panel will discuss 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.

Faculty

Nathan C. Brunette
Partner
Stoel Rives LLP

Mr. Brunette focuses his practice on patent and IP litigation as well as complex business disputes. He has represented clients in state and federal courts, private arbitration, and Uniform Domain Name Dispute Resolution Policy proceedings. Mr. Brunette’s experience includes litigating patent, trademark, trade dress, licensing, cybersquatting, trade secret, civil antitrust, and commercial matters. In addition, he counsels clients about the protection, enforcement, and monetization of technology and IP assets in the context of business opportunities and transactions.

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Elliott Williams
Attorney
Stoel Rives LLP

As an intellectual property attorney, Mr. Williams helps companies protect market share for innovative products and services. For startup companies this is often the crown jewels of the company. He handles enforcement and defense litigation relating to inventions, brands, trade secrets, software, and other forms of creative work product. This often happens in federal court; before federal agencies, e.g., the U.S. Patent and Trademark Office, International Trade Commission, Customs and Border Protection; and through online enforcement channels. Many of Williams’ cases begin and end with a “friendly” letter. He enjoys discovering creative ways to use IP to enhance revenue by limiting unfair competition.

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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 balance achieving their goals in sending the letter against 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 patentholders 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.

Outline

  1. Patent owner considerations
    1. Potential DJ action
    2. Litigation--where and when to file
  2. Patent owner strategies
    1. Careful drafting to avoid DJ action
    2. Timing
  3. The recipient of an infringement letter issues
    1. Is the sender a competitor?
    2. Are you infringing?
    3. Business interruption
    4. Litigation
  4. Infringement letter recipient strategies
    1. Defenses
    2. Litigation
    3. Opinion of counsel
    4. Response
  5. Best practices

Benefits

The panel will review these and other noteworthy questions:

  • What factors should patent owners consider before sending such a letter?
  • How can the language of the letter manage the risk of a DJ action while achieving the letter’s goals?
  • How do the contents of an infringement demand letter help counsel evaluate the risk and create an appropriate response?
  • What steps should counsel take to minimize the risk of actual damages and/or injunctive relief?