Ronald Riley of InventorEd provides recommendations on how to investigate and pursue patent infringers. What follows below is Revision 16, excerpted from revision 14 of Acquiring & Defending Patents. The 9th draft was published in PCIM - Dec 94.
There are many ways to deal with infringers. An infringement suit should be the last step. The first step is to notify the infringer by certified mail. Your notice should be polite, friendly, and firm. Seek a meeting with upper management and try to iron out the problem in direct negotiations. Allow one month from the time they receive the notice for them to respond.
An infringer is likely to use a number of defenses. Their first defense is likely to claim that they are not infringing. And once you demonstrate that they are infringing they will attack validity using any of the requirements for a valid patent such as enablement, best mode, novelty, and non-obviousness. If they can show any problem in these areas they may use such to invalidate a patent.
Remember that an infringer is going to scour the earth looking for prior art to knock your patent out as not being novel. It behooves all inventors to do a very thorough prior art search when they are getting a patent, but failing that they should still do such when they think hostilities are imminent. It is better to know how vulnerable your patent may be before you dump a bunch of money into it. No one wants to get into a fight and get blown out of the water by art that was not discovered.
Another common defense is for the infringer to try to show that the patent was obtained by inequitable conduct. One way to do this is to show that the applicant did not reveal all of the prior art to the patent office. So For example, an infringer ma cite "killer" prior art such as a technical article written by the applicant years before the patent application was filed that contains all of the elements of the application. If it were disclosed it would cause the application to be rejected.
It is important that you understand how declaratory judgments (DJ) can be used against you. If your letter to an infringer states as an absolute that they are infringing they may sue you for declaratory judgment in the jurisdiction where the letter is received. If your letter to them states that they may be infringing they probably will not be able to bring suit in their jurisdiction. It is a common tactic of large corporations to sue for declaratory judgment, hoping that the inventor will fold.
If an infringer invites you to visit them to discuss the possibility of a license exercise extreme caution. I have heard of a number of cases where such an offer was made to sucker the inventor into going outside his jurisdiction. The inventor was sued shortly afterward in the infringer's jurisdiction, costing them many tens of thousands of dollars to defend themselves far from home. In such a situation I suggest you request that they come and meet in your jurisdiction.
If they haven't acknowledged your initial contact call the president or CEO of the company and request a meeting. It is best to remain calm and allow your opponent to slowly come to terms with the fact that you are not going to tolerate theft of your intellectual property.
Companies have a personality the same as individuals. Some are basically honest; while others are as slippery as many used car salesmen. There is a tendency for management of each company to attract other people with the same values or lack of values. No one likes to admit they are wrong; the same applies to businesses. The honest companies will try to settle, but it may take several meetings and some time to convince them, typically one to two years. Dishonest companies must be shown that there is a price to be paid for their actions.
Companies which intentionally infringe patents usually have other problems with the way they apply technology. Infringers often cut corners in their engineering. A poor implementation of your patent can severely damage your ability to market to others if potential customers perceive the invention as being flawed as a result of the infringer's marketing of a poor design. You may be entitled to additional compensation as a result of such damage. Identify deficiencies in their implementation of the patent's concepts. It is possible to exploit a situation where they have product liability exposure due to poor engineering. My experience is that at least half of the parties who infringe my patents produce designs which are hazardous.
You are an expert in the technology; your patent (s) are evidence of that expertise. You can sell your expertise to other parties who have been damaged or who may be damaged by an infringer's misapplication of the technology. This will help differentiate your design from the poor implementation offered by the infringer and generate cash flow while leaving the infringer with a serious customer relations problem.
Referring your client to other clients that have the same problems is also an effective tactic. My experience is that companies that have defective product are influenced by the fact that many other purchasers of the product have the same problems. There is a good chance that one or more of the companies that have been victimized will demand that the infringer fix their problems at no cost. They might even sue the infringer for damages. The infringer is going to get very tired of dealing with irate customers. This will pressure them to settle your claim.
Do not disparage the infringer in any communication you have with end users. Confine your statements to issues about the problems with implementation of the product that they purchased. If you feel the product is poorly engineered be careful about how you impart that to the customer. Do not tell the customer the engineering is bad, tell them that there are considerable differences between different suppliers and that xyz company's implementation is much better. The purpose of this approach is to help the customer come to their own conclusions concerning the quality of the infringer's product without opening the door for the infringer to sue you.
Knowledge of the marketplace is a valuable tool. If you know for whom the infringer is bidding jobs, you can contact those people and inform them that you may seek an injunction to stop the infringement. Most manufacturers want to know about infringing products, both to limit their own liability for selling or using a product that infringes, and to avoid any consequential damages they might suffer as a result. In many cases companies will not purchase product from a company they believe is infringing to avoid being involved in the problem. Seek legal advice before you start notifications because the wording of the notification is important to avoid the infringer suing you in the jurisdiction where the notice was given.
A patent infringement suit will take several years to impact the company's bottom line. Notification of the infringing companies customers or potential customers of infringement can cause their customers to withhold or cancel orders; this has an immediate effect on the bottom line. Since many organizations are motivated by short term profit, they may pay more attention to the loss of current or expected jobs than they do an infringement suit.
Many management people are not aware of the provisions in patent law which allow triple damages and attorney fees. A company is legally responsible for knowing about current patents, either granted or pending. Ignorance is not an acceptable excuse. They can be forced to pay up to triple damages and your attorney fees under certain conditions. Punitive damages are usually awarded for willful infringement.
Juries tend to take a dim view of companies stealing from individual inventors. They are especially sympathetic when the company is large or foreign owned. If polite persuasion didn't work, it does not hurt to play hardball. It is very important that you understand both your and your adversary's strengths and weaknesses before you get into an all-out war.
Gather as much information on an infringing company as possible before notifying them because they will take measures to block your acquisition of information as soon as they realize you are a serious threat. Contact past employees. Companies that steal intellectual property usually shaft employees and an ex-employee that has not been treated well can be a goldmine of information that will make your infringement case easier to pursue.
Current employees often will help you if you ensure that their employer doesn't know of their involvement. This is especially true of employees who have been mistreated that don't feel they can leave, either because the job market is poor or because their age makes it difficult for them to find another employer. It is very important that you protect them as a source; failure to protect them is morally and ethically wrong and will result in a valuable source of information drying up.
Most companies that have dishonest management have some honest people still on their staff. You should be on the lookout for these persons. They are often stuck in a job which they don't like. You should alert companies with which you have a good relationship that have openings about these persons. A fringe benefit of helping place persons at reputable companies is that they can afford to help you gather evidence about a past employer. Do not request that they supply you with confidential information while they are still employed by the infringer, doing so is not legal.
While investigating a patent infringement case be vigilant for evidence of other wrongdoing by the infringing organization. Organizations that have questionable ethics often break the law in other areas besides intellectual property, and exposure of that wrongdoing can lead to the disreputable organization deciding to settle your claim.
If the battle escalates expect your opponent to accuse you of inequitable conduct, a fancy term that means you committed fraud to get your patent. Infringers like inequitable conduct charges for several reasons, not the least of which is that they can go after all your personal assets if they prevail. Both declaratory judgment and inequitable conduct are tools often used by large entities against an inventor. Both allow them to take depositions from you, which they will compare and distort to their advantage.
A patent requires a long term commitment. Be ready to invest years, thousands of man hours, and thousands of dollars to successfully bring your idea to market. Don't get discouraged; all worthwhile things in life require perseverance.
Copyright 1994 - 2002 by Ronald J. Riley, copies may be made for individual use. This document may be posted on Web sites. Check with the author for the most current revision.