In this Oct. 21, 2014 webinar, “You’ve Got Mail: How Your Company Can Better Respond to Patent Cease and Desist Letters,” Jason Schwent detailed the actions you can and should take after receiving a cease and desist letter concerning allegations of patent infringement. While patent law cease and desist letters can be upsetting and sometimes confusing, there are a series of steps that companies can take to be better prepared in the event that they do receive one. By taking a closer look at the risk involved in such cease and desist letters, companies can better assess the strategies to deal with them.

1. So You Received a Patent Cease and Desist Letter…
Now What? Jason M. Schwent
Thompson Coburn, LLP

2. Welcome and Introduction
Jason Schwent
Partner
Thompson Coburn LLP

3. Patent Cease and Desist Letters
 For those unfamiliar…
 Frustrating,
frightening, and
infuriating
 For those familiar…
 Routine
 Beginning of a
known course of
events

4. Patent Cease and Desist Letters
What is a “cease and desist” letter?
Why would you receive one?
What information is found in a cease and desist
letter?
What should you do if you receive one?
What are your options?

5. What is a Cease and Desist Letter?
Letter asking you to stop doing something
 Doesn’t always say “stop infringing”
 “Helpful” suggestion to license
DJ law
May not look adversarial
 DON’T BE FOOLED
 If letter sent, litigation is contemplated

6. Why would you receive a Cease
and Desist Letter?
 You’re infringing
 Making, using, selling, offering for sale, or importing technology covered by a patent
 Having your own patent not a defense
 You’re not infringing, but doing something close
 Can’t always tell
 You’re being targeted incorrectly
 Supplier issue
 Customer issue
 You’re the target of fraudulent conduct
 Hoping you won’t investigate
 Protection scheme

7. What’s in a Cease and Desist
Letter?
 What to expect?
 Law firm representing
party or company
sending letter
 List of one or more
patents at issue (not
always)
 Offer to license

8. What’s in a Cease and Desist
Letter?
 What may not be included?
 Responsible party
 Actual owner of the patent
 A valid patent
 Clear ID of allegedly infringing technology
 Term remaining on patents
 Careful/detailed comparison of patent to your
technology

9. What NOT to Do After Receiving
C/D Letter?
 DO NOT IGNORE
 May look unprofessional
 May be unclear
 May be mistaken
 May have no accusation of
infringement
 PATENT INFRINGEMENT IS ON
SENDER’S MIND
 Even if not, you should
assume it is
 Ignoring will not make go away
 Could make much worse (3X)

10. What Must You Do After Receiving
C/D Letter?
 #1 – Investigate the claims in the letter
 Preferably in conjunction with an attorney
 Affirmative duty
 Willful infringement
 #2 – Preserve information related to accusations
 C/D letter provides notice of possible litigation
 Spoliation
 All information relevant to any claim or defense
 ID custodians
 Halt automatic delete
 Inform of duty to preserve
 Electronic and hard copy

11. What Must You Do After Receiving
C/D Letter?
 #3 – Read the letter
 Not as easy as it sounds
 Cryptic/technical language
 Goal: ID certain key facts
 ID who is sending
 ID the patent number(s) at
issue
 ID the technology being
accused

12. What To Do After Receiving
C/D Letter?
 #4 – Investigate entity that sent
letter
 Not complicated/No lawyer
needed
 Google them
 Ongoing business? No
information? Related
companies?
 Have they sued others?
Successful? Stayed?
 Were patents invalidated?

13. What To Do After Receiving
C/D Letter?
 #5 – Get to know the asserted patents
 What does letter say about the patented technology?
 Does this match the patents?
 Any mention of the patent(s) on Google?
 Key words: invalid, unenforceable, reexamination, post-grant review
(PGR), inter partes reexamination (IPR), covered business method review

14. What To Do After Receiving
C/D Letter?
 Read the patents
 USPTO.gov
 Google patents
 Issue date
 Assignee (does it match letter)
 Priority claim
 How long pending?
 Related patents?

15. What To Do After Receiving
C/D Letter?
 #6 – Investigate the accused technology
 Did you develop?
 If not, who did? How did you acquire? Indemnity?
 If so, who was involved? When?
 Why was the technology developed/acquired?
 How valuable is the technology?
 Mission critical?
 Alternatives?
 Sets strategy going forward…

16. What To Do After Receiving
C/D Letter?
 #7 – Take an action
 Required to undertake reasonable
investigation and response
 Request more information
 Put ball in their court
 Develop
noninfringement/invalidity
arguments
 Prior art search
 Legal opinion
 PGR/IPR/CBM
 DJ action

17. What To Do After Receiving
C/D Letter?
 Stop infringing/switch to noninfringing alternative
 Is this possible?
 Won’t absolve
 Stops damages
 Seek license
 Involve an attorney
 Open discussions
 Early discounts?

18. What To Do After Receiving
C/D Letter?
 #1 – Investigate the claims in the letter
 #2 – Preserve information related to accusations
 #3 – Read the letter
 #4 – Investigate entity that sent letter
 #5 – Get to know the asserted patents
 #6 – Investigate the accused technology
 #7 – Take an action

19.  Jason M. Schwent
Thompson Coburn, LLP
jschwent@thompsoncoburn.com
 On Twitter -- @STLPatent
 Author of the “Patent Billy Goat” blog
—addressing patent litigation news and
providing tips/strategies for effectively
and efficiently dealing with patent
litigation
Thank you!

20. TCLE So You Received a Patent Cease and
Desist Letter .. Now What?
October 21, 2014
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