These days, companies doing anything of import in the telecommunications, software and other fields are more likely than ever to receive a cease and desist letter (or “C&D” for short) from a disgruntled party. For example, an earlier post covered Adam Corolla’s ordeal with non-practicing entity Personal Audio’s U.S. Patent No. 8, 112,504, a podcasting distribution patent.
The party sending a C&D might be one of those pesky “patent trolls”, or it might also be another struggling company who legitimately believes that their patent is being infringed. Nonetheless, every C&D needs to be assessed and handled. The potentially hammer-like nature of cease and desist letters came to the attention of the Obama administration in 2013, which resulted in a new website with new resources to help the (rightfully) freaked out recipients of C&D letters. The ‘website‘ is actually a new portal on the existing UPSTO website, but offers a slew of new and useful resources.
Before exploring some of these resources, though, there are some important points to keep in mind. Most important, no blog or website, or even the USPTO, can resolve a C&D that you may have received. Promptly having your own attorney help you assess the C&D and formulate a response strategy is key. Along these lines, the USPTO informs us that the info on its site does not constitute legal advice and should not be considered to replace advice from an attorney (see the USPTO website for further details on its disclaimer).
That said, let’s take a look at some of the resources on the site. The first page of the site has some very nice looking icons that lead to FAQ’s about cease and desist letters and lawsuits in general (e.g. there are “I’ve Been Sued” and “I Got a Letter” buttons). For today’s post, though, we’ll take a look at the “Resources” button.
The “Resources” section includes the following categories (there is some overlap…): 1) resources that help you find cases related to the at-issue patent; 2) resources that help you find other parties who also received a C&D letter from the same company; 3) resources that help you find prior art on particular patents, statistics and challenges to some patents; and 4) government and other resources for general information on patents and patent litigation (e.g. Electronic Frontier Foundation, Federal Judicial Center’s “Patent Video”and a “Patent Term Calculator”).
Let’s take a look at, #1, resources that help you find lawsuits related to the patent or other party on the other end of your cease and desist letter (“Related Suits” subsection). This information can be very valuable in that you might be able to ascertain: 1) whether your potential opposing party has a history of settling or litigating disputes; 2) whether the validity of the at-issue patent has ever been challenged; 3) other defendants that the opposing party has sued; and 4) any particular claim terms of the patent-at-issue that might have been litigated. In short, this type of information can help give you a better idea of your opposing party’s strengths, weaknesses, patterns and intentions.
There are 5 resources in the “Related Suits” subsection:
1) Docket Navigator. The USPTO’s link to Docket Navigator is the free info part of Docket Navigator’s larger research offerings. As such, the information is somewhat limited. Unless you pay for a subscription or sign up for a 30-day trial, you’ll only get a list of other defendants and the number of pending cases and other proceedings involving the patent-at-issue. To use this part of Docket Navigator, you simply put the patent number into the search box (don’t use commas). If you have the money or are eligible for a sponsored subscription, you may want to check out Docket Navigator’s full service plans, which provide detailed information about significant patent cases and Patent Trial and Appeal Board proceedings.
2) Lex Machina: Lex Machina offers what it calls a “Demand Letter Analytics Tool”. To use the tool, enter the name of the company that sent you a demand letter, the patent at issue, the name of the opposing counsel and then upload the demand letter. Lex Machina provides information on the number of other patent cases the opposing party has filed and how many of those cases went to trial. Ten of the most recent patent cases and their respective venues will be be listed. The catch, though, is that you’ll have to sign up for a subscription to obtain more detailed info on the listed recent patent cases.
3. MaxVal: MaxVal’s “Max-Insight” feature offers different plan levels, including a free plan. Once you register for the free plan, Max-Insight gives you access to 5 patent term estimations per month, 1 patent family tree per month, 2 Information Disclosure Statement generators per month, and 5 claim chart generators per month. All plans, including the free plan, also give you access to additional features such a claim set comparison tool, a patent maintenance fee check and a patent pdf extractor with OCR. The parent company, MaxVal, also offers patent-related business solutions, such as an Invention Disclosure Capture System and prior art searches.
4. Patexia: Patexia is an interesting site that allows you to research issued patents and applications using keywords and specific fields (e.g. assignee and claims). While the USPTO also offers patent searches using key words and similar fields, Patexia also offers additional features such as the number of issued patents and applications by year and some lawsuit data. Although the lawsuit data has a keyword search feature, we could only get the search to pull up lawsuits based on a party name search. For example, a search for “exceptional case” only turned up cases where one of the litigants had the word “exceptional” as part of its name. Another interesting feature that Patexias offers is a crowd-sourced prior art search feature.
Additional resources, such as “Trolling Effects” will help you locate C&D letters that other parties have received. For example, we put “Personal Audio” into the search field and pulled up a slew of C&D letters sent to different parties by Personal Audio. Note that the recipients’ names are often redacted, however.
Have you tried out any of the resources listed on the USPTO website? If so, let us know about your experience! Which did you find most useful??
This post is intended to convey general information only and should not be construed as a legal opinion or legal advice. Also, any product, service or company reviews are based on our own experience and we have no affiliation or relationship with any of the cited companies, nor the USPTO. Any opinions expressed are our own. Readers should not take any action, or refrain from taking any action, based upon the information contained in our site and posts, but should consult with their own attorney concerning their own situation and their specific legal questions. Visiting our website, reading posts and/or posting comments does not establish any form of attorney-client relationship with us.