Formulate a Nuanced Response to Patent-Notice Letters

09 January 2012 Publication

Texas Lawyer

When a patent-notice letter lands on a general counsel's desk, most wonder what to do next. Most GCs know they cannot ignore the letter, but it can be difficult to assess how to respond and how much due diligence to perform. But the letter itself—more specifically, the nature of the entity claiming to hold the patent—can help determine the appropriate response.

A patent-notice letter is a crucial step in allegations of patent infringement. In patent cases in the United States, a jury typically decides the amount of damages for patent infringement and whether such infringement is willful. If the jury finds the infringement willful, the court decides whether to increase the damages up to three times the jury award.

To prove willful infringement, the patent holder must show that the alleged infringer knew of the patent at issue and was objectively reckless in its continued infringement. A patent-notice letter serves that notice function; continued use of the disputed technology then may constitute willful infringement, raising the prospect of treble damages. A company that receives a patent-notice letter must, at a minimum, take sufficient measures to rebut any allegations that its behavior was objectively reckless.

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