Ask HN: Got a cease and desist for alleged patent infringement. What do I do? | Hacker News Reader

Ask HN: Got a cease and desist for alleged patent infringement. What do I do?

Hey everyone! I desperately need your help.

Today, my startup, "Rundown Creator" (link: https://www.rundowncreator.com/), got a cease and desist letter from a patent attorney. The attorney was acting on behalf of a company that I had never heard of until today. But apparently they have a product that they think is similar to mine, and have patents around it. The one they think I'm infringing is 8,195,515.

I responded to the cease and desist letter explaining that my company is small (it's just me), I have no money, and that my product was built and released before their patent application was even filed.

They responded telling me their clients have put a lot of money into intellectual property, and that I should lawyer up.

I haven't written them back yet.

What should I do?

Jeff

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Someone is threatening you with an attorney, you absolutely must speak with an attorney to have a fair chance.

There are some really bad answers in here. The way you handle this situation will decide your fate, you need to speak with someone who has the expertise to explain to you what your options are and what potential consequences each will have.

Since money is a problem you may want to follow this up with a question like "Ask HN: Does anyone know a patent attorney that will help me pro bono?"

I am not an attorney, but my understanding is that you do not have to respond to the letter in any way unless they have filed a complaint. You might want to respond in a way to try to prevent them from filing a complaint (possibly provide them with conclusive prior art examples and threaten to respond by trying to invalidate their patent (expensive)). Letting them know you have no money to defend yourself is probably not a good strategic move.

Be aware that if they file a complaint you will have to have a lawyer licensed to practice in the state where the complaint is filed (PITA).

It is a shame you don't have money. If your product existed before their patent was filed, them filing a complaint essentially saying the two are similar could be used as evidence (within its self) that your product is prior art and have the patent invalidated.

But realistically patents are just a giant cash pissing contest where the two parties throw as much cash in each others direction as they can until one of them runs out of money.

Sadly this is exactly the reason why the patent system is broken in the US.

You appear to have prior art that is in the public domain, two things that alone would mean that the patent should never have been granted in the first place.

As you have said lawyers are expensive, but in the interim all correspondence you have should refer time and again to your prior art and the fact that it was in the public domain. The main reason for this is that you are framing the argument should it ever get to court, not them.

One other thing you could add now is a counter-claim, as in, "if they wish to continue along this line of C&D you will apply for invalidation on the basis of existing evidence widely available on the internet".

Finally you should offer a resolution to the dispute, based on the evidence of prior art you will be happy to accept an on-going licence fee paid to you as a settlement and that youy would be happy to meet with them to discuss the details. The sum should not be outrageous, but something "reasonable" and affordable.

In this way you demonstrate that you are making an effort to be reasonable.

I'd be wary of ignoring a C&D. There may be legal ramifications if you end up getting punished for infringement. I am not a lawyer.

Please talk to a lawyer. Anyone on this board who is not a patent lawyer is talking out of their rear (including myself). Hopefully a real lawyer can comment soon.

You should also be careful about what you post online relative to this case as what you write could potentially be used against you in a case. I.e. search your company name>your company name is your HN username>this post could be admissible. Just something to be aware of.

My personal opinion is that if you can prove that your product was released before they filed the patent, you should not have a problem.

But still talking to a lawyer would be best I think.

If you can't afford that maybe the eff (eff.org) could help you. All the best, martin

File the necessary paper work to get their patent invalidated due to prior art?

http://en.wikipedia.org/wiki/Prior_art

Hopefully it would be easier/cheaper than a protracted head to head lawyer battle.

I am curious now, can you give some details about this? (like the paper work, how does this work when you get a C&D order)

Patent: http://www.google.com/patents/US8195515 Prior arts for this patent: http://goo.gl/YRP2U

I have had no experience doing this myself and I can only echo the other sentiments that you speak to an attorney; it's something that would likely be too risky without one.

As an uneducated observer, what I understand is, to infringe on a patent, you need to infringe on every single claim in the patent.

Was looking at the patent and your website, and it doesn't appear as if you might infringe on the final claim:

20. The system of claim 19, wherein the computer is integrated into at least one of an audio system, a video system, and a message board of a sporting event to trigger content elements at times of sporting event milestones based on the production schedule.

Clearly that haven't patented rundown software - that has existed forever. Their invention seems to be to use rundown software to drive multiple screens in a sporting arena.

That said, you need a lawyer.

You need to pay for a consultation with a patent attorney. If you can't afford to pay even a few hundred dollars for this you are doomed and you might as well shut down your company now.

This is not legal advice.

Go here: http://www.probono.net/

Find your state and see if you can find a pro bono attorney or two. Give them a call. See if one can refer you to someone who does pro bono patent work. Gather whatever materials you can that prove your business was created prior to the filing of the patent, and have it ready to give to a lawyer. Do not reply to their lawyer again until you speak to a lawyer yourself.

If you have no money, ignore them and keep building your product. You could be profitable by the time anything comes of it. The court system is notoriously slow.

In my experience, most lawyers are sloppy. You can make their life difficult— Unlisted number, separate Google Analytics accounts, PO Box, private registration, call forwarding, redirect their corporate subnet to Google, etc. It should keep them busy enough to at least mess up the paperwork, they always do.

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