Considering the Markman Hearing.

Establishing the meaning of a patent term is challenging, especially in patent litigation, because terms used in computer science are inherently ambiguous.  Before a jury may determine damages for patent infringement, the judge must determine the scope of the patent claims.  Although the inventor may define terms to describe his invention, he must do so with reasonable clarity, deliberateness, and precision.  The meanings of any terms used in a patent come from three sources:  1) the patent itself, usually the specification; 2) the file wrapper; and 3) the ordinary meaning of the terms.  And in order to be able to demonstrate what a term does not mean, you should see whether the inventor disclaimed any definition during the patent prosecution.

Responding to a Cease and Desist Letter of Allegation of Patent Infringement.

Once you receive a letter alleging patent infringement, you need to respond carefully because with actual  notice of another’s patent you now have affirmative duty to exercise due care to determine whether or not the patent is infringed.  Take note of any offer to license and any deadline.  If the deadline is short, then send a response and inform the patent owner that you are investigating the matter.

To evaluate the patent, you need a copy of the patent and its file history, as well as the prior art cited by the patent examiner.

While federal case law does not require an opinion, obtaining one is a good idea because of the complexities involved in constructing the scope of patent claims.

Obtaining a legal opinion will enable you to assert a good-faith belief that the patent was invalid or not infringed.

Once you have reviewed the patent opinion, respond to the cease-and-desist letter or license offer on or prior to your stated response date. Your response should account for:

(1) whether your company deliberately copied the technology described in the patent claims;

(2) the results of your investigation and whether you, in good-faith, believe that the patent is invalid or that you do not infringe it; and

(3) any remedial action company taken.

Companies often have patent attorneys from a separate law firm who do not conduct patent litigation for the company render opinions, because using in-house or retained counsel for an opinion may waive attorney-client privilege.