Q: A guy says I’m infringing on his patent but I don’t believe I am. I also don’t want to go to court over it.
I looked up his patent and it is for something different but one piece could be in his patent? Not sure where to go from here.
A:
Step one is you need to work with a patent attorney to dive deeply into the patent and make a detailed comparison of the independent claims to your product. This is often called a claim chart and this work is called clearance or freedom-to-operate analysis.
If you clearly do not have one of the many nouns or one of the many verbs required in the patent (or their legal equivalent), then you do not infringe. Your patent attorney can send a letter to tell them that you do not infringe and why. This may not immediately end the problem as they may be stubborn or have a whacky interpretation of the scope of their claims. Sometimes people do not really care whether their patent actually reads on your product if they think that they can get you to pay them to go away as that is cheaper than fighting them. (sorry about that).
Further details about Freedom-to-Operate can be found at https://www.flynniplaw.com/services/legal-services/freedom-to-operate/opinions.
If the patent claims might read on your product, you have several options.
1) stop selling the product
2) seek a license to the patent
3) revise the product to avoid the patent -- see https://www.flynniplaw.com/services/legal-services/freedom-to-operate/design-around-guidance
4) work to invalidate (kill) or at least narrow their patent if the patent office was not aware of relevant prior art that should have led to narrower claims. You may commission searches for prior art to find things that the examiner did not consider. There are a number of paths to make this challenge in the US Patent & Trademark Office and this is less expensive than going to court but still not cheap.
If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at
https://lawyers.justia.com/lawyer/kevin-e-flynn-880338
Kevin E Flynn
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