Jesse J. Camacho

What arrived is not a lawsuit. Nobody has asked a court for anything yet, and receiving a demand letter is not a finding that you did anything wrong. It is also not nothing. It opens a range of outcomes that runs from a short license conversation to litigation, and it starts real obligations on the day it lands.

The seriousness is not in the tone of the writing. Angry letters are cheap. Look instead at what the letter actually identifies. A letter that names a specific patent number and a specific product of yours is a different document from one that gestures at a portfolio and asks for a call. The first one has been worked on. The second one may have been sent to two hundred companies.

If a patent number is named, go to the end of that patent and find the numbered sentences called claims. Those sentences are the property line. Everything earlier in the document is scenery. Whether your product is a problem turns almost entirely on whether it does what one of those numbered sentences describes, word by word.

The obligation that starts immediately is preservation. Routine automatic deletion of email and files touching the product named in the letter should be suspended now, not after you decide how worried to be. Courts treat this seriously, and it is the one thing that can turn a manageable dispute into a much worse one.

Resist the urge to have your engineers settle the question over email this afternoon. An honest internal message guessing at whether you infringe is a document that can be read back to you later. Keep the analysis in one place, with someone whose job is to keep it privileged.

One quiet thing worth doing the same week: check your insurance. Some business policies cover intellectual property defense, and late notice can forfeit that coverage. Asking your broker costs nothing.

First actions

• Suspend automatic deletion of email and files relating to the product the letter names.
• Pull the patent number, read the numbered claims at the end, and ignore the marketing summary at the front.
• Do not reply today, and keep engineering opinions off email until counsel is involved.
• Call your insurance broker and ask, in writing, whether intellectual property defense is covered.
• Write down the date the letter arrived and any date it demands. Confirm both rather than trusting the letter.
• Find out who inside the company already knew this patent existed, and when.

Litigation on either side is not something I enjoy, but I could not be more pleased with how Jesse managed our case / process.

He has substantial expertise and experience, but also has the ability to reduce the issues into consumable information for executives / board members.

Being sued is not a finding of anything. A complaint is one side's allegation, written by the side that wants something. Companies of every size receive them. Most patent disputes end in a negotiated resolution rather than a trial verdict, which is worth holding onto while the first week feels like the roof coming off.

Only one thing is genuinely urgent, and it is the date. In federal court a response to a complaint is generally due twenty one days after service, though that can shift with waivers and extensions. It is specific to your court and your case, so the deadline gets confirmed from the docket rather than remembered from something someone read.

What decides these cases is usually earlier and quieter than people expect. Before a jury hears anything, a judge decides what the disputed words in the claims mean, in a step called claim construction, sometimes called a Markman hearing. Cases are frequently decided in substance by that ruling. A great deal of the leverage in it comes from the public record of what the patent owner said to the patent office to get the patent granted. That record is called the prosecution history, it is available to anyone, and reading all of it is unglamorous work that many people skip.

There may also be a second front. Some patent fights move to the Patent Trial and Appeal Board in a proceeding called an inter partes review, which asks whether the patent should have been granted at all. It runs on a different clock and a different budget than the district court case, and whether to open it is a strategic decision, not a formality.

The cost people underestimate is attention. Discovery will pull your engineers away from building for real stretches of time. Naming one internal owner early, someone who can find documents and make decisions, is worth more than it sounds.

First actions

• Confirm the real response deadline from the court docket, today, before anything else.
• Suspend automatic deletion across the company for anything touching the accused product.
• Name one internal owner so counsel is not chasing five people for the same file.
• Notify your insurer in writing and keep proof of the date you did it.
• Gather the accused product's design history, release dates, and the names of the people who built it.
• Say nothing about the case publicly, to customers, or on social accounts, until counsel has read the complaint.

He kept us fully informed at every stage, explained complex issues in understandable terms, and always prioritized our best interests with the utmost ethical standards.

Even under intense pressure, Jesse maintained composure and conducted himself with dignity and respect.

You are looking at someone else's product and recognizing your own work in it. What decides whether that is actionable is not whether their product looks like yours. It is whether their product does what one of your numbered claims describes. A patent is a time limited right to stop other people from making, using, or selling what the patent describes, and the numbered claims at the end are the whole of what you own. Resemblance is not the test.

So the work starts inside your own patent, not theirs. Read your own prosecution history end to end before you accuse anyone. To get the patent granted, applicants often narrow what they are claiming. Those narrowings are permanent, public, and the first thing competent opposing counsel will read. If a word was given up in 2019, it cannot be quietly taken back now.

Expect the patent itself to be attacked. A company on the receiving end can go to the Patent Trial and Appeal Board and file an inter partes review, which asks whether the patent should have been granted at all. Before you spend money enforcing, it is worth having someone honest tell you how your patent looks from the other side of the table.

It is also worth knowing that they may not have copied you, and that this does not decide infringement. Copying is not required. A company that invented the same thing independently and never heard of you can still infringe. It does change the temperature of the conversation, and sometimes the outcome you should be aiming for.

Decide what you actually want before you send anything. A letter opens the door to a negotiation, and it can also open the door to litigation that you will be funding. Money, a license, them out of one market segment, and them stopped entirely are four different objectives with four different price tags.

First actions

• Print your claims and mark, element by element, exactly which words their product meets and which are arguable.
• Read your own file wrapper, all of it, before a single letter goes out.
• Preserve evidence of what they are selling now: listings, pages, packaging, purchase records, dates.
• Confirm the patent is in force and that the ownership records say what you think they say.
• Write your desired outcome in one sentence, and price it, before contacting them.
• Ask a lawyer to argue the other side of your own patent out loud in front of you.

He developed a deep command of the patent history, understood the prosecution record better than the opposition, and identified weaknesses that materially changed the leverage in the case.

You are early, and nothing has gone wrong. The thing to settle before the design freezes is that a patent is not permission. Owning a patent gives you the right to stop other people, not the right to build your own product. Whether you can build a thing and whether you can patent it are two separate questions with two separate answers, and companies routinely assume the first follows from the second.

The fact that surprises people most is that you can infringe something you never saw. Copying is not required. If your product does what someone's claim describes, it can infringe even though your team designed it from scratch and had never heard of that patent or its owner. So "we built it ourselves" is a true statement and not a plan.

This is the cheapest moment you will ever have. Reading the claims of the closest few patents while the design is still soft often means changing one element and moving on. The same change after launch costs tooling, inventory, contracts, and customers, and it gets made under someone else's deadline instead of yours.

If you intend to file your own patent, know that everything said to the patent office during prosecution becomes a permanent public record that limits what your patent can be argued to mean years later. Language narrowed cheaply this year to get an allowance becomes the ceiling in a dispute you have not imagined yet. It is worth a real conversation rather than a form.

Write down what is genuinely new while the answer is still obvious to you. Six months from now, the interesting part will feel ordinary to the people who built it, and that plain description is exactly what a lawyer needs in order to be useful rather than expensive.

First actions

• Write one page, in plain sentences, describing what is actually new about your design and why it was hard.
• Ask for a look at what is already patented in your space before the design is locked.
• Keep dated engineering records as a matter of ordinary practice, not as a special exercise.
• Decide which parts you would genuinely mind a competitor copying, and stop paying to protect the rest.
• Put your engineer and a patent lawyer in the same room to read the claims of the two or three closest patents together.
• Budget this as part of building the product rather than as legal overhead added later.

For over 15 years, I worked with Jesse on various patent prosecution and patent litigation matters. Jesse's legal advice is top-notch and his case management skills are excellent.