Types and categories of LEGAL services

BRIEF SYNOPSYS

There is no way to know all the different avenues and origins that a potential patent infringer could arise. It is also close to impossible to read and clarify the claims within every patent, not without incurring huge expense. Further, even using the best search terms, synonyms, and AI algorithms, the most relevant patents or competitors who may bring actions for patent infringement can still be overlooked.

To address this, and still provide a reasonable degree of assurance, this law firm promotes a low-cost multi-step patent “laddering” strategy. Thus, in the event that issues of patent infringement arise, our clients will have defenses and ways of countering such issues, and/or reducing their scope and scale. To start, we always put our clients into a state of “patent pending” as earlier as possible.

Next, a typical Freedom to Operate Opinion can exceed $20,000, while Apple Computer or Amazon might in some case pay more than $100,000.  Such spending would be an unwise use of $precious $cash for most of our clients. Instead, we provide scaled down, limited Opinions that discuss some key aspects of litigation-prospects, and provides some (limited) assurances and clarifications.

Along these lines, in order to keep costs down, we sometimes do engage an outside search expert, but may do some limited searching ourselves. However, we have extensive experience, and typically show initiative and promise in the area of digging for effective useful comparable prior art. We try to give assurance that if issues of patent infringement arise, our clients will have a good start at defending themselves. Further, Issued Patents can be a poor/misleading source of predictive intelligence.

NON-COMPREHENSIVE LIST OF PATENT CONCERNS

Here is another problem that occurs often. Other participants in a specific industry may be miles ahead of XXXX Developers LLC, developed commercial embodiments e.g. 3 or 4 years earlier than XXXX Developers LLC, but never bothered with filing their own patents, and do not have a widely known Internet presence. As shown in the attached graphic (blue-green Venn diagram), many successful companies do not even have patents at all. 

Further, many companies, include some of our clients, automatically use non-publication requests at initial-patent-filing, as Standard Operating Procedure (SOP). That means a company competing with XXXX Developers could have filed for patent >4 years ago and there is no way for anyone to see it. Thus, there is no way to make a comprehensive Opinion that absolutely guarantees a “clean bill of health” regarding later accusations of infringement, and my law firm will not endorse or use this language.

Next, companies can be building and selling products in such a way that it does not show up in any search, any local business journal, any trade show, anywhere on YouTube, or perhaps provides services rendered under terms of confidentiality, government secrecy requirement, or many other reasons. Nobody may even be aware of these competitors, and yet these stealth-operators can be the most dangerous, the most damaging, and the most unpredictable including but not limited to potential assertions of patent infringement.

MORE AND MORE, U.S. PATENT OFFICE RELYING ON HELP FROM GENERAL PUBLIC

Another issue that throws an element of randomness and unpredictability in the patent process, and thus makes prediction of infringement even more difficult, is a patent procedure known as “3rd party IDS”. 

Still, when this competitor sees the patent applications of XXXX Developers LLC, they can approach the Patent Office and insist that all patents to XXXX Developers LLC can be invalidated, using e.g. Inter Partes Re-Exam. If there is enough money at stake, companies can and will do this. And there is no way to assuredly guarantee that this can’t happen, or to anticipate this ahead of time with a high degree of certainty. 

Further, in any patent application that is pending, published and thus known to the public, competitors can provide assistance to the Patent Examiner responsible for that application. These competitors achieve this in the form of an Information Disclosure Statement (IDS). This type of Examiner-assistance is known as a “3rd party IDS” and is increasing in usage among competitors. The US Patent Office and the general public both gain as a result of this feature, in that the patent integrity always improves when a Patent Examiner is better-informed about the state of a particular field.

Moving onto some of the Issued enforceable patents discussed in the various Appendices provided herewith, there are several factors at play here that need to be considered. The first is that XXXX Developers still has a considerable amount of latitude in how they architect and code up their various products. Thus, if they see a competitor of real concern, where the patents are Issued and thus the claims are fixed, known, and enforceable. XXXX Developers at this young stage can still make such adjustments are necessary in order to step around or “design around” any claims considered to be of concern, such as the claims within the Issued Patents related to the “Rave” product (discussed in the Appendices attached herewith).

In our FTO's, we often use language like the below.

OPINION SUMMARY PART 1

“Based in the patents that we found, and other non-patent literature that we found, along with a detailed competitive analysis of who else might be participating in this marketplace, we find it unlikely (though always possible) that XXXX Developers LLC will be sued for patent infringement based on their mobile app invention(s) and configurations.  Further, if XXXX Developers LLC properly structures their own patent applications, and emphasizes X features and Y features, the XXXX Developers LLC is likely to have reasonably good defenses against any charges of infringement”.

Next, it is a common occurrence where business-entities are surprised by the existence of a long-time competitor that they never knew about. Many companies think they know about all of their competitors, but are often mistaken. In my mind, they should not be that surprised, as there are many ways to operate a company in a specific industry and yet stay off anyone’s radar screen.

Next, a lot of incompetents file for patents, get patents Issued, but never build anything. Even when they build something, their patents are often mis-matched with their actual produced item. Thus, reading Issued Patents as a way of predictive intelligence on potential litigation risk is often one of the dumbest and least meaningful data-indicators that can possibly exist. Repeating from earlier, the blue-green chart below is a quick and easy way to convey this. 

Many parties who have Issued Patents never make a dime, thus they “have the blues” within the above (blue-green Venn) image. Meanwhile, some parties who have no patents at all are often very successful, thus “in the green” within the above (blue-green Venn) image. Again, of course I am aware that investors and outside capital usually wants to see lots of patent filings, and legal Opinions that make them feel more safe about their investment. I only want to clarify that while I can provide these documents, and have done literally hundreds of them, I am going to insist on some palliative language.

Another way of stating it: reading Issued Patents can be a great way to find Issued Patents from failed, embarrassing companies that wasted their money, and never had any good products. For example, at the time of this writing, Theranos has over 135 Issued U.S. patents. Not one of their devices worked. How did Theranos get 135 Issued Patents? How much value do any of these patent have? Thus, trying to extrapolate a potential litigation-risk from the database of Issued Patents is one of the worst ways, least effective ways, to predict potential litigation-risk. Any Freedom to Operate Opinion, even ones that cost >$100,000, cannot escape this clear fact.

Additionally, plenty of good developers make products, sell products, engage in commerce, do well, get funding, and they engaged with the patent system. Not for one second. However, their products and documents can still be asserted as Prior Art in an e.g. Inter Partes Reexamination proceeding. Thus, the XXXX Developers LLC may not be infringing anyone, but could still have their patents taken away.

Another problem is that the United States patent system alone has given rise to ~12 million Issued Patents. Japan and China, by themselves, have each also separately Issued some number near to that. Allowing for some overlap, that may mean ~30 million patents in 3 different languages are extant, of which some reasonably large % are still enforceable. Whatever the number is, it is not possible for one single law firm to search, find, and review every one of those patents, even using the most rigorous Artificial Intelligence search algorithms. Further, word-searching, especially across multiple languages, can overlook important synonyms, contexts, and unusual word-usages. Thus, any assurance that “there are no other Issued Patents in our area” (thus no litigation risk) is likely to be a bogus assurance. This also does not address the submarine effect of non-published patent applications in one’s field being filed potentially years before XXXX Developers’s product never even existed. Again, any Freedom to Operate Opinion, even ones that cost >$20,000 or >$100,000, cannot escape this clear fact.

Still, outside investors sometimes still want some kind of statement, some kind of semi-assurance of a technology or process being proprietary. Investors want some kind of assurance that their money will be kept “safe”, or at least wisely invested. Such assurance is prudent and reasonable. This Opinion provides such assurance, within reason.

The Appendices attached herewith discuss 30 companies and 2 inventors in what XXXX Developers, LLC describes as their “space”. Some of the patents held by these entities are discussed in the Excel files and Word documents that comprise the Appendices.

Again, in our FTO's, we often use language like the below.

OPINION SUMMARY PART 2

"Although XXXX Developers LLC can never guarantee the non-existence of other patent-claims within their territory or locus of operation, working with counsel, XXXX Developers LLC has an aggressive, low-cost and low-intrusion 'laddering' style of multiple patent filings that will ensure significant defenses and weapons against a possible accusation of infringement.  While some patents may be vaguely within the ballpark of XXXX Developers, LLC, such patents always exist and often end up meaning nothing. For example, by the time XXXX Developers, LLC is known to the Rave company, the Rave company may have pivoted in a different direction, no longer producing relevant products, and/or stopped paying their maintenance fees on these or other patents."

Our Freedom To Operate (FTO) Opinions are usually quite lengthy, but contain an Execute Summary and Conclusion which may look like the below.

CONCLUSION

Based on the materials shown herein, it is my professional Opinion that the products and configurations Assigned to or owned by XXXX Developers, LLC, are unlikely to be found to be infringing of any patent known to us thus far.

chris tanner, esq. May 13, 2020

/chris tanner/