2006 appa legal seminar what should you do if you receive a sales call from a patent lawyer? (...

2006 APPA LEGAL SEMINAR2006 APPA LEGAL SEMINAR

What Should You Do If You Receive A What Should You Do If You Receive A Sales Call From a Patent Lawyer?Sales Call From a Patent Lawyer?

((presented on presented on October 9, 2006October 9, 2006, as a drama in three acts, , as a drama in three acts,

entitledentitled):):

Living with the Scarlet Letter (“Living with the Scarlet Letter (“E” E” )) [[The Perils of Creativity in Your Utility’s IT The Perils of Creativity in Your Utility’s IT

Department]Department]Arthur J. “Grant” Lacerte Jr.Arthur J. “Grant” Lacerte Jr.

Vice President and General CounselVice President and General Counsel

Kissimmee Utility AuthorityKissimmee Utility Authority

1701 W. Carroll Street, 1701 W. Carroll Street,

Kissimmee Florida, 34741Kissimmee Florida, 34741

[email protected]@kua.com

(407) 933-7777(407) 933-7777


As a point of introduction what does the As a point of introduction what does the Scarlet Letter “E” stand for? The answer is Scarlet Letter “E” stand for? The answer is not “Ebillingnot “Ebilling.” .”

(hint are you an “enfringer”? ((hint are you an “enfringer”? (where’s spell where’s spell check when you need it?check when you need it?))))


ACT I, Scene iACT I, Scene i

[The curtain rises on a hard-working CEO of a [The curtain rises on a hard-working CEO of a municipal utility late at night in his office municipal utility late at night in his office going through a 2 feet tall stack of paperwork going through a 2 feet tall stack of paperwork in the dim light provided by his computer in the dim light provided by his computer monitor (he is extremely conscious of the need monitor (he is extremely conscious of the need to set a good example by conserving to set a good example by conserving electricity)]electricity)]


Act I, scene iAct I, scene i

Our noble, conscientious CEO pulls a non-Our noble, conscientious CEO pulls a non-descript letter from the top of the stack. It descript letter from the top of the stack. It appears as follows:appears as follows:


Act I, scene i Act I, scene i (continued) (continued)

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[This drama has a number of alternative [This drama has a number of alternative endings in Act III that could depend on the endings in Act III that could depend on the CEO’s next step. Let’s Review the letter and CEO’s next step. Let’s Review the letter and his possible actions:]his possible actions:]


Act I, scene iAct I, scene i

The letter is four pages and divided into 5 sectionsThe letter is four pages and divided into 5 sections::

Page 1 – Introduction Page 1 – Introduction the letter is addressed to the CEO, not legal the letter is addressed to the CEO, not legal

counsel counsel reads like a reads like a sales pitchsales pitch, and if you don’t know the , and if you don’t know the

law firm (and many CEOS outside the Midwest law firm (and many CEOS outside the Midwest might not) you have no reason to think it’s might not) you have no reason to think it’s anything more than a fairly sophisticated sales anything more than a fairly sophisticated sales approach. The author does not clearly i.d. himself approach. The author does not clearly i.d. himself as a lawyer on the first page of the document.as a lawyer on the first page of the document.



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Act I, scene i – Act I, scene i –

Page 2 contains two sections: Page 2 contains two sections: The PatentThe Patent and and The The Technology and Systems at IssueTechnology and Systems at Issue

If your CEO gets this far – he’s hit with confusing dense If your CEO gets this far – he’s hit with confusing dense legalize in legalize in The PatentThe Patent section and sales fluff in section and sales fluff in The The Technology and Systems at IssueTechnology and Systems at Issue section section

-- If he’s really alert - the phrase “This patent was -- If he’s really alert - the phrase “This patent was strategically prosecuted with enforcement in mind” strategically prosecuted with enforcement in mind” might draw his attention or it might put him to sleep.might draw his attention or it might put him to sleep.



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Act I, scene i –Act I, scene i –

Page 3Page 3 of the Letter continues the fluff from Page 2 but of the Letter continues the fluff from Page 2 but contains the contains the Litigation History of the Patent And Litigation History of the Patent And Continuation ApplicationContinuation Application section section

If our tired, dedicated CEO gets this far, the title of the section at If our tired, dedicated CEO gets this far, the title of the section at the bottom of page three might grab his attention but the the bottom of page three might grab his attention but the discussion beneath it would likely be meaningless unless he discussion beneath it would likely be meaningless unless he was up on patent law (and for an attorney with was up on patent law (and for an attorney with zero zero patent patent experience all she may know from this is that we’re up against experience all she may know from this is that we’re up against a giant law firm that’s willing and able to go to the mat) a giant law firm that’s willing and able to go to the mat)

Query: Query: What is PRIOR ARTWhat is PRIOR ART?: ?:

(a) Monet vis a vis Picasso?(a) Monet vis a vis Picasso?(b) "Andy Griffith Show” vis a vis (b) "Andy Griffith Show” vis a vis “Seinfeld?”“Seinfeld?”



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Act I, scene i –Act I, scene i –

Page fourPage four of the letter discusses the Patentee’s of the letter discusses the Patentee’s continuation applicationcontinuation application (“yawn” goes the (“yawn” goes the tired CEO), references its proposal tired CEO), references its proposal andand

FINALLYFINALLY advises the CEO to speak to advises the CEO to speak to LEGAL LEGAL COUNSELCOUNSEL

The Attached Proposal is a fairly long document proposing The Attached Proposal is a fairly long document proposing a “reasonable” licensing fee, perhaps something along the a “reasonable” licensing fee, perhaps something along the lines of a half to three quarters of a million dollars based lines of a half to three quarters of a million dollars based on an inflated number of transactionson an inflated number of transactions



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Act I, scene iiAct I, scene ii: : What does the CEO DOWhat does the CEO DO??

(1)(1) Throws the letter awayThrows the letter away after reading some of page after reading some of page one (“how did my secretary miss this?”, he grouses)one (“how did my secretary miss this?”, he grouses)

(2)(2) Drafts a response letter that begins: “Drafts a response letter that begins: “Dear Dear Extortionist TrollsExtortionist Trolls:”:”

(3)(3) His interest in the technology piqued, His interest in the technology piqued, authorizes authorizes staff to begin development of an in-housestaff to begin development of an in-house, , direct direct ebilling platformebilling platform to provide streamlined electronic to provide streamlined electronic payment options for the utility’s beloved customerspayment options for the utility’s beloved customers

(4)(4) Contacts ITContacts IT and asks them and asks them what they should dowhat they should do


Act III – ConclusionAct III – Conclusion

If the CEO did any of the things on the previous If the CEO did any of the things on the previous slide we can go straight to Act III for the Final slide we can go straight to Act III for the Final Scene:Scene:CEO’s utility is named in a patent infringement CEO’s utility is named in a patent infringement suit alleging damages of hundreds of thousands of suit alleging damages of hundreds of thousands of dollars and seeking the trebling of such damages dollars and seeking the trebling of such damages and a million dollars in attorney’s fees because the and a million dollars in attorney’s fees because the Patentee put the CEO on notice and they Patentee put the CEO on notice and they continued to infringe on the patent. The cry of continued to infringe on the patent. The cry of “Uncle” can be heard all the way to the 30“Uncle” can be heard all the way to the 30thth floor floor law office in a skyscraper of a large mid-western law office in a skyscraper of a large mid-western city where the firm’s partners meet every Friday city where the firm’s partners meet every Friday for celebratory cocktails and hearing the cry for celebratory cocktails and hearing the cry elicits ghoulish laughterelicits ghoulish laughter


Act II, scene i - The Right-Thinking or Lucky Act II, scene i - The Right-Thinking or Lucky CEO/Utility does the followingCEO/Utility does the following::

Immediately contacts legal counsel, who in turn, Immediately contacts legal counsel, who in turn, immediately retains Patent Counsel (thousand dollars immediately retains Patent Counsel (thousand dollars wise can be million dollars foolish)wise can be million dollars foolish)

IT Staff and Legal Counsel Caucus with Patent IT Staff and Legal Counsel Caucus with Patent Counsel to analyze the potential exposure and work Counsel to analyze the potential exposure and work on an effective Legal Responseon an effective Legal Response

Utility Responds to the Letter by the Deadline set Utility Responds to the Letter by the Deadline set forth thereinforth therein

2006 APPA LEGAL SEMINAR2006 APPA LEGAL SEMINAR (Act II, scene i – the “smarter” approach)(Act II, scene i – the “smarter” approach)

other possible approaches (review w. patent other possible approaches (review w. patent counsel):counsel):

DISCUSSIONDISCUSSION


Act III – ConclusionAct III – Conclusion

Unknown – but the unknown beats the Unknown – but the unknown beats the alternative, ORalternative, OR


Alternative EndingAlternative Ending

((Available only to those attorney’s that represent the municipal Available only to those attorney’s that represent the municipal

utility that provides service for Fantasy Islandutility that provides service for Fantasy Island):):

LOST “FANTASY ISLAND” EPISODE LOST “FANTASY ISLAND” EPISODE WHERE TATOO TAKES ON THE PATENT WHERE TATOO TAKES ON THE PATENT TROLLSTROLLS


QUESTIONSQUESTIONS

2006 appa legal seminar what should you do if you receive a sales call from a patent lawyer? (...

Documents

scene i

appa legal seminar act

legal counsel

electricity slide

letter cont

scarlet letter e stand

sales pitch

sales fluff