The mechanics of ethical and effective cease and desist letters
Cease and desist letters can be categorized into three types:
The Furious Demand;
The Softball; and
Attitude is everything in the Furious
Demand cease and desist letter
The Furious Demand
The Furious Demand is all too common in intellectual property
litigation. The undersigned attorney is seemingly outraged that
the alleged infringer is still breathing. The Furious Demand
is heavy on threats but light on facts. All infringement is
egregious, knowing and malicious. The letter will invariably
An immediate halt to all business operations involving the
Immediate destruction of the allegedly offending articles or
equipment in support of the infringement;
The identity of all customers that bought the infringing
The total number of infringing articles sold;
Advise of the profit margin for each article and the total
profits made; and
An opportunity to admit infringement and grovel for a
The Furious Demand is adept at instilling fear in the mind of the
layperson. The wrath of enormous penalties, much less the thought
of a costly litigation often sends businesses into conniptions.
More often than not, the Furious Demand is a smoke screen for a
poorly investigated and/or weak theory of infringement. As
Shakespeare would say, "methinks thou doest protest too much."
Such drum-beating is usually interpreted by well-informed patent
litigators as the sign of inexperience or incompetence.
Pros and Cons of the Furious
- The alleged infringer may be sufficiently
intimidated to stop the alleged infringement.
- It takes very little time to draft - no real
analysis exists in the Furious Demand.
- The communication does serve as a call to action and
will typically receive some form of response, whether
positive or negative.
- The defendant may call the bluff and file for a
declaratory judgment of non-infringement, effectively
becoming the plaintiff in the venue of their preference.
- The letter may support Rule 11 sanctions if the
subsequent litigation is deemed frivolous, legally
unreasonable, without factual foundation or asserted for
an improper purpose.
- The sender's credibility is damaged and potential
licensing discussions are far from an amicable start.
- The tone of the letter can cast the patent owner in
a negative light during trial.
Sending a Softball Demand has its
advantages, one of which is maintaining an amicable
relationship with the opposing side.
The Softball Demand
The Softball Demand is almost the antithesis of the Furious
Demand. Like the Furious Demand, the Softball Demand
is light on facts. However, the Softball Demand is
non-threatening and amicable. A typical
Softball Demand might read as follows:
Dear Mr. Jones:
We are intellectual property counsel for XYZ corporation.
It has come to our attention that your ABC-brand widget has
several features that appear to be claimed by our client's
patent (enclosed). Our client has advised us that XYZ
corporation enjoys a long-standing reputation in the
industry as a reputable and conscientious business.
Thus, we presume XYZ corporation was unaware of the
existence of our client's patent. However, we believed
it prudent for XYZ corporation to be aware of the patent as
soon as we learned of this situation. From a
preliminary review, we are inclined to believe the ABC-brand
widget reads on the patent claims. However, we would
appreciate your thoughts on this matter. Please feel
free to contact us at your convenience, we look forward to
hearing from you.
The purpose of the Softball Demand is to put the opposing party
on actual notice of the patent. From a damages standpoint,
continued manufacture, use, sale, offering for sale or importing of the
ABC-brand widget will now be knowing and willful. Also note that
the word infringement was not used once in the communication.
Instead, we simply noted that the ABC-brand widget might read on
the claims of the patent (same thing as infringement). The
idea is to not intimidate the opposing side.
Some defendants become blissfully unaware that the Softball Demand
letter they received was simply sent to enhance potential damages and
not for any desire to maintain a friendly atmosphere. However,
there is a fine line between notice and acquiescence. The letter
must not convey any notion that the alleged infringement is permissible.
Otherwise a legal theory called estoppel may severely cripple the
patent owner's case.
Pros and Cons of the Softball
- If a license will be offered for the patent, the
patent owner has maintained a friendly and understated
tone to the situation.
- It takes very little time to draft - no real
analysis exists in the Softball Demand. The
burden of analysis is laid on the alleged infringer.
- The communication would rarely induce another side
to file a complaint for declaratory judgment of
non-infringement. However, the alleged infringer is put
on actual notice of the patent and enhanced damages may
be calculated from the date of the communication if not
- The tone of the letter would tend to cast the patent
owner in a positive light before a jury.
- The laid-back nature of the communication may result
in no action taken. If ongoing and substantial damage
is suffered by the patent owner, then a more aggressive
approach should be considered.
- A sloppily drafted Softball Demand may be
interpreted as giving permission to practice the
- The patent owner may be perceived as ambivalent and
thus, not taken seriously.
The Intellectual Demand
This type of demand requires the greatest amount of work, but generally
produces the best results. The Intellectual Demand
represents a knowledgeable and even-handed manner of handling
infringement issues. Where the Furious Demand is fanatical,
the Intellectual Demand is reasonable. Where the
Softball Demand dances around the real purpose of the communication,
the Intellectual Demand is unambiguous. The Intellectual
Demand has several features:
A claim chart is a two-column table in every legitimate
patent infringement analysis. In the left column are each
and every limitation of the patented invention. In the
right column is either a "yes" or "no" answer as to whether that
limitation is present in the accused device or method. For
example, an accused device and a claim chart are presented
The accused device #1 (a bucket)
Infringement Claim Chart
Present in Accused Device?
(Claim 1) A bucket for holding fluid, the bucket comprising:
a handle from which said bucket depends; and
a cushioning means attached to said handle.
For infringement to exist, each and every limitation in the patent
claim must be present in the accused device. Of course, a
defendant may argue that the wooden handle in accused device #1
above does not have "cushioning" properties. Semantics and the
use of precise language play a big part in patent quality and
Clear notice of infringement is present in the
Intellectual Demand. The letter pulls no punches
because the facts and analysis are laid out clearly.
Reasonable demands are made in the communication.
Typically, they indicate that the accused product must be phased
out and/or a reasonable royalty paid for those sold in the past
An amicable tone carries through the Intellectual
Demand. There is little need for bluffing or animosity
when the facts are clearly on the side of the patent owner.
A reasonable time frame for investigation is given to the
other side. The patent attorney for the accused infringer
will order the "file wrapper" for the patent. The "file
wrapper" or "prosecution history" are documents sent back and
forth between the patent owner and the U.S. Patent & Trademark
Office during the application stage. Quite often, the file
wrapper will disclose concessions made by the patent applicant
in order to get his or her patent. Such concessions may
limit the scope or coverage of the patent. In the example
above, the patent owner may have argued to the patent examiner
that "cushioning means" was limited to resilient, elastomeric
materials. Thus, the patent owner could not claim that a
cushioning means made of wood (as shown in accused device #1)
infringes on the patent since that was relinquished during the
application stage. Such a narrowing of scope is called
"prosecution history estoppel." A true Intellectual
Demand would have taken prosecution history estoppel into
account. Nevertheless, the sender appreciates the need of
opposing counsel to come to his or her own conclusion on the