Ip · Solar

I found a patent that covers my idea, what should I do?

Eduardo Hueso Independent iOS Engineer

June 1st, 2016

I started building a prototype for an app idea and later found a patent owned by a big company  (Vivint Solar) which covers my idea. The patent is so broad I can't believe it was accepted, but maybe I'm missing some detail that makes it less broad than I think. Also, there are other implementations out there which I consider to be covered by the same patent. The main one of such implementations is by Google. 
How do I go about assessing the risk of moving forward with my idea?

May be useful to know that my product, being a tool for solar installers,  doesn't compete directly with Vivint Solar's business model, but indirectly by providing tools to their competitors that they may prefer to own exclusively and protect via their patent.



Lester de Souza Building community for entrepreneurs

June 1st, 2016

Eduardo, patent law is complex and if you are going to make decisions which will put your work and resources at risk, you should get proper legal advice.  It will cost you $ but that will be less expensive than investing you time, energy and resources into something that will not be helpful to your intentions.  

Normally, it is better to research existing patents before doing starting research.  This will avoid 'reinventing the wheel' which can be a learning experience but is not usually a commercially viable activity.

Scott McGregor Advisor, co-founder, consultant and part time executive to Tech Start-ups. Based in Silicon Valley.

June 2nd, 2016

Unless you are a patent agent or attorney, I suggest you consult one before concluding that your service violates this patent. The patent claims language is much more precise and arcane than most people realize, and most of my technical staffs in the past would regularly tell me that they felt confident our work was squarely covered by some "broad" patent. But a review of the allowed claims with a patent attorney would come up with a nonobvious (to us ) limitation that meant we were not in violation, or could make a trivial change and instantly become non infringing. Consider the following to claims: 1) we claim the use of performance cycling clothing to achieve faster race times. 2) 1) we claim the use of performance cycling clothing including helmet, zippered jersey, stretch knit shorts, velcro closure gloves, and shoes that clip to the pedals to achieve faster race times. Many laypeople think the second more detailed claim is either equally broad, or more broad due to its additional specificity. But in patent litigation every mentioned word is a limitation, so the 2nd example is very narrow. wear a button jersey or glove, and this 2nd patent would not apply and you are free to wear all the other gear. Even wearing only one glove gets you off the hook because patent claims that the plural means 2 or more, excluding 1 (a single glove). In contrast claim 1 is broad precisely because it does not specify detail. You could wear only the helmet, or even performance socks and be in violation. Secondly, broad claims may be easily invalidated by showing proof of public use or publication prior to the application date. So if there is any advertisement by anyone anywhere for any kind of performance clothing for cycling prior to application date, you will have a great defense that could invalidate claim 1, if the patent holder sues you. As always with the law, there is always mor nuance than can be covered here, so get legal assistance to get the full story for your company.

Colby Springer Principal at Polsinelli LLP

June 2nd, 2016

Eduardo

With patents, the devil is in the details.  Without knowing exactly what elements of the patent you might be reviewing, an assumption as to breadth (or lack thereof) may in fact be incorrect.  Even then, the file wrapper (i.e., the prosecution history of the patent) may contain important information that significantly limits the patent.  Still further, if the patent has previously been litigated, the patent owner may be bound to certain representations made during the course of litigation or finding made by the Court.  In any event, and presuming that the patent may be "problematic," you can (i) attempt to license or purchase or engage in some other 'mutually beneficial transaction' with the patent holder, (ii) design around the patent, (iii) attempt to invalidate the patent, (iv) ignore the patent, or (v) throw up your hands and go home. 

Options (i) through (iii) should be pursued with at least the counsel if not the direct guidance of an attorney.  I don't EVER recommend option (iv) and option (v) is the most depressing of the bunch.  I've yet to see a situation where option (v) is the best option.  I've had more than one client elect (against my advice) to pursue option (iv) . . . sometimes to no negative outcome, sometime to quite the contrary.  I've found the answer to usually be found in options (i) through (iii).

Colby B. Springer | Principal
POLSINELLI LLP
Three Embarcadero Center, Suite 1350
San Francisco, CA 94111
(O) 415.248.2118 | (M) 415.412.6570
cspringer@polsinelli.com

Richard Pridham Investor, President & CEO at Retina Labs

June 2nd, 2016

Regardless how weak you believe their patent is, they still have it. This is often the case with software patents. You might want to read up on the US Supreme Court's 2014 decision on the Alice Corp. v. CLS Bank International case. This was a landmark case that poses a major challenge to holders of patents based on computer-implemented abstract ideas. It serves as some basis for inventors who have similar ideas to existing patents.

So you have 2 choices:

1) Walk away and find something else to do.

2) Build it and bear the consequences. If the patent holder sees your product as an infringement, they will eventually sue you. At such time you can hire a patent attorney (some of the most expensive legal expertise you can find) and fight it. Keep in mind who the patent holder is. If they have means to defend themselves this will do so vigorously.

Jeffrey Gross Managing Member of intellectual property firm, Entrepreneur, P/T Musician

June 3rd, 2016

You need to be careful: since you're obviously aware of the patent, if you were found to infringe, the patentee might (and probably could) pursue enhanced damages on the basis of willfulness.  I.e., you can't claim you didn't know about it.

It is true damages are hard to prove, but they are also hard to disprove.  If it comes to it, the other side will hire an expert witness to prove you owe a lot.  You will thus be forced to hire an expert wit to refute, at around $300-500/hr.

Much great advice above, though some inaccurate.  Best advice: it's a minefield, so don't be penny-wise, pound-foolish.  Hire a good patent attorney.  Not a prosecution attorney but a litigator who's experienced in crafting licensing deals.  Not just a good trial lawyer but someone who's strategically savvy at keeping you out of the courtroom.

James Yett

June 1st, 2016

Eduardo, Reading your notes gave me a few quick ideas. I'm interested in this type of things, but not expert. Maybe you won't have thought of one or two of them yet. It might be useful to know what Vivint does in general with their patents, whether they license them often, seldom, never. If they do, then maybe you're back in business, minus the license fee. Maybe not, due to the competition issue, but still possible. Maybe they see it as a way to make money from competition that they can't stop. Maybe those other implementations are in fact licensees. Or maybe they're even contesting the IP or contesting that they are using it. For that reason and for others, it might be interesting to talk to companies that seem to infringe, and see what they think about all this.

Ken Parker Partner at Parker Keough LLP

June 2nd, 2016

Eduardo, The first thing to to is to determine whether the patent really covers your idea. A patent application has two parts, the specification and the claims, which appear at the back of the application. Even if the specification describes your invention, the patent doesn’t actually cover your idea unless it is claimed in the claim section. If the patent covers your invention, the next step is to determine whether it is valid. It might not be valid if it should not have been granted in the first place based on prior art. The USPTO has post-grant procedures for invalidating patents. Because patent claims are written in a peculiar, technical language, it makes sense to have a patent attorney or patent agent review them in light of what you are doing. It may also be helpful if you have patents that Vivant Solar may be infringing. That way they may be willing to cross-license your patents and their patents to one another. For example, if you have worked out any improvements on their invention, you may be able to register what is called a “blocking patent.” This means that you cannot use your improvement without permission to use their underlying patent, but they cannot use your patent either, so you are at an impasse without cross-licensing. Ken ----------------- Ken Parker Parker Keough LLP Office Address: 51 Winchester St., Suite 205 Newton Highlands, MA 02461 Mailing Address: P.O. Box 590006 Newton, MA 02459 Phone: 617.275.3040 Fax: 617.963.8315 Email: kparker@parkerkeough.com Website: www.parkerkeough.com Admissions: • Massachusetts • United States District Court for the District of Massachusetts • First Circuit Court of Appeals __________________________________________________ IRS Circular 230 Notice To ensure compliance with requirements imposed by the IRS, we inform you that any U.S. federal tax advice contained in this communication is not intended or written to be used, and cannot be used by any taxpayer, for the purpose of avoiding U.S. federal tax penalties or for the purpose of promoting, marketing or recommending any entity, investment plan or other transaction. __________________________________________________ Confidentiality This email and its attachments may contain legally privileged and/or confidential information. If you are not the intended recipient of this email, you are hereby notified that any dissemination, distribution or copying of this email and its attachments is strictly prohibited. If you receive this email in error, please immediately notify me at 617.275.3040 and permanently delete both the original and any copies thereof.

Ramesh Rajaduray

June 2nd, 2016

Hi Eduardo, Without seeing the patent in question and knowing your product it's hard for me to propose any course of action. So here's a more general way to proceed. Some questions for you to consider: 1) Is the patent still valid or is it expired? 2) If it is valid, what do the CLAIMS say? This is the most important part of any patent. The patent in question may have a very broad specification, but it's the claims you need to look at. If the claims don't seem to cover your app, then you may be OK. 3) If the claims seem to cover your app, it may be worthwhile to get a lawyer to look at it and do a "freedom to operate" opinion. Regards, Ramesh

Lorraine Wheeler President at Redstoke, LLC

June 2nd, 2016

I agree with all the others that you should talk to a patent attorney regarding your concerns  I am not an attorney, but will share advice I have received.  In this litigious environment, if you have a successful product, you are likely to be sued for patent violations.  So called patent trolls are common.  As part of your IP strategy, you should consider offensive patents but also defensive patents.  As Ramesh said, "freedom to operate" is the key opinion you need to get before you begin scaling up.  However, I personally wouldn't let that stop me from developing a prototype for a particular idea as I learn a lot during the prototyping and customer validation phases that often cause me to pivot.  

Michael Barnathan

June 2nd, 2016

Talk to a patent attorney to determine whether it's truly infringing - then if it is, I would open up dialogue with Vivint about potentially licensing it. A bit of background on them: they were recently gearing up for an acquisition by Sunedison (which fell through as SUNE filed for bankruptcy shortly thereafter), and may have been trying to acquire a patent portfolio to make themselves a more attractive M&A target rather than for enforcement purposes. They might therefore be very willing to work out a reasonable license agreement with you.