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

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.



32 Replies

Lester de Souza
5
0
Lester de Souza Entrepreneur
Counsel, Barrister & Solicitor at DE SOUZAS
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.
Milos Ribic
0
5
Milos Ribic Entrepreneur
Corporate development with a focus in tech
Highly doubt a patent like that would last in court. It sounds like it is easy to invalidate. I would just proceed forward with your model.
James Yett
1
0
James Yett Entrepreneur
Founder & Chief Tinkerer at Flective
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.
Anny Slater
0
1
Anny Slater Entrepreneur
Principal at Slaters Intellectual Property Lawyers and Makepeace Solutions
Is it a U.S. patent or PCT (International) patent?
Jesse Pliner
0
0
Jesse Pliner Entrepreneur • Advisor
CEO @ Prong
If I was in your position there are few things I would do/consider:

1. How meaningful is the IP to your idea? Are you able to design around it? I would explore what my options are/what the cost is to design around the patent. Is it possible to accomplish what you want to do with your app but make a few changes so that you're not infringing on the IP?

2. I would sit down with a great IP attorney who has experience with the IPR (inter partes review) process. If you're not familiar with this process, do some google searches on it. There are some attorneys who have called it the death squad for patents. This is a relatively new process that is a lot less expensive than a law suit and has an extremely high success rate of invalidating patents. The basic premise is that there is so much prior art out there that very few things are obvious/patentable. However, the patent examiners who are doing the initial patent review aren't doing as thorough of a job as they should at vetting patents and this gives you a tool (for 20% of the cost of a lawsuit....$150k-$250k if you go through the entire process) to invalidate IP that was improperly granted. Speaking to an attorney and getting their thoughts on whether they think there is prior art out there that will allow you to be successful in the IPR process is a good information to have when deciding how to move forward. Even if you don't end up filing this, it might turn out to be a good negotiating chip depending on how much Vivint values their IP. It also will give you an idea of how much it will cost to defend yourself if they were to come after you. Even if you don't have the money to spend on an IPR, there are different ways to strategically use this in a negotiation.

3. Find out if it is possible to get a legal opinion from a reputable attorney that would give you the freedom to operate.

4. Are there other companies that are doing similiar things that might be infringing on this patent as well? If so, has Vivint sued them? I would do some research to see how aggressive Vivint is in enforcing their IP.

I would gather as much information as possible on the above 4 points. Depending on where you are in development (cost, time, etc) I would probably continue making my product. If your app doesn't get traction then you probably don't have anything to worry about as it doesn't make economic sense for them to bother you. They might try to scare you with a cease and desist letter. If you are able to create a solution that is received by the market and doesn't directly compete with Vivint, then it puts you in a position to offer them an added revenue stream without competing with their core business if they decide to come after you.

Obviously, there are a lot of details I'm not aware of, but based off the limited information I have, these are some of the items I would explore to help me understand my options and strategize the best path forward.
Richard Pridham
2
0
Richard Pridham Entrepreneur • Advisor
Investor, President & CEO at Retina Labs
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.
Ken Parker
1
0
Ken Parker Advisor
Partner at Parker Keough LLP
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: [removed to protect privacy] Fax: [removed to protect privacy] Email: [removed to protect privacy] Website: www.parkerkeough.com Admissions: o Massachusetts o United States District Court for the District of Massachusetts o 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 [removed to protect privacy] and permanently delete both the original and any copies thereof.
Scott McGregor
5
0
Scott McGregor Entrepreneur • Advisor
Advisor, co-founder, consultant and part time executive to Tech Start-ups. Based in Silicon Valley.
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.
Joanan Hernandez
0
0
Joanan Hernandez Entrepreneur
CEO & Founder at Mollejuo
Hello Milos,

Highly doubt a patent like that would last in court. It sounds like it is easy to invalidate. I would just proceed forward with your model.

True. However the invalidation part requieres at least lawyers arguing on both sides, at most a trial. Both options are expensive.

Cheers!

Colby B. Springer
3
0
Colby B. Springer Entrepreneur
Principal at Polsinelli LLP
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) [removed to protect privacy] | (M) [removed to protect privacy]
[removed to protect privacy]
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