Law schools rarely teach the mechanics of drafting ethical and effective cease and desist letters. Most lawyers learn this craft from trial and error. Over 20+ years, we have learned what works and what fails when making a legal demand. Cease and desist letters are categorized into three types:

The Furious Demand; The Softball; and The Intellectual.

The Furious Demand

The Furious Demand is all too common in intellectual property litigation. The undersigned attorney is seemingly outraged the alleged infringer still breathes. The Furious Demand is heavy on threats but light on facts. All infringement is egregious, knowing and malicious. The letter will invariably demand:

Attitude is everything in the Furious Demand cease and desist letter

An immediate halt to all business operations involving the alleged infringement;

Immediate destruction of the allegedly offending articles or equipment in support of the infringement;

The identity of all customers that bought the infringing article;

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 settlement.

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 wrote, “methinks thou doest protest too much.” Such drum-beating is the sign of inexperience or incompetence.

Pros and Cons of the Furious Demand

Pro 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. Con 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.

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. Evidently, 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. Accordingly, 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.Best regards…..

Sending a Softball Demand has its advantages, one of which is maintaining an amicable relationship with the opposing side.

The purpose of the Softball Demand is to put the opposing party on actual notice of the patent. In fact, from a damages standpoint, continued manufacture, use, sale, offering for sale or importing of the ABC-brand widget will now be knowing and willful. Significantly, note the word infringement is not 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.

Pros and Cons of the Softball Demand

Pro The alleged infringer is sufficiently intimidated to stop the alleged infringement.

In truth, it takes very little time to draft – no real analysis exists in the Furious Demand.

Lastly, the communication does serve as a call to action and will typically receive some form of response, whether positive or negative. Con 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.

Furthermore, 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.

Moreover, the sender’s credibility is damaged and potential licensing discussions are far from an amicable start.

Finally, the tone of the letter can cast the patent owner in a negative light during trial.

Some defendants remain blissfully unaware the Softball Demand letter enhances potential damages. In other words, no real desire exists to maintain a friendly atmosphere. However, there is a fine line between notice and acquiescence. Equally important, 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.

The Intellectual Demand

This type of demand requires the greatest amount of work. However, it effects the best results. Consequently, this format is the only type sent by Smith & Hopen attorneys.

The Intellectual Demand represents a knowledgeable and even-handed manner of handling infringement issues. Moreover, 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. In particular, 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 below:

The accused device #1 (a bucket)

Patent Infringement Claim Chart

Claim Limitation Present in Accused Device? (Claim 1) A bucket for holding fluid, the bucket comprising: a bucket Yes a handle from which said bucket depends; and Yes a cushioning means attached to said handle. Yes

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.

Components to an Effective Demand Letter

Semantics and the use of precise language play a big part in patent quality and enforcement. Other aspects of this demand include: