Prelitigation Hardball after Dominant Semiconductors
Thomas G. Field Jr.
University of New Hampshire School of Law (formerly Franklin Pierce Law Center)
July 17, 2008
Particularly since eBay, patentees who threaten alleged secondary infringers may accomplish more than would be possible by filing suit against primary infringers. Beginning in 1998, the Federal Circuit has found various essentially identical local causes of action, as well as actions under Sec. 43(a) of the Lanham Act to be subject to a federal privilege. Recent opinions confirm that anyone may be threatened with suit unless allegations of infringement are "objectively baseless."
Yet it seems that such contact should be forbidden at least until suit has been filed against the primary infringer. Patentees whose suits cannot pass muster under F. R. Civ. Pro. 11 should be barred from contacting secondary infringers whose stakes are too small to credit rebutting legal opinions offered by primary infringers, much less seek independent opinions.
Number of Pages in PDF File: 3
Keywords: patent litigation, commercial speech, secondary infringers, F.R.C.Pro 11, privilege, patent preemption
JEL Classification: K10, K20, K41
Date posted: July 17, 2008 ; Last revised: July 28, 2008