Innovations project 2: enforcement

MEMORANDUM

THOMAS, THOMAS, AND THOMAS

A Pretend Limited Liability Partnership
From: Ira Steven Nathenson, “Managing Partner,” T3 PLLP
To: Spring 2024 “Associates”
Date: April 3, 2024
Re: Innovations and Patent Management enforcement project

Note to public: this assignment is created for teaching purposes. This project uses real-world materials in order to provide a meaningful learning experience. However, no actual affiliation with any person or entity exists. 

Sections of this page.

Click any of the links below to jump to a section of the assignment.

Background. 

Congratulations!

You are fictional associates in a fictional law firm: Thomas, Thomas, and Thomas, PLLP, or “Pretend Limited Liability Partnership.”  (Also known as T-Cubed.)  There are no real clients and no real adverse parties.

In this project, you will enforce your client’s patent rights. You will use the same client and the same innovations as in project 1.

Short description of project.

I was so impressed with your (fictional) draft patent application that your client signed it and I immediately filed it. Well done! Unbelievably, the USPTO was so impressed with your invention that it granted your client’s patent almost immediately.

That was quick! Congratulations to you and the firm’s client on a job well done!

Unfortunately, not all the news is good. I have also just learned that an unknown miscreant may be infringing your client’s hard-obtained patent.

It looks like you’ll have to do some enforcement work now. You’ll receive further info on the factual scenario separately. You will draft and transmit a cease-and-desist letter to our opponent to try to resolve the matter in your client’s best interest, using your knowledge of Patent law (and other forms of potentially relevant IP), Civil Procedure, Contracts, and Civil Procedure. Even ethical and Professional Responsibility matters may enter into consideration. Finally, you will also write a memo explaining: 1) what you’ve done (or not done) and why it worked or did not work; and 2) our client’s likelihood of prevailing on the merits.

Investigation and documentation. I will reveal your infringement scenarios to you separately via a PDF I will email. Each of you will have a scenario tailored to your client’s recently issued patent.

Cease-and-desist drafting, transmission, negotiation. Around the same time (or even in the same class), we will devote class time to discussing cease-and-desist drafting, tactics, and strategy. To prepare:

Afterwards, you will need to draft a cease and desist letter based one or more models you may find online. You won’t be sending it to anybody in the outside world; instead, you’ll be writing to me, who will be role-playing as your opponent. To be clear, you may not transmit a cease-and-desist letter to any email address except for the one I provide to you via email.

Note that even if you are in both classes this semester, you will have very different experiences.

Memo template. Please review the memo template. Note that the template is identical for both the Innovations and Copyright courses, with instructions appropriate to both. You must use these models and you must maintain the formatting used. Do not change the fonts, sizes, or spacing. The templates include additional guidance as well as spaces for you to fill in. The templates also include the required Certification form at the end.

Due date(s).

Date TBD. The general deadline for Project 2 will be posted to the Assignments page. Upload a single-well-organized PDF file to the Project 2 link on the Canvas site as directed on the Assignments page.

Advice. Based on the number of submissions in prior years that were submitted either close to, or shortly after, the 11:59PM deadline, I would encourage you to get the components of the project done and polished well in advance of the actual deadline so that you give yourself sufficient time to assemble them into a single PDF and upload them. Just like courts that require electronic submission and have deadlines, it is no excuse for counsel to wait until the last minute and suddenly find difficulty assembling documents or uploading them to the required electronic submission system. You should always assume that there might be last-minute technical difficulties, and you are therefore cautioned to give yourself sufficient time to timely submit.

Required portions of case file; nature of organization.

Before handing in your project case file, go through this page, as well as this checklist, to make sure you have not omitted anything. Submit it as a single combined PDF, with items in the order listed below:

  1. Project cover page.
  2. Project table of contents.
  3. A PDF of your cease-and-desist letter.
  4. Email correspondence besides other correspondence to and with the “infringer”. 
    1. Do not provide copies of the emails you sent the infringer or received from the infringer. I already have them.
    2. If there are other emails you think should be included (such as emails to/from me as Professor, or to/from the Senior Partner of T-Cubed), include those. If there are no such emails, then skip the email correspondence section entirely.
  5. Memorandum (with attribution form & pre-existing materials).
    1. This memo should be addressed to the senior partner and should address: 1) enforcement (what you’ve done regarding enforcement and C&D, your goals and strategy, and how it worked (or why it didn’t); and 2) merits (your client’s likelihood of succeeding on the merits).
    2. You may, if you wish, attach documents to the memo, between the memo and the certification form.
    3. At the end of the template is the required Attribution form, which must filled out and digitally signed by the submitting lawyer. You can sign the document electroncally, i.e., /s firstname lastname/. Attach copies of any pre-existing materials you used, such as pre-existing cease-and-desist letters, which must be highlighted and/or annotated, to indicate any language you used or adapted for your application or memo.
  6. Any other materials you deem to be relevant, such as notes or memos-to-file or anything else.

As noted above in the due date section, submit your single, consolidated PDF to the Canvas link shown on the Assignments page.

Permitted and prohibited assistance and sources

As noted in earlier classes, I encourage each of you to seek out, and to provide assistance to, your current Innovations classmates. Lawyering is a collaborative learning experience, and I want you to learn from your apprentice colleagues. That means you can ask and answer questions, seek and provide suggestions, and seek and receive comments on forms and drafts.

Equally so, you can and should seek out documents and templates to help you. Obviously, you must still do your own work by updating materials to reflect your own facts in light of the governing law. Regardless of what a form or template may say, the lawyer who uses it is always responsible for making sure it is factually correct, legally sound, appropriate for the situation, and proper for the client’s needs.

The only thing I require of you in return is that you fully and truthfully fill out the attribution form, in which you will state who you helped, who helped you, and how. You must also identify any templates or pre-existing materials that you use in drafting your forms or memo. Err on the side of revealing too much information rather than too little.

However, unless I give you permission in writing to the contrary, you absolutely may not seek information or assistance from anyone who is not currently enrolled in this course (such as other students at STU). This prohibition includes, without limitation:

  • STU students not currently enrolled in this course.
  • Lawyers and other legal professionals.
  • Anybody at the U.S.P.T.O. or at any service provider.

To be clear, you can talk within the class but cannot engage in any outside communication of any sort. You can talk to me and your classmates, and that is it. No communicating with other law students, with lawyers, with people working at internet companies, or with anyone else. No writing or emailing or other communication of any type is allowed. This is to avoid you getting impermissible help and to avoid the danger of unauthorized practice of law, which may have adverse real-world effects on you. The one and only exception to this rule is that you will be expected to draft and send a cease-and-desist letter; however, that letter will be sent only to an email address we determine as a group and which I approve expressly in writing. In reality, emails sent to the “infringer” email address will be sent directly to me and I will respond in role as the infringer.

Scoring and additional guidance

Scoring for each component will be done on a 4.0 scale (actually, up to a 4.5, which would reflect the equivalent of an A+ for a particular category).

Category %
C&D letter 25%
C&D correspondence 25%
Memorandum 50%
Attribution & certification 0%*
Total 100%

*: Overall project penalty of up to -0.5 if not timely and properly filled out and e-signed, with templates provided and marked up. If project is not signed at all, I may give you an opportunity to cure the defect. If I give you an opportunity to cure and you do not correct the lack of signature, the penalty is 100%. Just like in court, unsigned projects must be stricken. Cf. FRCP 11(a).

The final score for this project will count for 40% of the overall final course score. The other portions of your final course score will come from project 1 (drafting: 35%) and class participation (25%). Assuming you provide timely work throughout the project, your overall score is based on the considerations above.

Below is a brief explanation of each category, with further guidance.

C&D letter (25%).

In drafting your C&D letter, keep in mind that proper notice is required in order for damages to being accruing, and in order to help you argue (if possible) that the defendant is a willful infringer. Your C&D should have sufficient detail regarding your client’s patented invention and claims along with how and why their conduct may infringe (either directly, via inducement, or via contributory infringement). You may use language from other letters, but choose carefully and revise wisely. The scoring here looks to the quality of your C&D (strategy, law, facts, writing). 

Correspondence after C&D (25%).

This addresses any subsequent communications and negotiations with the infringer.

Memorandum (50%).  

As noted, you will use the memo template to draft a memorandum to your senior partner on your client’s likelihood of success on the merits. Maintain the fonts and typography of the original memo template. See memo template for further instructions (which supersede any conflicting info here).

The memo should address, at a minimum:

  1. Enforcement: Why you phrased your C&D the way you did. Discuss your enforcement strategy, what happened, and how well it worked. Be honest in your self-assessment: discuss what went well and why, as well as what went less-than-well. If you chose not to transmit your C&D, discuss why. Provide a thoughtful explanation of why you chose not to do so. Considerations may include your evaluation of the risk and drawbacks of your opponent filing a DJ action and why that may be bad for your client.
  2. Merits: Your evaluation of your client’s likelihood of succeeding on the merits in light of substantive patent law, with consideration of how strong your client’s case is under any applicable theories of liability. Also discuss the remedies you believe your client may be entitled to and why.

The scoring here looks to the quality of your memo (law, facts, writing, organization). Other scoring considerations: 

  • Writing: Is the memo well-written? Is it written with the audience (supervising attorney) in mind?
  • Memo organization: Does the memo provide subheadings for each of the spaces on the form?
  • Analysis: Does the memo include thoughtful discussion and analysis of all the required parts? Does it cite and concisely discuss, relevant legal authorities underlying those choices?

*Certification of Originality, Attribution, and Disclosure (0% of score if properly completed; 100% of score if not).

You must include a filled-out attribution form that reveals any assistance you provided or received. The form is attached to the end of the memo template.

You must attach to the memo (in the appendix) any pre-existing materials you used or relied upon. For example, you must provide copies of any C&D letters that you used as templates. You must also mark up any language borrowed or adapted (highlight, circle, etc.) You need not, however, include copies of the memo template, since I provided it to you, or any statutes, cases, circulars, or other legal materials, since I can find those through a citation.

Projects received lacking a signed and filled-out and attribution form will receive no credit, unless the defect is promptly cured after being brought to the student’s attention. Cf. FRCP 11(a). See further notes above re cure and attribution.

Attribution forms with materially incomplete or false information will lead to reductions in score for the project, or overall reductions in the score for the course, with possible referral to the academic integrity committee. Cf. FRCP 11(b)(3).

**Timeliness.

There are a number of deadlines for the project. Untimely work may impact your overall score, so make sure to turn in all materials on time.

Question: should you provide other information in the memo or the casefile?

You are the lawyer leading the effort to enforce your client’s rights. If you believe it would be useful to provide other information in your memo or your casefile, please do so. Such information may enhance your score in any applicable categories, but only if it is pertinent. Over the years, I have seen excellent case files, both thick and thin. So do not “pad” your file with irrelevancies: they will neither impress me nor help your score. 

Project-related links.

To keep this page simple, other important project information can be found on other pages. In addition to the cases and statutes assigned, discussed in the class, or found in the book, be sure that you have carefully reviewed all of these materials:

Updated Apr. 3, 2024