Complex international situation - help make clear

[badmonkey]

What is the name of your state? FLORIDA

Hi all,

About us:

• I am an inventor of a product in NEW ZEALAND (NZ citizen)
• This invention is licensed to a producer in CANADA (BC) (Canadian company)
• That licensee/producer supplies the product to a reseller in FLORIDA (FL company)

The problem party:

• Is a French citizen
• Currently located in a South American country.

Mr. Frenchman has a US patent which he claims my invention infringes.

While this might sound like an IP case, I am quite certain that it does not infringe, and have a legal opinion on that. Without going into detail, it comes nothing like close to infringing. For the sake of this discussion, can we assume that this is correct.

The problem:
Mr. Frenchman has written to the Florida reseller:

1. Stating that my invention infringes his patent
2. Stating that he has writing from me that agrees that my invention copies his (untrue)
3. Stating he will sue the reseller should they continue to import the product.

In general, I can handle this, by reassuring the Florida reseller. However, this will no doubt happen again with other resellers, and is something I would like to be able to put a stop to. One day this tactic will work, in that it will scare off a reseller for no good reason.

Questions:

• Is there any case for libel and/or product disparagement on the basis of #1 above. If so, would I have to prove that I don't infringe his patent? How does this work? Bring about a seperate hearing to decide on that issue?
• Is there any case for libel on the basis of #2 above?
• Is there some way to force him to "put his money where his mouth is", with respect to #3? I.e. it is my contention he is making false threats to sue. How does one handle this?

And the complicated side of this, how/where would one bring an action, given the different countries involved. Will a Florida court excercise jurisdiction over a French citizen?

Lastly, if in the future such tactics are used effectively, is there a case for interference?

 

[divgradcurl]

Is there any case for libel and/or product disparagement on the basis of #1 above. If so, would I have to prove that I don't infringe his patent? How does this work? Bring about a seperate hearing to decide on that issue?

An accusation of infringement is not libelous. I suppose that it could potentially raise a cause of action under state unfair competition laws, maybe, maybe even an antitrust issue -- but if the guy is in France, how are you going to get him to show up in Florida state court?

What you might be able to do is sue for a declaratory judgment of noninfringement in federal court in Florida. The courts may not have jurisdiction over the French guy, but they likely do have jurisdiction over the U.S. patent. It's at least worth trying to talk with a patent attorney to see what can be done.

Is there any case for libel on the basis of #2 above?

Not currently. If you get a court judgment of noninfringment, then it would probably be a violation of state unfair competition laws or antitrust laws to continue to try and assert the patent. But until you get that judgment, it's his opinion that you might be infringing, and that's not actionable.

Stating he will sue the reseller should they continue to import the product.

People can threaten to sue all they want, can't stop them from doing that. But what you can do is sue them, seeking a declaratory judgment of noninfringement.

And the complicated side of this, how/where would one bring an action, given the different countries involved. Will a Florida court excercise jurisdiction over a French citizen?

A U.S. patent is only enforceable in the U.S., so it's unlikely a foreign court would bother to adjudicate anything based on infringement of a U.S. patent. Now, whether a federal district court in the U.S. would be able to assert jurisdiction, I don't know -- I've nver run into the situation in my practice. However, it's potentially possible, foreign companies sue and have been sued in U.S. courts for infringement of U.S. patents, so it might be worth the time to talk with a U.S. patent lawyer who can look up the applicable statutes and caselaw and advise you accordingly.

 

[badmonkey]

Thanks for your reply - much appreciated.

What you might be able to do is sue for a declaratory judgment of noninfringement in federal court in Florida. The courts may not have jurisdiction over the French guy, but they likely do have jurisdiction over the U.S. patent. It's at least worth trying to talk with a patent attorney to see what can be done.

If we did this, we would in fact be suing the patent holder, and he would be obliged to provide a defense (assuming he wished to defend it), correct? You're not just talking about a simple hearing. In this case, would it be fair to assume the costs would be similar to defending an action for infringement brought by the patent holder? In other words we'd just be forcing the issue - have I got that right?

I actually like that idea, as I cannot believe that the holder really thinks it does infringe, so such a tactic would probably force the holder to settle out of court.

Not currently. If you get a court judgment of noninfringment, then it would probably be a violation of state unfair competition laws or antitrust laws to continue to try and assert the patent. But until you get that judgment, it's his opinion that you might be infringing, and that's not actionable.

Bear with me on this again - refer to #2 above. I was referring not to his allegation or opinion, but his statement that he has writing from me admitting "copying". This is untrue and I consider it defaming. Valid?

Lastly, what do you say to my last question concerning interference. Should the Florida reseller throw their hands in the air and breach our relationship as a result of these threats, would this constitute tortious interference?

Thanks again!

 

[divgradcurl]

If we did this, we would in fact be suing the patent holder, and he would be obliged to provide a defense (assuming he wished to defend it), correct? You're not just talking about a simple hearing. In this case, would it be fair to assume the costs would be similar to defending an action for infringement brought by the patent holder? In other words we'd just be forcing the issue - have I got that right?

That is correct -- a DJ action works the same way as a patent infringement case. The law is set up so that if someone threatens you with infringement, you don't have to put your life on hold waiting to be sued -- you can "force the issue" and make it go to trial. But the case itself is no different than if the patent holder went out and sued you directly for infringement.

Bear with me on this again - refer to #2 above. I was referring not to his allegation or opinion, but his statement that he has writing from me admitting "copying". This is untrue and I consider it defaming. Valid?

Defamation requires an untrue statement that is published and people know it is about you and requires damages. If you don't have damages, no case for defamation.

But even if you did have damages, you have a serious jurisdiction problem, both for defamation, as well as for tortious interference or any other state law claims. The U.S. courts cannot force someone from France to appear in court, so even if you did file, what then? Even if you got a default judgment, the courts cannot impose any penalties on someone who is not in the U.S. The U.S. courts cannot stop someone in France for saying things about you or your company.

You MAY be able to get out from under the patent threat, however, because a U.S. court could potentially provide you with a judgment of noninfringement -- with that, you could move ahead with your product without fear of being sued for infringement of this particular patent.

Either way, you'll need to talk with a lawyer in Florida who can review all of the facts of your case and advise you accordingly.

 

[badmonkey]

Thanks again.

Defamation requires an untrue statement that is published and people know it is about you and requires damages. If you don't have damages, no case for defamation.

Libel per se as an attack on professional character, thus damages presumed?

Re France, long arm statute?

Will eventually talk to an attorney, just want to get things clear in my mind.

 

[divgradcurl]

Libel per se as an attack on professional character, thus damages presumed?

Re France, long arm statute?

The problem isn't really the law, or applying the law to this person, but how do you get him or her into court? A U.S. court cannot force a French citizen to fly to the U.S. to face a civil lawsuit.

Maybe you could sue him or her in France.