Complex international situation - help make clear - libel/patents/interference

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?

Just out of curiosity, do you have any International Patents?

Do you have one of his products that you and your counsel have compared to his patent and yours?

Has he asked for any Royalties?

If you are certain there is no infringement and your International Ducks are in a row, why not have your legal advisor draft him a letter stating so and offer to take him to court(probably cost prohibitive) if he should continue interfering with your business. It's more a fluff letter than fact but sometimes works.

More than likely he is not going to except this offer. He more than likely he is only looking to reduce his competition or is looking for royalties. A letter should sort the two out.

If he lives in another country suing him for liable etc. might be fruitless and expensive.

On the other side of the coin; Why not consider expanding your market/profits by a possible merging of the two? Ahhh , the Art of Negotiation....

Good Luck

I haven't a clue as to the answer of your question since my experience is in criminal law, but I have to admit, this was an excellent post---well written, and well thought out. A pleasure to read, and interesting to follow. Thank you! Best wishes.

I agree with both mileaway (who brings up some great points) and GentleGrace on her description of your post.

#1 – You can probably sue to get a declaratory IP judgment that you do not infringe on this guy’s patent. However that will probably be cost prohibitive. I don’t think you can sue him on the basis of saying that you are infringing without it. I also don’t think that any “international patent” will make a difference in this case or your question.

#2 – I agree with mileaway, it’s probably cost prohibitive.

#3 – Probably not, you can’t ask a guy to “put his money where his moth is”.

Solution options:
1. Contact him. Pay him off to leave you alone.
2. Sue him locally over this (perhaps an interference of business statute). You may have some jurisdiction issues here but since the guy is foreign you can probably get a default judgment against him. (The same thing will hold true for a patent or liable law suit.) With this default judgment, you can probably reassure any reseller that the guy is just bluffing. He can probably eliminate the default judgment but that would cost money and would force him to engage you… something I doubt he intends to do.

Good luck!