View source for Attorney Letter 200418

The following is the attorney letter the board received on April 18, 2021 in regards to the cease and desist letter we received on a patent infringement from a members project. The original clean pdf version of the letter can be obtained by requesting it from the current board of directors. It is saved on the board drive.



Date: April 18, 2021
To: Pumping Station One Board of Directors
From: Paul Winters
Re: Patent Infringement Issue and Fire Safety Considerations

ATTORNEY CLIENT PRIVILEGED
CONFIDENTIAL MEMORANDUM
1 INTRODUCTION

At Pumping Station: One, NFP’s (“PS:1”) request, this memorandum provides responsive guidance to
address the following two issues:
1. Tyler Gilbertson’s, March 3, 2021 Cease and Desist letter (“Letter”) sent to PS:1 and alleging
patent infringement of a box cutter design (“Patent”).
2. Concerning the installation and use of fire alarm systems on PS:1 premises, potential
liability and related recommendations.
The following paragraphs are intended to provide the PS:1 Board of Directors with guidance
specifically addressing the questions by the PS:1 Board of Directors in its April 9, 2021 letter related
to the above issues.

2 CEASE AND DESIST LETTER – ALLEGED PATENT INFRINGEMENT

2.1 Law Firm Qualifications and Limitations
As an initial matter, while our law firm regularly provides legal counsel related to trademarks and
copyrights for our nonprofit clients, we do not have experience in addressing or defending patent
issues. If, in the unlikely event, PS:1 needs to defend an infringement claim or needs more
specialized guidance in this area, we can make recommendations concerning patent attorneys who
can provide such specialized assistance. We do, however, have substantial experience in working
with federal legal scheme connected to our practice, have a strong understanding of federal law and
regulatory structures. With this general knowledge base, we have reviewed applicable practice notes
connected with this area and provide this initial responses to the Board’s questions concerning the
Letter.
2.2 PS:1 Question: The individual issuing the Cease and Desist letter does not provide proof that the patent has
been infringed, nor has Pumping Station One made any attempt to investigate the veracity of the
infringement claim. Whose responsibility is it to investigate the veracity of a patent infringement claim?
In an infringement action (actual litigation), the patent owner bears the burden to prove
infringement. The patent owner also bears the burden of production on infringement, requiring the
patent owner to present evidence to support its infringement allegations.
As discussed below, we think that PS:1 has neither directly nor indirectly infringed the Patent, even
if such patent exists, and is valid and applicable. Whether PS:1 seeks to investigate the patent
infringement claim is within PS:1’s discretion, and may bear on whether PS:1 permits "MEMBER" to
continue manufacturing the knife on PS:1 tool systems in conjunction with a disposition of the potential infringement issues between "MEMBER" and Gil-Tek, LLC (through settlement or litigation) as
discussed under 2.6, below.
2.3 PS:1 Question(s): Does Pumping Station One, in its organizational capacity, bear legal and/or financial
culpability for patented objects manufactured by members for their own personal OR commercial use when
they do not own the patent?
A patent infringement claim is an assertion by the patent owner that an accused infringer’s product
or process practices the claimed invention without the patent owner’s authorization. A patent is
infringed if a single claim is infringed. The distinction between personal and commercial uses
appears to us to be immaterial. Both are prohibited under the U.S. Code as follows:
“Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell,
or sells any patented invention, within the United States or imports into the United States any
patented invention during the term of the patent therefor, infringes the patent.” 35 U.S.C.A. § 271
(West)
There are two general types of infringement:
2.3.1 Direct infringement
A party directly infringes a patent if, without authority from the patent owner, it:
2.3.1.1 Makes, uses, sells, or offers to sell a patented invention within the US.
2.3.1.2 Imports a patented invention into the US.

Based on our review of PS:1’s supplied facts, we do not think PS:1 has directly infringed on the
Patent. Specifically, PS:1 has not made, used, sold or offered to sell the allegedly patented box
cutters, nor has it imported such box cutters to the U.S.
2.3.2 Indirect infringement
A party that does not directly infringe the patent itself may still be liable for patent infringement if
it:

2.3.2.1 Actively induces another to infringe the patent.
2.3.2.2 Supplies a component or material used to infringe the patent .

To our knowledge, PS:1 has not actively induced its member "MEMBER" to infringe the Patent. Under
Section 271(b), a party induces infringement if it actively and knowingly aids and abets another’s
direct infringement . Therefore, inducement requires the party asserting infringement to show that
the accused(indirect) infringer knowingly induced the direct infringement and had specific intent to
encourage another’s direct infringement. We understand that this is not the case in PS:1’s
relationship with "MEMBER".
As to the second means of indirect infringement, we understand PS:1 does not sell or offer to sell
components used in the manufacture of "MEMBER"’s tools. Even if PS:1 did or does sell raw materials to its
members, we understand that the materials sold are generally “raw” materials of general use and
would not be of the type especially made or especially adapted for use in infringement of the alleged
Patent.