Results tagged “patent reform”

Part 3: Troll Wars: The Problem Can Only be Solved by Congress

Note: This blog is cross-posted from Mike Dillon’s personal blog. 

When it comes to claims by patent trolls, the short answer as to why more companies don’t fight back is – cost. A company can expect to incur several million dollars for outside counsel, expert witness, and jury consultant fees to defend  a case involving a single patent.  If multiple patents are asserted the costs are significantly higher. In addition, there is time required of a company’s finance, legal and engineering teams to support the company’s defense – time better spent on the company’s business. In the Select Retrieval case, discussed in my last post, we spent more than $200,000 defending our customer even though that case was resolved very early in the litigation process. For a small retailer or a start-up this amount could be prohibitive.

The lawyer representing the patent troll who told me it was about “economics” was correct, of course. It is about economics – asymmetrical economics. A lawsuit by a patent troll potentially puts at risk a company’s products (in the remote case where a jury finds infringement), but more importantly requires a company to incur the costs described above.  On the other hand, the cost to a patent troll is almost negligible. While there is some risk that a patent might be found to be invalid during the course of litigation, this happens infrequently. Also, lawyers for patent trolls are usually paid on a contingency basis. Consequently, the patent troll has little out of pocket expense – but tremendous upside opportunity.

If the root of the problem is asymmetrical economics, why don’t we change things to level the playing field?  For example, what if we allowed the prevailing party in a patent troll litigation to recover its legal fees from the other party?  Risk and expense are then part of the equation for BOTH parties.

Surprisingly, current law already provides for this. Under 35 U.S.C. Section 285 a court “in exceptional cases may award attorney fees to the prevailing party.”  Many commentators, including Judge Rader, chief judge for the U.S. Court of Appeals for the Federal Circuit, have advocated that judges apply this law more often. Yet courts rarely do because of confusion over what constitutes an “exceptional” case. Does this mean that the lawsuit was brought in bad faith? That it was objectively baseless? It’s unclear. Currently, there are two cases before the U.S. Supreme Court that may provide clarity.  However, given the reports of how the hearings went, it doesn’t look like the Supreme Court will be able to rationalize the standard to a level that will actually solve the problem.

The uncertainty in the application of Section 285 also goes to the question posed in my last blog: “Why did Select Retrieval settle for nothing?”

The answer could be that Select Retrieval had settled or dismissed most of the other defendants in the California case and didn’t want to litigate against just a single defendant in one court. Or, it could be that Select Retrieval knew that it had a weak case and didn’t want to risk losing at trial and having attorney fees awarded against it under Section 285.

After Adobe settled the case with Select Retrieval, we asked the court to award us attorney fees under Section 285. In our view, the fact that Select Retrieval dismissed the case with no payment indicated that they filed the lawsuit in bad faith, with no real belief that they would prevail on the merits.  The court, however, rejected our request finding that Select Retrieval’s conduct did not meet the “exceptional” standard because the case was dismissed and, consequently, the merits of the lawsuit were never tested. In other words, in this court’s view, absent some type of clearly egregious conduct by a patent troll, the court will not award attorney fees unless there is a trial. Because most patent troll cases never go to trial this means that Section 285 won’t change the asymmetrical economics.

The real answer lies with Congress. There are currently a number of proposed bills in the Senate directed at patent reform and the patent troll problem. These contain different proposals that help address the issue; for example, requiring that patent troll lawsuits against customers be stayed, until the case against the company producing the allegedly infringing product is resolved. While helpful, however, most of these measures do not get at the root of the problem – the asymmetrical economics.  The solution is to change the standard articulated in Section 285 to one in which the presumption is that legal fees and expenses will be awarded to the prevailing party.

Last December, the House passed what is referred to as the “Innovation Act” (H.R. 3309) that provides just this. It  states: “The court shall award, to a prevailing party, reasonable fees and other expenses incurred by that party in connection with a civil action, unless the court finds that the position of the non-prevailing party was reasonably justified or that special circumstances make the award unjust.” Under this standard, Select Retrieval would have been required to reimburse Adobe the $200,000 we spent in defending our client unless it could show that the lawsuit was reasonably justified or that special circumstances existed that would have made this unjust. We doubt that it  could have met this standard.

The Innovation Act is one of those rare pieces of proposed legislation these days that has true bipartisan backing in the House and from the President. Currently, Senator Leahy is considering incorporation of much of the Innovation Act  – including a fee-shifting provision – in a proposed Senate bill. Let him know that you support this and passage of a Senate bill.

Once this happens American companies can get back to focusing on innovation and job creation.

Part 2: Troll Wars: Defending Against the Tony Sopranos of the Legal World

Note: This blog is cross-posted from Mike Dillon’s personal blog. 

What’s notable about the patent troll problem is that these entities seldom win their lawsuits. But their business model isn’t predicated on going to trial; instead it is dependent on casting as wide a net as possible knowing that some percentage of companies will pay a license fee rather than incurring the cost of litigation. A good illustration of this is Innovatio IP Ventures LLC, a patent troll that owns Wi-Fi patents (originally acquired from Broadcom Corporation) and claims they apply to everyone who uses a Wi-Fi connection. By some estimates Innovatio has sent out more than 10,000 letters threatening litigation unless the recipient pays a license fee of several thousand dollars.  If your corner coffee shop or diner has a Wi-Fi connection they likely have been the recipient of one of these letters.

As a result, patent trolls, like Innovatio, invest little effort or expense in “mapping” the claims of their patent against a thorough understanding of an allegedly infringing company’s products or conduct to determine whether their allegations will hold up at trial. But, they really don’t need to because their objective isn’t to win a trial, but rather to intimidate a company into paying a license fee.  Think of them as the Tony Sopranos of the legal world.

http://www.tuxboard.com/photos/2013/06/Tony-Soprano-Wallpaper.jpg

http://www.tuxboard.com/photos/2013/06/Tony-Soprano-Wallpaper.jpg

If a case does get litigated and they lose, it has little impact on the patent troll because the only consequence is that they incur their expense of litigation. Even this isn’t much, given that in most of these cases the attorneys representing the patent trolls are compensated on a contingency basis – meaning they get paid a percentage of whatever is recovered.  If there’s no recovery, the patent troll pays no attorney fees. As a result, patent trolls really have little downside risk.

In the past, Adobe, like many companies, treated claims from patent trolls as a “cost of doing business” and handled it accordingly seeking to resolve the case in the most cost efficient way possible, including by paying a license fee.  Over the past two years; however, we’ve changed our approach. Now, we are channeling our inner corporate Albert Finney  and when faced with a patent troll case we fight them using a variety of tools. In some cases this is a motion to transfer the lawsuit to different jurisdiction, or to disqualify the law firm representing the patent troll because have previously represented Adobe and have a conflict of interest. In others, we’ve asked the U.S. Patent and Trademark Office to review whether the asserted patent should be invalidated. We’ve successfully deployed other strategies as well.

The results have been positive. Here’s a recent example. Select Retrieval is a privately held, patent-holding company based in Texas. It doesn’t produce anything – other than litigation.  One of its only assets is a patent (6,128,617) that covers the way in which information from a database is displayed. This patent was granted in October, 2000 to David Lowry of Medford, Oregon. A decade later the patent was acquired by Select Retrieval. Needless to say, they then filed patent infringement lawsuits against hundreds of companies across the country. One of those lawsuits was filed in Southern California against a number of retailers, including PacSun, an Adobe customer.  Under patent law you can be sued if you make, use or sell an infringing product. Patent trolls have taken advantage of this by now suing not only the company that makes the allegedly infringing product, but also their customers that use them. In this case, Select Retrieval sued the customers of a number of technology companies, including Adobe, in courts around the country hoping that these customers would put pressure on the technology providers to settle. Instead, Adobe agreed to defend and indemnify PacSun against this claim.

From our initial analysis it was clear that the underlying Adobe product did not infringe. Consequently, we filed an answer denying the allegations and proceeded to prepare the case for trial. Along the way, Select Retrieval dismissed or settled with all but one of the other defendants, and made several attempts to settle with us. The first was a settlement offer of $210,000, to which we replied “no”. (Actually, that may have been prefaced with a profanity.)  Five months later, Select Retrieval offered a reduced settlement of $69,000, to which we again said “no”. Then shortly before opening claim construction briefs were due, Select Retrieval offered to settle for $30,000. Once again, we again said “no”.

A  few months before the claim construction hearing (a key hearing where the court provides an interpretation of patent claims)  they approached us again. This time they offered to settle for what is known as a covenant not to sue. In legal parlance it means we didn’t pay a dime in licensing fees and they dismissed the case.  We continue to battle with Select Retrieval in other courts, but this one case against PacSun is over.

As I mentioned, this is just one example of a successful outcome for Adobe in responding to cases filed against our company and its customers. And, we are not alone in taking this more aggressive approach. Many companies, from Build.com  to Newegg to Rackspace are doing the same thing.

Given all this, you may be asking: “Why don’t more companies fight back?”

And, why did Select Retrieval settle for nothing?

Part 1: Troll Wars: Costing American Businesses $29B and Counting

Note: This post is cross-posted from Mike Dillon’s personal blog. 

Early in my career, when I was a law firm associate, one of my clients, a small networking company received a curious letter. It was from an unknown company accusing my client of patent infringement and “inviting” them to pay a very large license fee.

What made the letter so strange was that the referenced patent appeared to have nothing to do with the products made by my client.  Stranger still, after we did some investigation, we discovered that the other company was little more than a thinly capitalized shell that appeared to have a single employee – an attorney who had purchased the patent from someone else.

Because it was rather novel, I discussed the letter with other attorneys in the firm and we concluded that it must be a mistake, so I decided to call the other company to clarify things. It didn’t work out as I expected. Instead, our discussion became increasingly heated (at least on my end) until I said: “There’s no way my client will pay a dime – they aren’t infringing.” To which I heard a calm voice reply: “Yes, they will because the license fee I’m offering is less than what it will cost them to fight a patent lawsuit. It’s basic economics.”

It turns out, I was wrong.

My client was angry as hell and wanted to respond with a countersuit asserting his company’s patents; that is, until I explained that the other company didn’t have products. They didn’t actually make anything that could be infringing. A few weeks later he decided to pay the license fee (in the six digit range) to avoid the cost of fighting a patent infringement case in court.

That was my first introduction to a patent troll. At the time,  my fellow attorneys at the firm and I thought that this type of claim was an aberration in the U.S. legal system, something that our clients would rarely have to deal with in the future.

It turns out, we were wrong.

Since that telephone call some twenty-five years ago, patent trolls have overrun the U.S. patent system spawning an entire industry of attorneys, technical and damages experts, and causing a significant drain on judicial resources. (Here’s a patent litigation fun fact: In 2012 alone, more than 60% of all patent cases were filed by patent trolls. That’s over 2,900 cases in that year alone that required the attention of a frequently overworked judiciary.)

More importantly, it’s been an enormous diversion of money and resources from innovation and job creation to funding of lobbyists and lawyers. According to one recent study, the cost to American businesses in 2011 was a staggering $29b.  In an era of increasing global competition, this doesn’t bode well for America.

Let me give you a couple of real life examples this from earlier in my career.

- A small start-up I supported was focused on quickly increasing revenue growth and market share. Like many companies at this stage, it was dependent on private investors and operating on a very lean budget. An important factor in the company’s future success was the ability to develop and release a new set of features in its products. But, there was a competing demand for funding  – for the company’s defense of a lawsuit filed against it by a patent troll. The result?  The company was forced to delay some of its product development efforts in order to finance the litigation, and in-turn risked losing its competitive-edge.

- I was once asked to meet with the VP of the software development organization (at another company) to discuss a number of patent troll cases that had been filed against us. I thought the purpose of the meeting was to cover legal strategy, but what we discussed was far different.  When I arrived, the VP had on his desk invoices from the law firms that were defending us in the lawsuits.   I still remember him handing me a list of engineering and development roles and saying: “Mike, in order to pay these invoices and still achieve my financial targets I’m going to need to eliminate these positions. Before I do this, I wanted to check with you to see if you have any other ideas.” As it turns out, I did, but the meeting brought home the true cost of patent trolls to American business.

These examples are not unique. I’m sure if you ask the general counsel of most companies they would have similar stories.

The question is what do we do about it?

 

Window of opportunity for action on patent reform

TheHillNote:  The has been re-posted from an original article from The Hill co-authored with Mark Chandler, senior vice president, general counsel and secretary, and chief compliance officer of Cisco.

For more than 200 years, America’s patent system has safeguarded the rights of inventors and innovators – the individuals and businesses that push the technological envelope and provide the foundation of the amazing products that have changed our world.  The patent system traditionally also recognized the limits of patents, so that the patent grant didn’t become a basis for blocking legitimate entrepreneurs.  But over the past decade, the patent system has been under assault from patent assertion entities that use and abuse the legal system with intimidation tactics to rake in financial settlements.

Just last week, the White House announced executive action to improve patent quality and to help stop these patent assertion entities from their pattern and practice of rent-seeking behavior.  But as Secretary of Commerce Penny Pritzker and National Economic Council Director Gene Sperling pointed out, ultimately Congress must step in and overhaul our patent system to make a meaningful impact.

At a time when Congress is tied up in knots on a range of issues, patent reform is one area where legislation is not only possible, but achievable in short order.  The U.S. House of Representatives has acted, approving a patent overhaul by a broad, bipartisan majority.  The Obama Administration supported that legislation.  Can you think of many other issues where Speaker of the House John Boehner (R-Ohio), House Minority Leader Nancy Pelosi (D-Calif.) and President Obama are on the exact same page?

Now it’s up to our leaders in the Senate Judiciary Committee to pass companion legislation in the Senate.  We hope that they can find common ground, just as their colleagues in the House have done.

The patent problem is becoming worse.  What began as a cottage industry of abusive patent litigation and threatening demand letters has become a full-scale flood, a veritable business model predicated upon abuse.

Patent assertion entities target businesses, large and small, from whom they believe they can extract financial settlements, no matter the merits of the case.  Nearly 60 percent of new patent lawsuits are being filed by patent assertion entities, up from 25 percent in 2007.  And a new study by Professor Robin Feldman of the University of California Hastings College of the Law has found that no industry will be immune.  What started in the technology industry, has moved to main street, and the pharmaceutical and biotechnology industries may be next as patent aggregators stockpile patents hoping that they can make a case that those industries too are somehow copying earlier inventions.

Sometimes the targets of abusive tactics are product manufacturers like our companies that have the means and ability to defend ourselves – and many times we do so, even though it’s much less expensive to settle.  Other times, it’s small businesses who get a threat letter in the mail.  The logic in both instances is extortionist – send us money now or we will cause you considerable pain in the form of huge legal bills later.  The merits of the case are secondary, at the very least.

This is what Congress must address.  We need a patent system that ends the patent assertion entity’s business model.  This requires a balanced approach, where legitimate claims will go forward, much as they do today.  But plaintiffs should be required to state what their underlying legal claims are; expensive, document-intensive fishing expeditions should be limited; and in frivolous or abusive cases where a court finds no reasonable basis for the positions taken, fee-shifting should be the rule.  This creates a measure of accountability and transparency that does not exist today.  All these reforms were in the House-passed measure.

Bottom line:  The Senate should push ahead with reform that will keep American businesses growing and investing in innovation.  In doing so, the Senate will send a message to the American people that they are on the side of innovation that drives economic growth and job creation.

The solution is before us.  There is a window of opportunity to act.  We ask the Senate to make meaningful reforms to the patent system soon and take a step toward a patent system that meets the Founders’ goal of truly, “promoting progress in science and useful arts.”

Bipartisan Agreement Exists! And It’s in Patent Reform

Most days, I love my job. I am chief IP counsel at one of the most innovative companies on the planet—Adobe. I work with some of smartest people in the world who develop industry-leading technologies for creatives and marketing pros. I also have the privilege of working with leading universities and technology companies to license their IP to help make our products the world-class experiences people expect from Adobe. All of this innovation is protected by intellectual property law, including over three thousand patents and applications, which is what enables Adobe to employ thousands, serve our customers and provide value to our shareholders.

But there is one aspect of my job that is not so fabulous—dealing with patent trolls. My boss, Mike Dillon, has blogged about this scourge (with his usual flair). I was privileged to testify about it before Congress earlier this year, to urge our lawmakers to act, and act now. As a lawyer, and as someone who believes in sticking up for the little guy, I truly believe in the importance of having access to courts to help redress rights. In fact, I am married to a  lawyer who has devoted her entire career to helping underprivileged people gain access to the courts, and it is an issue we are both passionate about. But abusive patent litigation is just a cynical practice designed to extort money out of its victims by taking advantage of the high cost of defending patent lawsuits. When put to the test, these patent trolls lose. One study shows that patent trolls’ lawsuits are defeated in court 92% of the time, compared to 60% for other plaintiffs. But in today’s system, they face no consequences for their actions.

That’s why I am excited that help is on the way, thanks to the Innovation Act. The bill was written by Chairman Bob Goodlatte of the House Judiciary Committee, along with a bipartisan group of cosponsors including Reps. Zoe Lofgren, Howard Coble, Peter DeFazio, Lamar Smith, Anna Eshoo, Jason Chaffetz, Spencer Bachus, Tom Marnio, Blake Farenthold, and George Holding. Many Adobe employees live in the districts of Zoe Lofgren, Anna Eshoo, and Jason Chaffetz, and we are particularly grateful for their support of a hometown company.

Adobe supports passage of the Innovation Act. We believe it protects the integrity of the patent system while reining in abusive litigation with the right solutions, especially with its focus on fee shifting.  We need to restore balance to this broken system, and the Innovation Act does just that.

Of course, there is more work to do to improve the bill, and we’ll be working with our friends in industry and Congress to help make those improvements going forward. Adobe’s sincere thanks go to Chairman Goodlatte for his leadership and to all the cosponsors and their staffs for understanding the insidious nature of the troll phenomenon and working to fix the problem.

To learn more about the patent troll problem and the need for reform, both the Business Software Alliance and Coalition for Patent Fairness have further information. You can learn how to contact your representatives in Congress here.

BSA: A New Leader for a New Era

I’ve been in the software business for much of my career, and there has been one constant through all this time:  the speed and complexity of the industry continue to rise.  The enormous issues we face today –  like cybersecurity threats, challenges to intellectual property protection and the need for patent reform – make it essential for us to have strong industry leadership to navigate and advocate on the software industry’s behalf.

Given this need, we’re delighted with the appointment of Victoria Espinel as the new president and CEO of BSA | The Software Alliance. Through her White House experience, Victoria brings a strong ability to bring diverse stakeholders together and work effectively with policymakers in Washington and worldwide.  BSA has long been a leading advocate for the software industry, promoting an environment that supports innovation and helps drive the economy and improve quality of life around the world.

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