Strategic responses to patent trolls

Copyright Thursday, April 27, 2006 Duncan Bucknell Company

The April 2006 edition of the North Carolina Bar Association ‘IP Links’ Newsletter carries a feature article Steven Gardner and E. Danielle Thompson Williams of Kilpatrick Stockton entitled “Basic Framework for Effective Responses to Patent Trolls".

The authors advocate an understandably aggressive stance which is nicely summarized in Bill Heinze’s blog I/P Updates.

Comment

The strategies advocated by Gardner and Williams are not uncommon in the patent litigator’s toolkit. However, isn’t there a more long term, strategic approach that could be taken? Namely — that a regular, thorough review of the IP landscape relevant to your products and services would identify the relevant patents well before they are asserted (or possibly even owned) by the ‘Troll’. If the relevant patents come up on the radar as potentially relevant to freedom to operate, then presumably their ownership, status etc would also be investigated at that time. Following this logic to the next step, it may sometimes be the case that you get the opportunity to acquire the patents before the troll.

Also — one of the difficulties for a defendant in proceedings brought by a ‘Troll’ is that counter-suit is very difficult because the ‘Troll’, almost by definition, will not have any products or services of their own. However, given the right factual circumstances, a counter-suit which should be seriously considered in the USA (where ‘Trolls’ seem to be most active) along with anti-trust, inducement, etc is an interference proceeding. Again, early identification of the existence of the relevant patents would make it more likely that time to copy claims and file the suit would still exist. For the USPTO MPEP section on Interferences, click here.

What is a ‘Patent Troll’

For anyone who hasn’t yet come across the term, a ‘Patent Troll’ is basically an entity which enforces and licenses intellectual property without actually making or selling anything. It is now commonly used in the pejorative due to several high-profile examples of companies buying cheap patent rights for the sole purpose of suing and extracting license fees from multiple large players in an industry. Click here for a nice definition in Wikipedia.

Click here for an excellent article from Jeremy Phillips of the IPKat Blog explaining why this kind of activity isn’t actually such an evil thing — “Be kind to that patent troll, he might just be an inventor”.

Click here for a copy of Bruce Berman’s article from the February/ March 2005 edition of Intellectual Asset Management Magazine on the same point — ‘No more name-calling please”.