I was recently quoted by the Waterbury Republican American newspaper regarding patent trolls. The article was written by Phil Hall who interviewed me a couple of weeks ago for this story. Basically the story is about scan to email trolls who go after small business owners who own all-in-one copier/scanner machines. The story is avaible here, mind by permission: Trolls .
The US congress has introduced anti-abusive litigation tactics (patent troll) legislation for discussion purposes. A good discussion and summary of the legislation can be found at PatentlyO.com The proposed legislation does make it more difficult for patent trolls to sue for patent infringement, but it also makes it more difficult for legitimate patent owners to sue for patent infringement as well. During my quick review of the materials, there is no definition of what a “patent troll” is, or what “abusive litigation tactics” are. Thus, I am reserving judgement on the efficacy of the proposed legislation.M
Very interesting development in the scan to email patent troll matter. One of my clients in Connecticut dealt with the very same issue. In Minnesota, as reported here, the state’s attorney general settled with MPHJ Technology Investments LLC, a Delaware company accused of trying to wring money out of hundreds of Minnesota businesses on claims the firms were infringing on patent rights by using basic office equipment, namely office scanners. MPHJ Technology and a host of affiliates including BriPol agreed to stop their campaign and to not restart without approval from Minnesota’s attorney general. If the state discovers that any Minnesota residents or companies actually paid MPHJ Technology money for either a license or an alleged infringement, MPHJ will have to pay a $50,000 civil penalty and refund all money.
Turns out the owner of MPHJ is a lawyer named J. Mac Rust in Waco, TX.Keep this in mind if you get a letter from a troll demanding you pay money for using your scanning office equipment!
The number of issued utility patents per year has been going up every year since 2009 and is predicted to go up in 2013 as well! The below chart courtesy of PatentlyO.
If you have answers to any of these five questions, you may receive support form Sikorsky to develop your business/invention!
- How can your offering utilize vertical flight to better serve or create new markets?
- How can your offering enhance transportation and mass transit using mobile devices and apps?
- How can your offering detect or learn to detect patterns in big, complex, unstructured data sets?
- How can your offering stop a speeding projectile or prevent an object from being seen, heard or identified?
- How can your offering allow a complex machine to know more about its own health and capabilities?
See the Echallenge website for more details of this exciting competition. Also, Jonathan Hartman from Sikorsky will be discussing the competition at the next Inventors Association of Connecticut meeting, more details here.
Earlier this month, a white house created task force looking into Patents issued 7 legislative recommendations and 5 executive actions. The task force report can be found here. A good write up on the task force report can be found at the IPWATCHDOG blog.
The 7 legislative recommendations are listed below:
- Require patentees and applicants to disclose the “Real Party-in-Interest”by requiring that any party sending demand letters, cheap filing an infringement suit or seeking PTO review of a patent to file updated ownership information, and enabling the PTO or district courts to impose sanctions for non-compliance.
- Permit more discretion in awarding fees to prevailing parties in patent cases, providing district courts with more discretion to award attorney’s fees under 35 USC 285 as a sanction for abusive court filings (similar to the legal standard that applies in copyright infringement cases).
- Expand the PTO’s transitional programfor covered business method patents to include a broader category of computer-enabled patents and permit a wider range of challengers to petition for review of issued patents before the Patent Trial and Appeals Board (PTAB).
- Protect off-the-shelf use by consumers and businesses by providing them with better legal protection against liability for a product being used off-the-shelf and solely for its intended use. Also, stay judicial proceedings against such consumers when an infringement suit has also been brought against a vendor, retailer, or manufacturer.
- Change the ITC standard for obtaining an injunctionto better align it with the traditional four-factor test ineBay Inc. v. MercExchange, to enhance consistency in the standards applied at the ITC and district courts.
- Use demand letter transparency to help curb abusive suits,incentivizing public filing of demand letters in a way that makes them accessible and searchable to the public.
- Ensure the ITC has adequate flexibility in hiring qualified Administrative Law Judges.
The 5 executive actions are listed below:
- Making “Real Party-in-Interest” the New Default. Patent trolls often set up shell companies to hide their activities and enable their abusive litigation and extraction of settlements. This tactic prevents those facing litigation from knowing the full extent of the patents that their adversaries hold when negotiating settlements, or even knowing connections between multiple trolls. Today, the PTO will begin a rulemaking process to require patent applicants and owners to regularly update ownership information when they are involved in proceedings before the PTO, specifically designating the “ultimate parent entity” in control of the patent or application.
- Tightening Functional Claiming. The AIA made important improvements to the examination process and overall patent quality, but stakeholders remain concerned about patents with overly broad claims — particularly in the context of software. The PTO will provide new targeted training to its examiners on scrutiny of functional claims and will, over the next six months develop strategies to improve claim clarity, such as by use of glossaries in patent specifications to assist examiners in the software field.
- Empowering Downstream Users Patent trolls are increasingly targeting Main Street retailers, consumers and other end-users of products containing patented technology — for instance, for using point-of-sale software or a particular business method. End-users should not be subject to lawsuits for simply using a product as intended, and need an easier way to know their rights before entering into costly litigation or settlement. Today, the PTO is announcing new education and outreach materials, including an accessible, plain-English web site offering answers to common questions by those facing demands from a possible troll.
- Expanding Dedicated Outreach and Study. Challenges to U.S. innovation using tools available in the patent space are particularly dynamic, and require both dedicated attention and meaningful data. Engagement with stakeholders — including patent holders, research institutions, consumer advocates, public interest groups, and the general public — is also an important part of our work moving forward. Roundtables and workshops that the PTO, DOJ, and FTC have held in 2012 have offered invaluable input to this process. Today, we are announcing an expansion of our outreach efforts, including six months of high-profile events across the country to develop new ideas and consensus around updates to patent policies and laws. We are also announcing an expansion of the PTO Edison Scholars Program, which will bring distinguished academic experts to the PTO to develop — and make available to the public — more robust data and research on the issues bearing on abusive litigation.
- Strengthen Enforcement Process of Exclusion Orders. Once the U.S. International Trade Commission (ITC) finds a violation of Section 337 and issues an exclusion order barring the importation of infringing goods, Customs and Border Protection (CBP) and the ITC are responsible for determining whether imported articles fall within the scope of the exclusion order. Implementing these orders present unique challenges given these shared responsibilities and the complexity of making this determination, particularly in cases in which a technologically sophisticated product such as a smartphone has been successfully redesigned to not fall within the scope of the exclusion order. To address this concern, the U.S. Intellectual Property Enforcement Coordinator will launch an interagency review of existing procedures that CBP and the ITC use to evaluate the scope of exclusion orders and work to ensure the process and standards utilized during exclusion order enforcement activities are transparent, effective, and efficient.
The case of Limelight Networks, Inc. v. Akamai Technologies, Inc., Docket Nos. 12-786 and 12-960 (Supreme Court 2013) will attempt to answer the question of “”Whether the Federal Circuit erred in holding that a defendant may be held liable for inducing patent infringement under 35 U.S.C. § 271(b) even though no one has committed direct infringement under § 271(a).”
Direct infringement means that one party has infringed at least one claim of a patent by performing each element in the claim. Joint infringement means that two or more parties, jointly, performed each element of the claim thereby leading to infringement. PatentlyO has a good discussion here.
The New York Times just posted an article about how the Federal Trade Commission will be looking into patent assertion entities (PAE) or patent trolls. The FTC chairwoman Mrs. Ramirez states in the article: ““We have a role to play in advancing a greater understanding of the impact of P.A.E. activity and using our enforcement authority where appropriate to curb anticompetitive and deceptive conduct.” This could be good news for thow who are being harassed by patent trolls The article is here.