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Update on Troll Patents

May 16, 2016

A legal expert discusses how to deal with threats from a patent trollPatent-200x130

Dr. Harvey R. Levenson is Professor Emeritus and former Department Head of Graphic Communication at Cal Poly State University in San Luis Obispo, California. He is a frequent Expert Witness specializing in communication, intellectual property, media, printing, and technology.

In an update, Levenson discusses what actions OEMs and print service providers can take should they be threatened with extortion and law suits. Often companies are “inexperienced in dealing with lawsuits”, he said and “are intimidated by being served legal warrants”. Many cannot afford the expense of lawyers and some “give in to the demands of trolls”. He advises them to contact legal experts that work to “protect businesses and individuals from troll extortion”.

The demands come in many forms, the most common being those for license fees for very “basic office or production equipment” for example, “scanners, copy machines [and] web-to-print technology”

Small business owners find it daunting to receive a demand of six figures for a license. The ‘troll’ claims that the OEM is “using equipment that has one or more parts described in an obscure patent that was sold to a troll in an attempt to monetize it”. Levenson goes on to say that “the assignee to the patent at some point may have come to realize that the patent is of questionable value and sought a troll to intimidate people and businesses using technology or applications that are even remotely taught by the patent. The troll then claims infringement and a lawsuit if a license fee is not paid by a certain time”.

The Professor goes on to explain that the patent trolls who send out threats in legal looking documents are in reality asking for information they do not have. In answering or filling in these forms the business owner can unwittingly incriminate himself. He advises not to fill the forms in and under no circumstances do not settle or make a payment. Entering into a single litigation would be expensive and so of all companies that are threatened refuse to pay it would become a very expensive problem for the troll to continue “filing law suits”.

Levenson suggests taking the advice of Professor Colleen Chien, associate professor at Santa Clara University School of Law, and former White House senior advisor, intellectual property and innovation, at the Office of Science and Technology Policy, professor Chien suggests “doing nothing”. She recommends “taking any letters claiming infringement and simply filing them”. Levenson further advises contacting an “Intellectual Property Lawyer for advice only”.

The preference would be to pursue “invalidation of the patents that trolls attempt to monetize”, but this can only be done by discovering the existence of “Prior Art” which was not submitted to the US Patent and Trademark Office (USPTO), “but should have been at the time of patent application”.

Ending his article, Professor Levenson said that businesses should be aware of Prior Art discovery like that in California Polytechnic State University, and that they should start their own collections as that would demonstrate that the “technology “taught” in the patents in question is not new but obvious to a person of ordinary skill in the field”.



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