Trolls/NPEs with whom M&G has experience
Merchant & Gould is regularly retained to represent its clients nation-wide against trolls/NPEs. Through these engagements M&G has developed a deep knowledge about certain trolls.
I. NPEs with whom M&G is/has litigating/ed.
TQP (113) – encrypted data system
Katz (92) - variety
Webvention (72) – hover link
Main Hastings (68) – variety
Landmark Technology LLC (61) – web sales
Lodsys (46) – web question feedback
VTran Media (32) – interactive TV
Innovatio IP Ventures (34) – mesh network wifi
eTagz (34) – CD or DVD on or part of a hang tag
Phoenix Licensing (24) – financial products
Select Retrieval (23) – web links
Autoscribe/Pollin (18) – payment systems
Automated Facilities (13) - MPEG
PPS Data (13) – medical billing
Acacia Research (12 - DJs) – microphone array
Kelora Systems (10) – guided internet search
Reshare (11) – geographic based web sales
Commercial Recovery Corp. (CRC) (10) – collection system
Alliacense (7) – computer chips
HVAC Modulation (Acacia) (5) – HVAC
Endotach (Acacia) (5) – medical device
Bedrock Computer (2) – computer storage
Precision Links (2) – tie down strap
SelfLink (1) – event alarm system
CML&J (1) – beverage container ends
Sorenson Research & Tools (1) -- tools
II. Other most active recent NPEs.
Pragmatus Telecom (Pragmatus) (91) – call center/customer help
The Tawnsaura Group (83) – nutrition products
NovelPoint (84) – automated vehicle (fleet) tracking
Walker Digital (49) – online sales (substitution of product)
DietGoal (42) – computerized food database
PJC Logistics (45) – vehicle tracking
Graphics Properties (32) – “supercomputer”
PI-Net (29) – live two-way online transactions
McRo (31) – animated characters
FastVDO (27) -- video
Eclipse IP (32) – vehicle notification system
Wi-Lan (39) – wireless lan
Round Rock (22) – memory data storage
Transdata (18) – utility power
Peschke Map (18) – digital maps
Gametek (16) – computer games
Clouding IP (15) – manipulation of information for mobile devices
ORG Structure Innovations (13) – data organization
Infinity Computer (14) – fax/scanner with PC
DSL patents and Cruise Control (16)
Infinite Data (9) – message passing system
Innovative Communications (9) – voice and data streams
Interface IP Holdings (14) – drop down menu
Trans Video Electronics Ltd. (9) – video distribution
AIP Acquisition (8) – callback system
Arczar (8) – computer visual system.
Light Transformation Technologies LLC (5) – lighting systems
Vehicle cruise control
Uniloc Luxembourg S.A. (52) – online authentication
MacroSolve, Inc. (45) – Online business methods (e.g., internet questionnaires)
CDD Technologies, LLC (12) – graphical user interfaces
Cruise Control Technologies LLC (12) – Vehicle Speed
LifePort Sciences LLC (4) - Endovascular grafting systems
Voice Integration Technologies (4) – Voicemail Services
NPE Love Letters: Best Practices and Important Considerations
The First Step - Should You Respond?
- Conduct an internal investigation.
- What products are affected?
- How much money is at stake?
- Get the right decision makers together to discuss the strengths of the accusations and their impact on your business.
- Remember there is no duty to respond – NPEs often contact many companies and may forget about you.
Take Internal Action To Address The Patent
- Determine if you can redesign your product to be clearly non-infringing.
- Analyze whether getting an opinion of counsel is a sufficient response.
- Consider whether you need a “document hold” notice to preserve evidence.
Research Your Adversary
- Study the NPE’s company history and assets.
- A newer, less funded NPE may be looking for a quick settlement at a lower amount.
- An older, more-established NPE may be seeking a larger amount.
- Are there other patents in the NPE’s portfolio that your company wants to address now?
- What is the litigation track record for these patents?
- Have the claims of the patents been construed?
- Does the NPE always settle before trial?
- Reach out to your friends at other companies or law firms to get competitive intelligence on the NPE.
- Study the quality and track record of the NPE’s selected counsel.
- Is the NPE a major client of that firm? Their only client?
- Do the attorneys typically charge hourly or on contingency?
What Can You Learn From Prior Proceedings?
- Study prior litigation to get an idea of the strength of the NPE’s case (prior claim constructions, prior infringement and invalidity arguments, etc.)
- Review the prosecution of the patent(s), including any reexaminations, to assess invalidity arguments and potential prosecution history estoppel.
- A patent that has not been challenged in court or at the PTO may have undiscovered vulnerabilities.
If You Respond, Get More Information
- Request more information and time to evaluate.
- Ask for an identification of all infringing products and an infringement claim chart.
- Get prior licensing information.
- Affirm the fact that your company takes IP seriously.
Keep Your Discussions Confidential
- If the NPE wants to engage in discussions, enter into a confidentiality agreement that ensures the discussions are private and you can get the information you need.
- Take precautions in the confidentiality agreement to make sure your discussions can’t be used in litigation.
Consider A Declaratory Judgment Action
- A declaratory judgment allows a company to pick the forum that is the best fit.
- Speed is valuable to an NPE, so research the time-to-trial in various jurisdictions.
- Determine whether you prefer a forum that is more likely to hold an early Markman hearing or entertain early summary judgment motions.
The NPE Files Litigation – What Are Your Next Steps?
- Assess the business case for defending the litigation.
- Determine whether someone has a duty to indemnify your company.
- Focus your target on the NPE’s most valuable assets by attacking the infringement, validity or enforceability of the patent(s).
- Research a transfer of venue (out of jurisdictions like the Eastern District of Texas) if the defendant doesn’t have significant ties to the venue.
Factors To Consider In NPE Litigation
- Evaluate whether your company or someone else has the biggest stake in the litigation and wants to take the lead.
- Consider whether it makes sense to join a joint defense group and share fees, costs and ideas.
- Schedule the case wisely -- when do you want claim construction, summary judgment, trial?
- Test ownership and assignment rights to the patent(s).
Take The Patent(s) Back To The PTO
- Initiate proceedings before the PTO to reassess the validity of the patent(s).
- Post-Grant Review
- Inter Partes Review
- Ex Parte Reexamination
- A court might stay the litigation while the patents are before the PTO, especially if it is early in the case.
- The risks to a patentee whose patent is in PTO proceedings may drive a resolution of the case.
PTO Proceedings Under The America Invents Act
- Post-grant review is available during the nine months after a patent’s issuance or reissuance.
- Can use any grounds to challenge patent validity.
- Inter partes review is available after the later of: (1) nine months from patent issuance or reissuance or (2) termination of post-grant review.
- Can use patents or printed publications to challenge patent validity.
- Ex parte reexamination continues in the same form.
Is Going To The PTO The Right Option?
- PTO proceedings carry risks for defendant(s) and should be used carefully.
- Patents might be “washed” if they make it out of the PTO proceedings.
- Defendants may be estopped in litigation from challenging patent claims on invalidity grounds that were or could have been raised in the course of an inter partes review.