Strategic responses to patent trolls

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

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


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”.

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