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What do you recommend to do to defend yourself from a patent troll lawsuit?

发布时间:2011.08.10 上海市查看:3478 评论:1

I wonder if you guys have ever employed Litigation Avoidance, a paid service created by Article One Partners, that uses crowdsourcing, a social media technique involving massive collaboration over the Web, to compare notes and find evidence about patents, with the goal of identifying "prior art," or a previous discovery, that could help nullify a patent that has been filed with the U.S.P.T.O. So-called patent trolls (nonpracticing entities) buy up thousands of patents that are used as the basis of lawsuits against companies that such companies claim have infringed on its patents and therefore owe it damages or license fees.


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  • 第1楼
    Here is an example that I want to share with all of you:

    I had this experience as in-house counsel for a consumer products manufacturer. A patent troll came out of the woodwork and asserted that she owned the rights to any and all methods of highlighting hair. The troll hired a big name attorney and sued 24 industry leaders, including my client.

    The case dropped in my lap, I did a lot of legal research and consulted with the head of R&D (to explain the chemical jargon). I did threaten patent invalidation, but I also prepared for litigation. I got admitted pro hac vice in the WD of Wisconsin (the patent "rocket docket" where the case was filed), and I let the opposing attorney know in no uncertain terms that he would see me in court and it wouldn't cost my client any more than my salary, a plane ticket, and a hotel room. My client authorized me to spend only $5,000 to settle for nuisance value, and the plaintiff was not willing to budge below $500,000 to settle, so game on.

    In one conference call with opposing counsel, he asserted that his client had a "pioneer patent" and was entitled to sue the entire industry. Due to my research, I was able to immediately site to the Texas Instruments case in which the pocket calculator was not even considered a pioneer patent. I yelled (again, subtlety not being one of my finer qualities) and said that his client does not have a pioneer patent to the method of highlighting hair. Preposterous. Ridiculous. He hung-up on me.

    I had a 12(b)(6) Motion to Dismiss ready to go. I waited until the 11th hour before hitting "send" on my e-file court documents. Then, I got a call from opposing counsel, not more than 15 minutes before my deadline to file. They would dismiss us from the case without any contingency. No settlement agreement, no payment, just voluntarily dismissed WITH PREJUDICE. It was a seriously anticlimactic ending for me as an attorney, but it was the best outcome possible for my client.

    So, my suggestion in this situation is : 1. Hire an in-house attorney who will litigate; 2. Do not assume you need to pay nuisance value or take a license; and 3. Stand your ground if you are right.

    2011/08/10 14:26 [来自上海市]

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