Expert witnesses play a big role in most - if not all - of the court cases that get reported here.
IMS ExpertServices
is a law firm specializing in expert witnesses. Every month or so they send me an article about specific court cases
that could be of interest to RF Cafe visitors. This particular installment is titled, "Patent
Trolls on Trial?," and questions whether patent accumulation companies. - Kirt B.
Reprinted with permission.
Patent Trolls on Trial?
by Maggie Tamburro Posted by Maggie Tamburro
on 2012/08/14
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Lately many have taken a stand against the nefariously labeled patent troll. Rarely have we witnessed
such media vitriol and legal backlash targeted at those some criticize for asserting what is actually a perfectly
legal, proprietary business interest. And perhaps not without good reason – according to a much publicized
study out of Boston University School of Law, patent trolls allegedly cost the U.S. economy
$29 billion per year.
Emblematic of the mounting criticism is an August 1, 2012 bill, introduced to the U.S. House by Rep. Peter DeFazio,
which seeks to curb allegedly frivolous
patent litigation by the patent troll by making the loser of such a suit potentially liable for the defendant's
litigation costs. Called the "Saving High-Tech Innovators from Egregious Legal Disputes of 2012" (SHIELD), the
bill proposes to amend 35
U.S.C. chapter 29 to allow "the recovery of computer hardware and software patent litigation costs in cases
where the court makes a determination that the claimant did not have a reasonable likelihood of succeeding, and for
other purposes." Are All Patent Trolls Inherently Evil? Patent troll is
a derogatory label often used to describe an entity that enforces patents it owns against alleged infringers in a
manner considered aggressive and opportunistic, without intent to manufacture or produce the product involved.
Often called non-practicing entities (NPEs), patent trolls have sparked much debate and been criticized for bringing
meritless infringement suits against producing companies – thereby encouraging the accused infringer to settle or
risk losing substantial investment made in the associated product. Which caused us to consider: When
does a bona fide patent aggregator cross the line and become a so-called nefarious patent troll? Are some licensing
activities more equal than others? And haven't many companies been doing this for years – aggregating, licensing
and asserting patents associated with areas other than that which is the company's primary practice? Is a troll
someone who practices none of its patents? If no, what ratio between licensing and practicing should be considered
reasonable? While some entities seem to exist for the sole purpose of lying in wait to bring infringement claims
against producing businesses, on closer inspection, not all so-called patent trolls are created equal. Perhaps we
should abandon the name-calling altogether, as the line between a patent troll, NPE, (or even a semi-practicing entity)
seeking to enforce its patents becomes fuzzier. For example, according to a recent article in the
Wall Street
Journal, IBM has been in the business of licensing and monetizing its
ever-expanding patent portfolio
for a decade. At what point does a company that holds and asserts patents but doesn't practice all of the associated
products earn the dubious distinction of patent troll? In Defense of the Big Bad Troll
Some entities which aggregate and monetize patents actually contribute to innovation, pioneering ways to consolidate
patents in pursuit of inventing. These entities must find novel ways to navigate a malfunctioning system
that stifles innovation, not to mention makes it virtually impossible for the independent innovator to exist. Much
has been written on the broken U.S. patent system, so we will spare the reader the details here. Suffice it
to say that according to some sources, an inventor has only a
3% chance of generating more commercial
revenue than obtaining the patent actually costs. Maybe some alleged patent trolls are able to offer a venue
for pursuing a different path to a less costly, more "innovative" way to invent. As with any business for commercial
profit, there are always those in the system who will attempt to subvert it in bad faith to the commercial disadvantage
of others. But maybe it's time to rethink the way we look at the issue and bring our thinking (and resulting
labels) in line with the realities and modern business practices. Not all Patent Trolls are Inherently
Evil As Juliet famously declared, "A rose by any other name would smell as sweet…" Many of the
companies decrying the opportunistic tactics of patent trolls are actively engaged in doing the same thing under different
auspices. For example, the
Wall Street Journal recently reported that Kodak has 1100 patents up for sale, with no shortage of the largest
and most powerful U.S. corporate giants lined up to buy them. Would you consider Google a patent troll?
How about Apple? Some of the most respected technological names in the world are no strangers to aggregation
and monetization of patents. And why should they be? After all, intellectual property is a legitimate
commercial asset and a protectable, legally recognized property right – and therefore arguably should be fair game
in the commercial marketplace. Other instances of patent aggregation and monetization are out there –
although you might have to look hard to find them. Companies don't seem keen on discussing their patent aggregating
tactics and as far as we know aren't required to disclose their patent portfolio. According to the
Wall Street
Journal, last year five large and well known companies spent over $4.5 billion dollars buying up 6,000 patents,
which they combined and placed into a separate business entity. Patent aggregation in an effort
to keep patents out of the hands of competitors is not a new concept. Although it may be a different side of
the same coin, the concept of aggregating patents defensively is closely intertwined to aggregating them for offensive
or licensing purposes, and serves yet another legitimate business interest. But when does defensive aggregation
turn into acceptable monetization and for-profit licensing? Isn't that an inevitable and legitimate result?
Interestingly, even attorneys who used to defend some of the biggest corporations against patent infringement
are reportedly jumping ship and
switching sides, forming their own NPEs. As the saying goes, if you can't beat ‘em, join ‘em. Further,
consider a process practiced by governments, leading universities, and research institutions across the country: Technology
transfer. Technology transfer encompasses the identification, aggregation, and development of burgeoning technologies
that have potential for commercialization. Some estimate that there are
230 U.S. universities and nonprofit research
institutions engaged in technology transfer today, thanks in part to the
Bayh-Dole Act of 1980, which gave universities
control over their licensing activities and inventions. The Association of University Technology Managers (AUTM)
provides online
Nine Points to Consider in Licensing University Technology. The pamphlet makes sure to distinguish those
which "add value" by aggregation of patents from the so-called patent troll, who allegedly "extracts payments in the
absence of any enhancement to the licensed technology." Patent Troll Redefined Perhaps
we need to concentrate our efforts on how we think about what defines a patent troll and what kinds of licensing and
patent asserting practices are acceptable, as opposed to those that clearly cross the line. Some innovators
have come up with ideas for redefining the entire patent marketplace, such as creating a patent financial exchange
like IPX International. Do you think we should redefine
the term patent troll? This article was originally published in
BullsEye, an expert witness and litigation news
blog published by IMS ExpertServices. Voted "Best Expert Witness Provider" in the 2012 Best of The National Law Journal
survey, IMS ExpertServices is a full-service expert witness
and litigation consultant search firm. Subscribe
to BullsEye to receive weekly updates.
This article was originally published in
BullsEye, a newsletter distributed
by IMS ExpertServices™. IMS Expert Services is the
premier expert witness search firm in the legal industry,
focused exclusively on providing custom expert witness searches to attorneys. To read this and other legal industry
BullsEye publications, please
visit IMS Expert Services' recent articles. For your next expert witness search, call us at 877-838-8464 or visit
our website.
Posted 8/21/2012
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