Breaking the Cycle – Stand Up and Fight Patent Trolls

The term “patent troll” conjures up all kinds of images and ideas, but there is no universally accepted definition of who is a patent troll. This has lead many to recognize that, by and large, if you are being sued for patent infringement, it will likely be your belief that you are being sued by a patent troll. But obviously not everyone who sues for patent infringement is a patent troll, and neither is every plaintiff who loses a patent infringement lawsuit. There will be reasonable assertions that ultimately result in a defendant prevailing for a variety of reasons. Thus, a patent troll really should be identified by litigation tactics. A patent troll is one who is abusing the judicial process and leveraging judicial inefficiencies to obtain unwarranted settlement payments.

In determining whether one is a patent troll, I don’t think it should matter how the patents were acquired. If there is infringement of substantial patents, then there should be recourse. Having said that, it would be naive to pretend that there is not real evil lurking in the patent infringement realm. Stories of $500 to $1,000 offers to settle and avoid patent infringement litigation that would cost millions of dollars to defend abound. Some courts have openly acknowledged what feels like “extortion-like” activity. See Indicia of Extortion and Troll Turning Point? 

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Jay Walker Licensing Program Takes Shape

Jay Walker (left) and Jon Ellenthal (right)

Jay Walker has been in the news over the last several months. But it hasn’t been because of his large patent portfolio, or as the result of his status as the founder of Priceline.com. Instead, it is as the result of a new endeavor he is behind called Patent Properties. But what is Patent Properties?

The company develops and commercializes its own portfolio of assets and is offering a licensing solution for the mass market of patent owners and users. It was formed in September 2013 with the completed merger of GlobalOptions Group, Inc. and Walker Digital Holdings, LLC, which was a wholly owned subsidiary of Walker Digital, LLC. Initially, the newly formed entity consisted of the patent portfolio created by Walker Digital, which included 379 granted patents, 93 pending patent applications, intellectual property in development and 19 litigation matters.

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USPTO Seeks Comment on Patent Pendency

The United States Patent and Trademark Office (USPTO) is seeking public input to determine the optimal first action and total pendency target levels for patents. Currently, the USPTO targets of 10 months on average to a first office action, and an average of 20 months for total pendency were established with stakeholder input in the previous USPTO 2010–2015 Strategic Plan. These targets have guided the USPTO in making significant reductions to pendency over the past four years, specifically: (1) A 30% reduction in average first action pendency, from an average first action pendency of 25.7 months in fiscal year 2010 to the current average first action pendency of 18.1 months; and (2) a 20% reduction in average total pendency, from an average total pendency of 35.3 months in FY 2010 to the current average total pendency of 28.1 months.

The USPTO is inviting the public to submit comments on issues related to patent application pendency. The USPTO is specifically seeking comments on the following questions:

1. Are the current targets of 10 month average first action patent pendency and 20 month average total patent pendency the right agency strategic targets for the USPTO, stakeholders, and the public at large? If not, what are the appropriate average first action patent pendency and average total patent pendency targets, and what is the supporting rationale for different targets?

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USPTO Proposes Electronic Sharing with Foreign Offices

The electronic sharing of information and documents between intellectual property (IP) offices is critical for increasing the efficiency and quality of patent examination worldwide. Due to the confidential nature of unpublished U.S. patent applications, set forth in 35 U.S.C. 122, an applicant must provide the United States Patent and Trademark Office (USPTO) written authority in accordance with 37 CFR 1.14 to grant a foreign IP office access to an unpublished U.S. patent application. With this grant of authority, the Office may electronically provide the U.S. patent application-as-filed or the requested file contents, such as information and documents, from the U.S. patent application to the foreign IP office on behalf of the applicant.

To facilitate electronic file sharing between IP offices, such as the sharing relating to the priority document exchange (PDX) program and the program by which U.S. search results are delivered to the European Patent Office (EPO), USPTO is proposing to amend its rules of practice to include a specific provision by which an applicant can authorize the USPTO to give a foreign IP office access to all or part of the file contents of an unpublished U.S. patent application. This would satisfy a requirement for information imposed on a counterpart application filed with the foreign intellectual property office.

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USPTO Seeks Comment on Post Grant Trial Proceedings

The America Invents Act (AIA) provided for a variety of new administrative trial proceedings, including: (1) Inter partes review; (2) post-grant review; (3) covered business method patents review; and (4) derivation proceedings. To bring these new proceedings into being, the USPTO issued a number of final rules and a trial practice guide in August and September of 2012.

During the rulemaking to implement the administrative trial provisions of the AIA, the USPTO held roundtable discussions in a number of cities across the country. The USPTO at that time committed to revisiting the rules and practice guide once the Board and public had operated under the rules and practice guide for some period and had gained experience with the new administrative trial proceedings. With nearly three years of experience with these new proceedings, the time has now come for the USPTO to revisit the rules.

The USPTO began the process of revisiting the AIA administrative trial proceeding rules and trial practice guide by engaging in a nationwide listening tour. The USPTO conducted a series of eight roundtables in April and May of 2014, in Alexandria, New York City, Chicago, Detroit, Silicon Valley, Seattle, Dallas, and Denver, to share information concerning the AIA administrative trial proceedings and obtain public feedback on these proceedings.

The USPTO is now ready to take the next steps and is seeking public comment on all aspects of the new administrative trial proceedings, including the administrative trial proceeding rules and trial practice guide. Written comments must be received on or before September 16, 2014, and should be sent via e-mail to TrialsRFC2014@ uspto.gov. Electronic comments submitted in plain text are preferred.

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