Patent Trolls – Patent Settlement Strategy
A Patent troll is a derogatory term used to describe un-scrupulous patent assertion entities (PAEs). PAEs buy and license patents. Patent trolls use deception and un-fair practices to monetize otherwise weak and worthless patents. A common tactic of patent trolls is to target retailers with costly litigation to coerce them into a settlement for less than the cost using a demand letter or PAE suit.
Recently, there have been increasing allegations by technology companies and others that the patent system is impeding business development and innovation with excessively costly suits based on low value patents. In November 2014, the Federal Trade Commission barred MPHJ Technology Investments LLC and its law firm from making deceptive representations when asserting patent rights.
The Knowledge Group has assembled a panel of key thought leaders who will review and discuss Patent Trolls and Patent Settlement Strategies. The speakers will offer practices in developing and implementing an effective and strategy for settlement of patent suits.
Key issues include that will be covered in this course are:
- The Patent Assertion Entity - An Overview
- Facing Patent Trolls and Defense
- Patent Wars
- Non-Infringement, Invalidity, and Indemnification
- Patent System on Intellectual Property System
- Effective Policies and Supports on Patents
- Recent Trends
Baker & McKenzie LLP
- It is important to have a well-thought-out, firm and consistent policy in how to handle patent troll claims.
- Will you seek quick settlements in case of nuisance payment settlement demands?
- Will you fight patent troll claims through litigation? How far will you go?
- Do you need or want to develop a “reputation” for how you handle patent troll claims?
- It is vital to conduct pre-negotiation due diligence on the Troll and where you fit in its patent assertion program.
- Has the troll attempt to enforce the asserted patent(s) against others in your industry or other industries?
- What is the history behind the asserted patent(s)?
- What type of troll is it and who is representing the troll?
- What kind of licensing program does the troll have?
- What is it like to litigate against the troll?
- Are the patent(s) related to any technical standards and subject to FRAND obligations?
- It is often helpful to highlight the change tide in the patent law.
- The high bar for obtaining injunctive reliefs
- More invalidation under Alice
- More stringent review of damages calculations based on the value of the patented invention.
- Notice / Marking Requirements
- Availability of IPR Proceedings and Stay Motions
- Motions to Transfer
- It may be important to show that you are willing to execute on the defense strategies taking advantage of such developments
- So what is your “Third Party IP Policy” with respect to troll claims?
- Who is your counsel that will handle troll claims on a regular basis (e.g., an experienced advocate for your company with a strong reputation)?
- What is the “nuisance” payment for your company?
- What is your budget for resolving patent troll claims?
- Which troll claims will you litigate?
- Which partners can you rely on to assist you?
- Always evaluate the merits of any infringement claim
- Get an opinion of counsel regarding non-infringement
- If infringement is a concern, consider options:
- Do you have any indemnity?
- Alternative products/services
- Consider validity challenges
- At present, a good-faith belief in a patent’s invalidity is a defense to willfulness (but that could change)
- A strong showing of invalidity may reduce the NPEs willingness to fight because it threatens their overall enforcement strategy
- IPR v. declaratory judgment/summary judgment
- Joint defense groups can share the cost
- Settlement strategies
- Use the NPE’s prior settlements, if any exist, as a baseline
- Do you have a nuisance value?
- Balance cost of settlement v. cost of defense, both or the short term and the long term
- What is the cost of your shortest path to success?
- NPE insurance is available, but limited
Who Should Attend:
- Computer Forensic Specialists
- Digital Investigators
- eDiscovery Attorneys
- In-House Counsel likely for technology-based industry
- IT Security Officers
- Technology Attorneys
- Technology Firms and Others
- Privacy, Marketing, New Media Attorneys and Related Practice Areas
- Other Interested/Related Professionals
D. James Pak is a partner in the Washington, D.C. and San Francisco offices specializing in patent litigation and trials. He has acted as lead counsel in numerous complex patent cases, often involving joint defense and/or indemnification arrangements in the fields of wireless telecommunications, display devices, semiconductors, internet content delivery systems, medical devices, and automotive vehicles and components. He has been recognized as one of IAM Licensing 250 – The World’s Leading Patent and Technology Licensing Practitioners, selected by the IP Media Group.
D. James Pak is a partner in the Washington, D.C. and San Francisco offices specializing in patent litigation and trials. …
Mr. Seal specializes in patent litigation before federal appellate courts, federal district courts and the U.S. International Trade Commission. Mr. Seal has broad experience in all aspects of patent litigation, including conducting pre-filing diligence, developing litigation strategies, managing discovery, drafting motions and pleadings, taking and defending depositions, and presenting oral argument in jury trials, bench trials, and appeals.
For the past three years, Mr. Seal has been the managing attorney of Highbury Chapman LLC, where he specialized in patent litigation covering telecommunications and electronics. From 2001 to 2009, he was a patent litigator at Howrey LLP, where his experience covered a wide range of technologies, including wireless telecommunications, interactive voice response technology, business intelligence systems, electronic billing systems, memory integrated circuits, semiconductorbased accelerometers, and the design and manufacturing of golf balls.
Mr. Seal specializes in patent litigation before federal appellate courts, federal district courts and the U.S. International Trade Commission. Mr. …
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