As I previously posted, the Nebraska Attorney General’s Office issued a cease and desist letter barring any new patent infringement actions in Nebraska to a law firm that has a history of representing a so-called “patent troll” against Nebraska-based businesses. Last week, it was reported that Activision TV filed suit in U.S. District Court in Omaha over the AG’s ability to restrict the law firm’s patent enforcement activities within the state. Activision allegedly wants to retain the law firm to litigate a patent infringement action against Lincoln-based, Pinnacle Bank and claims that the Nebraska AG overstepped its authority. The Nebraska AG previously reported that the law firm was the subject of a prior investigation. Thus, it will be hard pressed to back down from the fight. It will be interesting to see how the Court rules given that the AG’s Office was acting under its authority to investigate and protect its consumers.
In what has been described as a “first of its kind” settlement, a so-called patent troll, MPHJ Technology Investments, LLC (“MPHJ”), has allegedly agreed to an “assurance of discontinuance” with the Minnesota Attorney General’s Office regarding its patent enforcement efforts in the State of Minnesota. Pursuant to the agreement, MPHJ has agreed to “cease its patent enforcement campaign” in Minnesota and not resume such activities without the AG’s consent. Further, MPHJ cannot assign the patents-at-issue to any third party who does not agree to be bound by such terms. The settlement was allegedly the result of investigations stemming from mass mailings threatening patent infringement against several small businesses in Minnesota. Interestingly, this is the same law firm and patent troll that the Attorney Generals’ Offices in Vermont and Nebraska dealt with over the last year. The states are clearly sending a message to patent trolls and to those law firms that represent them. When I worked at the Federal Trade Commission many years ago, the state Attorney Generals’ Offices worked hard to coordinate their enforcement efforts. It seems as though they are even more in sync today. As I have previously suggested, if your client receives what appears to be a baseless, mass-mailed cease and desist letter, it may want to consult the Attorney General’s Office within your state.
On Wednesday, the Vermont Attorney General’s Office brought suit against an alleged patent troll, MPHJ Technology Investments, LLC, for violation of Vermont’s Consumer Protection Act. The Vermont AG claims that the troll engaged in “unfair and deceptive acts” by sending numerous, threatening letters via a host of shell companies to small businesses and not-for-profit organizations in Vermont. The Defendant claims to have a patent on the process of scanning documents and attaching them to email via a network. At first glance, the suit complains of, among other things, tactics that are fairly commonplace in this arena:
- threatening litigation when the Defendant was neither prepared or likely to bring a litigation;
- targeting small businesses that were unlikely to have the resources to fight patent-litigation; and
- sending letters threatening infringement without independent evidence of infringement.
- Defendant’s licensing program had received a positive response from the business community;
- Many or most businesses were interested in promptly purchasing a license from Defendant;
- The fair price of a license was $900-$1200 per employee (when the average license fee was under $900 in total);
- The shell companies had exclusive enforcement rights; and
- Defendant would sue the target business if it did not respond within two weeks (when Defendant and/or its shell companies had never sued anyone anywhere in the U.S., much less in Vermont).
The America Invents Act significantly expanded the “Prior Use” defense under 35 U.S.C. § 273 to patent infringement. Prior thereto, the defense was limited to use against claims of business method patents. Now, a litigant may assert this affirmative defense if it commercially used, in good faith, a process, machine, manufacture, or composition of matter that is asserted to infringe the patent-at-issue. While this sounds good on paper, there is a catch. If it is shown that a defendant failed to have a “reasonable” basis for asserting this defense, the “court shall find the case exceptional for the purpose of awarding attorneys’ fees under section 285.” 35 U.S.C. § 273(f)(emphasis added). The problem is that the Courts have failed to address what “reasonable” means. Thus, companies facing patent infringement claims must decide whether it’s worth the risk. If they don’t produce enough information to sustain the defense, they might have to pay the patentee’s attorneys’ fees- a remedy generally available only in instances of willful infringement.
It has been reported that Lodsys has also pursued Android app developers over in app purchase technology. Such technology allows for a wide range of content (e.g., virtual content, such as additional levels, etc.) to be sold within the application.