As the printing industry and courts stymie the patent trolls, they remain patently persistent.
It wasn’t so long ago that the imaging industry found itself under attack by patent trolls. (A patent troll is a company or individual having nothing to do with developing and distributing the technology that patents teach, but buys-up patents for the sole purpose of exploiting individuals or companies using technology that even remotely relates to a patent’s claims.) Not only were the OEMs under attack, so were dealers selling the technology as were users of the technology. It was an alarming situation with patent trolls demanding money from manufacturers, resellers, and users under the guise of patent infringement for various capabilities associated with the MFP or printing device.
As the legal threats proliferated, BTA and BTA General Counsel Bob Goldberg along with various OEMs and the leasing companies met to raise awareness by discussing the threat and courses of action.
It was a winning strategy as Goldberg brought this to the attention of various State legislatures while BTA and many of the OEMs provided the dealer channel with recommendations for educating their customers as to what to do should they ever be approached by a patent troll. As Goldberg told me, “The trolls have been stymied by court decisions and legislation. Legitimate cases may continue, but not those just seeking to extort monies from parties that cannot afford to defend the claim.”
But patent trolls never rest and a recent White Paper by Dr. Harvey R. Levenson, Professor Emeritus and former Department Head of Graphic Communication at Cal Poly State University in San Luis Obispo, California, provides an update on two new cases of patent trolls—Shipping & Transit LLC and the Freeny Brothers—looking to extort money from OEMs who he said are “using standard technology common for doing day-to-day business in the printing and related industries.”
Over the years, Levenson has participated as an expert witness in various IP cases, mostly involving patents.
Levenson’s White Paper reveals that printing industry companies and OEMs have received robot-generated letters indicating that a “patent holder” believes that they are in violation of three patents, asking for $30,000 to settle the matter within 30 days. According to Levenson, the patents in question cover basic functions such as notifying customers that they have an incoming shipment via email.
He further reported that patent infringement allegations were filed against six OEMs.
Levenson’s research found that the alleged patent infringing products provide a variety of document processing and reproduction functions, such as document copying, printing, scanning, and/or faxing functions.
“All basic technology needed for our industry companies to do business and to remain in business,” wrote Levenson. “More specifically, the allegations are against companies that manufacture and sell wireless adapter units designed to be combined with the accused products to enable communication wirelessly with different types of wireless devices. These are devices such as smartphones, tablets, and laptop computers; devices that nearly all companies require for doing business.”
Levenson acknowledged the trolling is slowing down as the industry becomes more savvy about the threat, but the patent trolls are still out there.
“They’re opportunists looking to take advantage of companies that implement the technology that’s driven by software,” he said. “What they’re doing is buying up these patents and looking for people that are developing or using technology remotely related to what these patents teach.”
He added that the patent trolls are not interested in manufacturing these products, furthering the technology, or improving the industry.
“They’re interested in extorting money from innocent people [who are] using the technology to run their businesses,” he emphasized.
Threatening letters from patent trolls are intimidating because they come from law firms that represent the trolls.
Levenson shares a recent patent troll story, leaving the names out of it. A patent troll contacted a major corporation in the print industry asking for $2 million in license fees for them to continue using the technology. The corporation’s attorney responded, “no way.” The patent troll’s attorney comes back, but this time asks for $1 million. The corporation’s attorney said no again. The troll’s attorney remained persistent, lowering the figure until the corporation agreed to settle for a few thousand dollars simply to get the troll off their back.
“It was less than having the attorney deal with the situation,” observed Levenson. “They come in with a high amount and keep going down, down, until they get something. In many cases now they’re getting nothing because the defendant attorneys and defendants are learning not to give in and eventually they’ll go away. Unfortunately, over the past few years, there were some who actually paid a lot of money they didn’t have to out of fear they were going to lose their business or technology.”
More recently, on May 19, the U.S. District Court for the Eastern District of Texas, Marshall Division, dismissed a patent troll case by CTP Innovations, LLC v. Quad/Graphics, Inc., in what can be considered a victory for the printing industry.
“The plaintiff’s attorneys in these previous cases and in the Quad/Graphics case were unsuccessful in their demands for license fees to use technology common to some of the most basic equipment provided by OEMs and used by the printing industry’s service providers,” noted Levenson. “Let this be a lesson to other patent trolls attempting to extort funds from printing industry service providers and OEMs using equipment and software generic to the industry.”
The final lesson from Levenson for dealing with patent trolls can be found in his latest White Paper about the two aforementioned patent trolls: “Do not respond to demands or threats from either of these two patent trolls. Do not make any payments. Continue doing ‘business as usual.’ Band together as a team to pursue dismissal by the Courts.”
Patent Troll Seminar at Print 17
Levenson will present a free seminar for OEMs and print service providers producing or using software-driven imaging technology at Print 17 at McCormick Place in Chicago in the “Learning Experience Theatre” on September 11, 2017 from 12 p.m. to 12:50 p.m. Attendees will receive copies of his two White Papers, and besides Levenson, will also hear from attorney Nate St. Clair and from Joyce Vogt, an inventor named on the two patents in the CTP matter. They will share their experiences; help attendees better understand the problem and what to watch for, and offer advice on what to do if confronted by a patent troll.
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