Whose Patent Are You Infringing?

Whose Patent Are You Infringing?
Jim Workman, Assistant Vice President; and
Dr. Mark Bohan, Vice President, Technology and Research, Printing Industries of America

What Is a “Patent Troll”?

The term Patent Troll (patent assertion entity) describes a company who obtains patents primarily to pursue license fees rather than to use or develop the technology itself or transfer it to other firms. Patent Trolls, in order to obtain fees, resort to intimidation by threatening to sue – or actually suing – in effort to force settlements.

Hundreds of print executives opened letters this year to discover their companies were being accused of infringement patents. Owners of patent covering QR codes, scanning, computer-to-plate workflow, and on-line ordering all approached printers demanding licensing fees.

What Is Happening Now?

Printing Industries of America has a list of eight patent owners (not all fit the definition of trolls) that are seeking licensing fees from printers. CLICK HERE

All follow a similar path by first sending a letter, usually from an attorney, alleging infringement of a specific technology used in the printer’s administration, production, and etc. The letter will briefly explain/describe the patents and technology in question and offers to provide a license for continued use (the fee is usually stated and the threat of a lawsuit will be stated or implied).

Advice from Printing Industries of America

Respond to the initial letter. Not responding doesn’t protect you from a lawsuit and potentially makes it more likely you will be labeled a willful violator and face stiffer penalties. Do not throw the correspondence away!

Retain an attorney, at least before a lawsuit is filed, to provide infringement opinion. An opinion of non-infringement before a suit is filed will provide a defense against a claim of willful infringement.

In your written response, let the troll and its attorney know your firm respects the rights of the patent owners, but you won’t consider negotiating a license until you know what patent claims you are accused of infringing upon. Request a chart comparing the claims in the patent with your technology that is accused of infringing upon the patent. Upon receiving information you will be able to conduct your own assessment. If the deadline date for responding to the letter is close, indicate you need more time. Patent owners are supposed to have done due diligence and not accuse companies on scant evidence, but many don’t.

If you can get the troll to identify the patent claim alleged to being infringed upon, your attorney may be able to present a claim chart showing non-infringement. This can be enough to deter the troll from filing suit.

Let your suppliers of equipment and software relevant to the patent know about the accusation. Request their support to review the patent and offer an opinion on whether their equipment is causing you to infringe. Check your purchase contracts to see if the suppliers agreed to indemnify you for patent infringement lawsuits.

Alert your local affiliate and Printing Industries of America to learn how widespread the accusations are and possibly find out how other similarly accused companies have responded. Knowing which other companies are in the same predicament may present an opportunity to join them in a common defense to lawsuits. A common defense can save money by sharing legal expenses.

Continue to insist the troll and attorney provide you with evidence of infringement. Without that evidence, you will consider it a frivolous accusation and, if sued, seek to have the suit dismissed with an award of attorney’s fees and sanctions ordered against the attorney who brought the lawsuit.

If a claim chart is not provided, go to www.google.com/patents search by patent number, and read the patent claims. While you can argue it is the patent owner’s responsibility to show you how you’re infringing, you’re wise to evaluate it yourself. If you conclude no infringement is taking place, explain why in writing and request the accusation be withdrawn.

Other options are also available. This article was published by Printing Industries of America and to read the complete article, please visit www.printing.org/patents.