10 Tips to Combat Patent Trolls

    Good morning, Habr! No, today it’s not about viruses, and not even about antiviruses. Today about trolls. Patent. As you may have heard, recently we (Kaspersky Lab) crushed another of them - Lodsys. The battle was epic in every sense: not only did the trial itself last for a year and a half, and the number of defendants exceeded 50, so we reached the finish line all alone, forcing the reptile to flee the battlefield, cowardly pursuing patents. So, given that this was far from the first ( and not the last ) battle, we can safely say that we have accumulated impressive experience in the fight against patent trolls of various stripes, sizes and degrees of arrogance. And I really want to share such experience with you.

    Therefore, we present to your attention 10 main recommendations that were formed during the fight against patent trolls in different countries. Yes, everyone has national characteristics, but on the whole, the pattern of their actions is quite the same, and the receivers fit into the standard with slight deviations. So, to one degree or another, advice will be useful to any trolley company, not necessarily large and not necessarily Russian. Except that the post turned out to be rather big, but we tried to tell about everything as interesting and as practical as possible. So…

    1. Main thing - keep calm

    ... You received a “letter of happiness” from the patent troll with a kind offer to unfasten a certain amount for a patent license. Oh yeah! You read this patent, you understand that this is complete garbage, the indignation is overwhelming, I want to erase these bloodsuckers into powder right now. And it is better to torment first, and then to powder. And it doesn’t even matter that the authors of the patent are the higher minds-graduates of such serious educational institutions as Harvard (although this is alarming). A little later, after the release of steam, the opposite effect may occur - apathy and do not care. And the first and second reactions are wrong: emotions will not only not help to cope with the troll, but will also jeopardize your business.

    “No panic!”, As the “Hitchhiker's Guide to the Galaxy” bequeathed to us. Trolls regularly roll up to tens of thousands of other developers in the hope that they will experience the same thing: start up, behave inappropriately and, in the end, will be forced to pay compensation. So the will into the fist, away emotions, we begin to think.

    Here is a real case. Once we were sent a claim from Italy for infringing a patent for one mobile technology. A "little cart" to the claim went a bunch of requirements from removing the product from sales to paying royalties. The patent is valid with very broad formulas. The Italian office is sounding the alarm!

    Do not beat anything! We carefully analyzed the patent, did a prior art search (this is information at the filing date of the application about known technical solutions in this area) and came to the question: how did they manage to patent the technology obvious at the filing date? They dug Italian law, and it turned out that the patent is not really a patent. The Italian office issued a “patent” without checking for novelty: only a formal examination was carried out. They, the Italians, had a bid system. That is, publications of the current level of technology were not taken into account, but they were. Hinting to the guys from Italy that they are deeply mistaken, running into us with pseudo-patents, they no longer received news from Italy.

    A noteworthy fact: a correspondence with us was conducted by a very respected professor in the field of intellectual property, who has his own law firms and, as it were, "does not understand" that he is not right.

    Conclusion: you can neither panic nor relax: both the troll are only at hand.

    2. Delve into complaints, ask questions and do not slow down

    If you have already received a whole claim chart detailing your violations, then we immediately proceed to tip number 3. If this is just a “letter of happiness”, then the next step is to try to figure out how the troll patent may intersect with your technology.

    At this stage, you can and should make the troll smash its head. For example, make a list of clarifying questions. And be 100% sure that the troll, in turn, will do the same: throw you questions. Remember: you (and they too) have no more than 30 days to respond. Some people think that if they don’t answer, the troll will lag behind. This also happens, but in reality you are digging a hole for yourself. If the case comes to court and the troll declares that he wanted to reach an amicable agreement, and the alleged offender behaved rudely and rudely, that is, ignored “heart-to-heart talk,” this would be a fat minus to the defendant: if the patent infringement is acknowledged, the defendant will can be recognized as a malicious violator, as he knew about the violation (he was informed in a letter of happiness).

    Yes, most importantly, correspondence is best done on paper, via courier delivery. Such correspondence can last for months, the main goal is to obtain from the troll clear and detailed explanations of how its patent may be violated, to force it to send a claim chart with an explanation of the terms. This stage gives you time to prepare, an understanding of what is happening and excludes from this process simple gop-stoppers who are simply trying to take “for fear” and cut down easy money. At the same time, it gives you protection in court (if any) from accusations of malice.

    And the troll can accuse you of malice for any reason. For example, on March 18, 2013, the Intellectual Ventures lawsuit was filed with a Delaware court against Symantec for infringement of several patents. It is noteworthy that in the statement of claim IV alleges a deliberate violation, referring to the presence in the Symantec patents of references to patents IV. Thus, Symantec knew or should have known about the existence of proprietary IV technologies, which, in their opinion, indicates a deliberate violation.

    Conclusion: you should carefully understand the incoming claims, be as meticulous as possible, correspond with paper letters and in no case ignore the troll's collision.

    3. Follow the non-infringement strategy.

    Here, as in the previous paragraph, you need to carefully study the essence of the patent, compare it with the essence of your technology, prepare clarifying questions (the more the better). Look at whom and how they used to pursue this patent, and how events developed in those cases, what ways the patent got into the hands of the troll, estimate the possible scenarios and the adjustment of protection methods. All these actions will allow you to find an understanding of which defense strategy to choose in the pre-trial settlement of the issue and what you have in the case of a court. Perhaps you simply reveal the disjunction of your technology with the patented. The non-infringement strategy is the best if you receive a fan mail of “letters of happiness”, which, by the way, is actively fought against.

    The real case. In our direction came several patent claims settled before the court. At the same time, our technology was so different from the patented one that it raised questions whether the troll was aware of what it was blaming us for.

    Conclusion: understanding the essence of the patent and finding similar claims against other companies may give a chance to use a non-infringement strategy.

    4. Follow the invalidity strategy

    Is everything clean in the presented patents? Look for contradictions in them, study the history of patent examinations, do patent and non-patent prior art searches. All this again will help to understand what to do in the event of a pre-trial resolution of the issue or already in court. Perhaps you will find killer prior-art and you yourself will threaten the troll. In the end, a patent may be invalidated by the so-called inequitable conduct. In general, this category includes all conscious or unconscious attempts to deceive, falsify and misrepresent facts related to a patent application, which may affect the decision to grant a patent.

    For example, one troll was deprived of a series of patents in the court for a very simple reason: not all authors were indicated when filing and granting a patent. Other causes of disability for this reason may be as follows:
    • Deliberate failure to provide prior art materials when filing a patent application;
    • Deliberate concealment of information about well-known publications in foreign languages, as well as translations of these publications, both full and partial;
    • Distortion of facts regarding patentability of an invention, including under oath.

    The real case. We had a case of a very long out-of-court proceeding with one well-known company on the technology for placing suspicious objects in quarantine, patented back in 1995. During the long correspondence, several scenarios of non-infringement and invalidity of patents were worked out, moreover, in several regions. While one of the scenarios was being worked out in the discussion (unlawful introduction of corrections into the text of the mother application and subsequent change of formulas in accordance with the changes), another alternative option was being worked out: search for prior art and publications questioning the novelty of the solution. By the time the decision was made to reexam the patent in the United States, and the reexamination lasted almost 10 years (!), We found this same prior art, while it fell perfectly on the examiner's argument “why should there be a patent?”

    What is important to note: alas, the process of invalidating a patent is not only very long, but also quite expensive - in the region of $ 500K.

    What else can be recommended in this context? In fact, you can write a doctorate on this topic with subsequent annual updates. All in one article does not fit. However, something can and should be mentioned. From the most accessible in every sense: look at the past of the author of the patent and its surroundings - what he did, what libraries he went to, what works he published. Indeed, for sure at Harvard School or in the Library of Congress there is something about this gifted creature that can be used in the process. For example, invite a teacher or fellow student to talk. Suddenly, one of them was lost from the authors of the patent. In such a happy case, we return to one of the important points: see above for points of disability due to inequitable conduct. It is also possible

    Conclusion: you need to try to find any clues that can lead to invalidation of the patent for one reason or another, but at the same time be prepared for the fact that this will take a lot of time and money.

    5. Follow the indemnification strategy

    There is another strategy for solving a problem that has fallen. It may turn out that the technology that attracted the attention of the troll is licensed from another company. If this is true, then the problem with the troll is not with you, but with the company that sold it and licensed it to you. The flip side of this strategy: you may be the target of an attack as a licensor, and your licensee will simply put his headache on you. In general, regardless of the side of the licensing relationship with partners, do not forget to properly formalize the relationship and write the indemnity clause (liability) for the violation of patent rights of third parties.

    Indemnity requests account for a good half of all patent claims. This is a feature of some Western companies: I received a complaint - write to all your partners something like “we license you something, therefore, in view of our court, we ask indemnity in accordance with the agreement between our companies”. Moreover, this “such and such” may not overlap with the patent at all, such as “maybe it’s a ride ... and if it doesn’t, then we’ll get a gratuitous analysis of the claim”.

    Sometimes it comes to a funny thing. The licensed partner, recognizing responsibility for the patent lawsuit after the settlement thereof, offers its partners to chip in and share the costs. HAHAHA ... No!

    Therefore, the conclusion:Trying to find an opportunity to shift responsibility from oneself to the licensor is not cowardice, but the right strategy; however, you should be prepared to receive a claim from the licensee yourself.

    6. Find out if you are immune to violation

    If patent A is licensed, say, Microsoft, then software that uses Windows functionality (covered by patent A) is immune to infringement of patent A.

    For example, in a recent Lodsys trial, we were accused of functional Live Chat on our sites. Live Chat is written in Java and licensed from Oracle. Oracle licensed Lodsys patents, therefore, by a court decision, we and many other defendants removed claims in this respect. However, it’s bad if your software is multi-platform: in this case, the described mechanism no longer works.

    Conclusion: It is necessary to carefully check whether you are using something that implies already licensed patents.

    7. Fight on your own and together

    “Yeah, you just have to reason - you have budgets and lawyers!” This is true. But for the same reason, trolls stick to us more often. If it comes to court, then the money will really be significant. For example, in our country, two cases against American trolls cost $ 2.5 million and $ 1 million, respectively. If you don’t have any money or expertise, don’t lose heart: the matter can be solved in another way.

    Contact other patent extortion entities (victims), agree on joint actions, hire a representative, hire a representative (not a very good choice, but for lack of fish, as they say ...). You can turn to public organizations like EFF or private non-profit activists who provide legal support against patent lawlessness. Be calm, confident, consistently and firmly uphold your point of view. Public opinion is on your side, and history knows many victories over trolls.

    But if you have money, you need to fight on your own. And there are several reasons. Firstly, the position on non-violation, most likely, will be different for everyone and for you it simply will not be applicable: the technologies are different for everyone. Secondly, how many defendants, there are so many opinions, and reaching a consensus is not so easy, almost like in the Duma of the second convocation. Thirdly, it’s not a fact that a company hired by common efforts (for example, to search for prior art for invalidity) will give the desired result. We have already done this in the case against IPAT. A telephone conference with several dozens of lawyers turned into a circus with horses: it took 20-25 minutes to “hello, I’m so-and-so”, then all the fusses and after an hour and a half, there were hints of some sound ideas, and even if a moderator was appointed on time. As a result, they hired an English company that worked its way out, but ... found nothing. Then we decided to work out the issue on our own and still succeeded! We found two respected IT gurus who not only supported our position, but also gave very vivid examples for our proposed IPAT invalidation scheme. Vin!

    Conclusion: to fight independently is more effective, although more expensive; in case of lack of money and / or strength, it is better to fight with someone's support.

    8. Be honest, respectful and log EVERYTHING

    Yeah, the case nevertheless came to court and you received a subpoena. In this case, you exactly followed the recommendations above and your "guns are loaded." Remember the tip number 1 ("No panic!") And proceed to the next stage of the operation.

    You are waiting for the discovery stage, testimony and claim-construction. Let's say right away: you need to disclose everything as it is. If it comes up that you concealed something, didn’t provide it on time, started contradicting yourself - the troll will intercede against you, including showing the court that since you are so bad, then let him “write down a fine immediately”, that is plead guilty.

    Interrogations are a separate song. You must always tell the truth and only the truth and clearly answer questions. Remember that any inaccuracy or confusion will necessarily be interpreted and used against you. Another thing is that before each specific answer to a specific question, you can always add information that will be interpreted in your favor.

    Claim-construction means the definition of terms. Very difficult stage. If you have chosen a position for non-violation, then the terms need to be agreed narrowly. If invalidity is widespread. In any case, all your preparatory work described in the paragraphs above should allow you to understand exactly which interpretation of the terms works in your favor and push it in court. This can be done both independently and in a group of respondents. The result will be a document,an example of which can be taken from the site of the same Lodsys . As you can see, Lodsys defended his interpretation, a group of respondents, and we had our own position.

    Further. You must show the court respect, openness and readiness to close this terrible business to hell with a dog as soon as possible. Gone are the days when even the Texas court, for one of its well-known reasons, sympathized with the trolls. Despite the impartiality required, judges are also people who also read the Internet and are well acquainted with the news and analytical background of patent trollism. Help the court make a fair decision.

    Be prepared that the trolls will do everything to complicate this task. As in the quest you will be given complex, contradictory and absurd tasks for a while (“well, provide us with your source code of all versions, as well as all the documentation, with rough notes that accompanied the development”), throw tons of pieces of paper, bomb the court with various motions, provoke hysteria, etc. - everything to put before the court a malicious deviator and an arrogant boor. Treat it like a game and don’t take it to heart. Understanding the actions and motivations of trolls will keep you cool and listen to your mind, not your feelings.

    All correspondence, calls, skype, e-mails, everything, everything related to the conduct of business, should be recorded (records, copies, screenshots, videos, etc.) and filed to your shadow archive. Following the strategy of unbalancing, the troll will regularly pull you, throwing such requests. The court understands the nature of these requests, and if you demonstrate a speed of reaction and willingness to cooperate, then 1) you will earn points, 2) give the court the opportunity to pull the troll back soon.

    Well, as an illustration, a case from our military past. In the case against Lodsys, we were suddenly asked to provide screenshots of Skype correspondence with an expert who spoke on our side. Lodsys really wanted to remove from the court at least some of the arguments we cited. In principle, if there were no screenshots, the court did not pay attention to this - there were other, more convincing written confirmations. However, the availability of screenshots and our openness showed serious intentions and thoroughness of preparation. The petition of Lodsys was ignored by the judge.

    Conclusion: Follow the known covenant and log everything that is possible (correspondence, negotiations, documents of all kinds) - a vital necessity; in court, one should be extremely honest and open, not letting the troll unbalance itself.

    9. Make a fuss :)

    Yes, and so what? Call all the bells, talk about the essence of patent litigation, give interviews, issue press releases, tweet, facebook, instagram, post on Habré, Children and the nonexistent blog, write an antitroll rap, in the end! Anything goes! Do it yourself and with other defendants. This will give you strength, confidence, you will receive support and useful advice and, of course, demoralize the troll. However, they are not sure that the verb “demoralize” is applicable to an object without morality.

    Conclusion: you need to do everything so that everyone knows about your business!

    10. Feel free to go to the end!

    The closer the court, the worse. And this also applies to the troll! At this stage, we read the first tip again (three times) and post a tweet filled with confidence (three tweets). We carefully read the correspondence with the troll: you will skillfully rinse your brain, admire perseverance, in every possible way hint at the world for modest compensation and the opportunity to bargain. In any case, each case is individual, but with complete confidence in your innocence, in no case do not agree! We must go to the end! “ Let's say we must fight the crook! »Trolls really do not like to bring a case to court (fear of invalidation of a patent = loss of licensees) and it is likely that they will withdraw the lawsuit. But you need to take it as a rule: before receiving the decision of the judge, do not rejoice, because the troll can play with you so that you relax, believing in victory.

    Allusions to the world may begin to arrive long before the trial. Moreover, the closer the court, the less the appetite of the troll. We usually don’t react to them at all, but in the framework of mediation we insist on our position about non-violation, and we also expressly declare that they are crooks.

    Thus, the last conclusion: the trolls are afraid of the court, and if you are truly innocent, push the reptiles to the end until they clean and run away!

    Something like this, briefly about the fun litigation with the trolls. By the way, many thanks to our main fighter against evil spirits: Nadezhda Kashchenko, a brilliant specialist in the protection of intellectual property, without which our victories would not have taken place, and this post too. And yes, there are still many interesting things overboard and we are ready to share them. So ask in the comments - be sure to answer.

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