A different perspective on patent risk
Almost all in-house counsel for technology companies and companies that use technology in their business have grappled with patent risk over the past 10 or so years.
October 31, 2013 at 08:00 PM
8 minute read
Almost all in-house counsel for technology companies and companies that use technology in their business have grappled with patent risk—non-practicing entities (NPE)-based patent risk, in particular—over the past 10 or so years. I'm no exception. I spent eight years at Cisco Systems where I was the VP of worldwide IP and, being a technology bellwether, Cisco was among the early companies to bear the brunt of NPE assertions. In 2012, more than 2,400 different companies were defendants in at least one NPE suit (and 270 were defendants in three or more suits), but a dozen years ago, NPEs were a fairly new phenomenon and assertion letters were relatively rare.
Even back then, for some of us in Silicon Valley, these suits were becoming frequent enough to qualify as a trend, and the associated legal battles were becoming costly enough to qualify as a real operational risk. However, many of us in corporate legal departments did not have access to operational ways to solve the problem, nor did we come from such a background. So we turned to what we did know and what we thought we could influence—laws and legislation.
We thought the time was ripe for Congress to step in and level the playing field of NPE litigation. So the first concerted industry effort to deal with the emerging NPE threat was a campaign for legislative patent reform. Technology- focused in-house counsel, including myself, spent a great deal of time working with Congress to craft legislation.
But it wasn't that simple. Other strong interest groups including pharma, manufacturers and universities liked the law the way it was. As a result, nearly all of our efforts to curtail litigation abuse failed. The significant effort at patent reform that did come to fruition—the America Invents Act (AIA) of 2011—ended up including almost no items from our wish list and did little to reduce the economic impact of NPEs (which reached nearly $11 billion a year in 2012; I'll discuss this cost dynamic in future columns). In fact, NPE cases reached an all-time annual high of 3,054 in 2012.
Following a lull post-AIA, calls for patent reform gained new energy, spurred by calls to action by President Obama and the White House Task Force on High-Tech. While some might think this is more of the same, it's not. The discourse is different now. First, companies are more realistic and are focusing more specifically on technical and procedural fixes by Congress, rather than looking to have them overhaul the entire patent system. The other major difference today is a widespread recognition that patents are assets with intrinsic economic value (even reform-oriented companies have made large investments in fortifying their patent assets). The current system for exchanging that economic value—litigation—is extremely inefficient and costly, but this kind of operating risk is actually less of a legal problem than a market problem, and, as a result, it can be solved by market participants if we work together to shift the financial dynamics. This is why I decided that Cisco should be one of the three charter members of the RPX network when it was born in 2008—and why I decided to join the company in 2011. For technology-based companies, NPE patent risk was becoming a multi-billion dollar “tax on innovation” that was siphoning dollars away from R&D, market development and job creation. If Congress couldn't eliminate the “tax” by fiat, maybe operating companies could band together, share information and resources, and act in a mutually beneficial way to reduce the costs of NPE litigation.
That collective approach is gaining traction. Just as companies are working together to intercede in the patent market to reduce the impact of NPEs, they are also collaborating on the next wave of legislative efforts. The key has been our ability to take a different perspective on the problem and recognize how legal and market forces can be complementary forms of risk mitigation. That said, patent risk is by no means eliminated. There is still a great deal of work to be done and there are many strategies to be considered. I look forward to exploring many of them in future columns.
Almost all in-house counsel for technology companies and companies that use technology in their business have grappled with patent risk—non-practicing entities (NPE)-based patent risk, in particular—over the past 10 or so years. I'm no exception. I spent eight years at Cisco Systems where I was the VP of worldwide IP and, being a technology bellwether, Cisco was among the early companies to bear the brunt of NPE assertions. In 2012, more than 2,400 different companies were defendants in at least one NPE suit (and 270 were defendants in three or more suits), but a dozen years ago, NPEs were a fairly new phenomenon and assertion letters were relatively rare.
Even back then, for some of us in Silicon Valley, these suits were becoming frequent enough to qualify as a trend, and the associated legal battles were becoming costly enough to qualify as a real operational risk. However, many of us in corporate legal departments did not have access to operational ways to solve the problem, nor did we come from such a background. So we turned to what we did know and what we thought we could influence—laws and legislation.
We thought the time was ripe for Congress to step in and level the playing field of NPE litigation. So the first concerted industry effort to deal with the emerging NPE threat was a campaign for legislative patent reform. Technology- focused in-house counsel, including myself, spent a great deal of time working with Congress to craft legislation.
But it wasn't that simple. Other strong interest groups including pharma, manufacturers and universities liked the law the way it was. As a result, nearly all of our efforts to curtail litigation abuse failed. The significant effort at patent reform that did come to fruition—the America Invents Act (AIA) of 2011—ended up including almost no items from our wish list and did little to reduce the economic impact of NPEs (which reached nearly $11 billion a year in 2012; I'll discuss this cost dynamic in future columns). In fact, NPE cases reached an all-time annual high of 3,054 in 2012.
Following a lull post-AIA, calls for patent reform gained new energy, spurred by calls to action by President Obama and the White House Task Force on High-Tech. While some might think this is more of the same, it's not. The discourse is different now. First, companies are more realistic and are focusing more specifically on technical and procedural fixes by Congress, rather than looking to have them overhaul the entire patent system. The other major difference today is a widespread recognition that patents are assets with intrinsic economic value (even reform-oriented companies have made large investments in fortifying their patent assets). The current system for exchanging that economic value—litigation—is extremely inefficient and costly, but this kind of operating risk is actually less of a legal problem than a market problem, and, as a result, it can be solved by market participants if we work together to shift the financial dynamics. This is why I decided that Cisco should be one of the three charter members of the RPX network when it was born in 2008—and why I decided to join the company in 2011. For technology-based companies, NPE patent risk was becoming a multi-billion dollar “tax on innovation” that was siphoning dollars away from R&D, market development and job creation. If Congress couldn't eliminate the “tax” by fiat, maybe operating companies could band together, share information and resources, and act in a mutually beneficial way to reduce the costs of NPE litigation.
That collective approach is gaining traction. Just as companies are working together to intercede in the patent market to reduce the impact of NPEs, they are also collaborating on the next wave of legislative efforts. The key has been our ability to take a different perspective on the problem and recognize how legal and market forces can be complementary forms of risk mitigation. That said, patent risk is by no means eliminated. There is still a great deal of work to be done and there are many strategies to be considered. I look forward to exploring many of them in future columns.
This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.
To view this content, please continue to their sites.
Not a Lexis Subscriber?
Subscribe Now
Not a Bloomberg Law Subscriber?
Subscribe Now
NOT FOR REPRINT
© 2024 ALM Global, LLC, All Rights Reserved. Request academic re-use from www.copyright.com. All other uses, submit a request to [email protected]. For more information visit Asset & Logo Licensing.
You Might Like
View AllElaine Darr Brings Transformation and Value to DHL's Business
How Marsh McLennan's Small But Mighty Legal Innovation Team Builds Solutions That Bring Joy
Democratic State AGs Revel in Role as Last Line of Defense Against Trump Agenda
7 minute readTrending Stories
- 1Hit by Mail Truck: Man Agrees to $1.85M Settlement for Spinal Injuries
- 2Anticipating a New Era of 'Extreme Vetting,' Big Law Immigration Attys Prep for Demand Surge
- 3Deal Watch: What Dealmakers Are Thankful for in 2024
- 4'The Court Will Take Action': Judge Upbraids Combative Rudy Giuliani During Outburst at Hearing
- 5Attorney Sanctioned for Not Exercising Ordinary Care: This Week in Scott Mollen’s Realty Law Digest
Who Got The Work
Michael G. Bongiorno, Andrew Scott Dulberg and Elizabeth E. Driscoll from Wilmer Cutler Pickering Hale and Dorr have stepped in to represent Symbotic Inc., an A.I.-enabled technology platform that focuses on increasing supply chain efficiency, and other defendants in a pending shareholder derivative lawsuit. The case, filed Oct. 2 in Massachusetts District Court by the Brown Law Firm on behalf of Stephen Austen, accuses certain officers and directors of misleading investors in regard to Symbotic's potential for margin growth by failing to disclose that the company was not equipped to timely deploy its systems or manage expenses through project delays. The case, assigned to U.S. District Judge Nathaniel M. Gorton, is 1:24-cv-12522, Austen v. Cohen et al.
Who Got The Work
Edmund Polubinski and Marie Killmond of Davis Polk & Wardwell have entered appearances for data platform software development company MongoDB and other defendants in a pending shareholder derivative lawsuit. The action, filed Oct. 7 in New York Southern District Court by the Brown Law Firm, accuses the company's directors and/or officers of falsely expressing confidence in the company’s restructuring of its sales incentive plan and downplaying the severity of decreases in its upfront commitments. The case is 1:24-cv-07594, Roy v. Ittycheria et al.
Who Got The Work
Amy O. Bruchs and Kurt F. Ellison of Michael Best & Friedrich have entered appearances for Epic Systems Corp. in a pending employment discrimination lawsuit. The suit was filed Sept. 7 in Wisconsin Western District Court by Levine Eisberner LLC and Siri & Glimstad on behalf of a project manager who claims that he was wrongfully terminated after applying for a religious exemption to the defendant's COVID-19 vaccine mandate. The case, assigned to U.S. Magistrate Judge Anita Marie Boor, is 3:24-cv-00630, Secker, Nathan v. Epic Systems Corporation.
Who Got The Work
David X. Sullivan, Thomas J. Finn and Gregory A. Hall from McCarter & English have entered appearances for Sunrun Installation Services in a pending civil rights lawsuit. The complaint was filed Sept. 4 in Connecticut District Court by attorney Robert M. Berke on behalf of former employee George Edward Steins, who was arrested and charged with employing an unregistered home improvement salesperson. The complaint alleges that had Sunrun informed the Connecticut Department of Consumer Protection that the plaintiff's employment had ended in 2017 and that he no longer held Sunrun's home improvement contractor license, he would not have been hit with charges, which were dismissed in May 2024. The case, assigned to U.S. District Judge Jeffrey A. Meyer, is 3:24-cv-01423, Steins v. Sunrun, Inc. et al.
Who Got The Work
Greenberg Traurig shareholder Joshua L. Raskin has entered an appearance for boohoo.com UK Ltd. in a pending patent infringement lawsuit. The suit, filed Sept. 3 in Texas Eastern District Court by Rozier Hardt McDonough on behalf of Alto Dynamics, asserts five patents related to an online shopping platform. The case, assigned to U.S. District Judge Rodney Gilstrap, is 2:24-cv-00719, Alto Dynamics, LLC v. boohoo.com UK Limited.
Featured Firms
Law Offices of Gary Martin Hays & Associates, P.C.
(470) 294-1674
Law Offices of Mark E. Salomone
(857) 444-6468
Smith & Hassler
(713) 739-1250