The SHIELD Act is very short and is only directed at computer and software patents, which makes absolutely no sense if you ask me. The seminal provision of the Act states:
Notwithstanding section 285, in an action disputing the validity or alleging the infringement of a computer hardware or software patent, upon making a determination that the party alleging the infringement of the patent did not have a reasonable likelihood of succeeding, the court may award the recovery of full costs to the prevailing party, including reasonable attorney’s fees, other than the United States.
What does Section 285 say? That is the provision that deals with awarding attorneys fees in the typical patent infringement situation. 35 U.S.C. 285 says:
The court in exceptional cases may award reasonable attorney fees to the prevailing party.
So what is an exceptional case? It is one that is extraordinarily rare, which is probably why Congressmen DeFazio and Chaffetz want to amend the Patent Laws.
Under current law, whether attorneys fees should be awarded requires a two-step inquiry. First, the district court must decide whether there is clear and convincing evidence that the case is exceptional. Second, the court must decide whether to award attorney fees to the prevailing party even if the case is deemed exceptional.
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Yes, even a finding that a case is an “exceptional case” does not always mandate an award of attorney fees in all circumstances. The United States Court of Appeals for the Federal Circuit has acknowledged that ther are many factors which can impact upon a decision regarding whether an award of attorney fees is warranted in a particular case. The types of conduct that could support a showing of exceptional circumstances resulting in the award of attorneys fees include, but are not limited to, willful infringement, inequitable conduct before the Patent and Trademark Office, litigation misconduct, and vexatious or unjustified litigation or frivolous suit.
What this means is that obtaining attorneys fees in any patent litigation is rare. Furthermore, in order to obtain attorneys fees it is necessary to litigate the matter to a conclusion. Of course, even if the SHIELD Act were to become law the defendant would have to litigate to the end, which is not typically done. Patent trolls use questionable patents and highly specious assertions of infringement to bully truly small businesses to pay what some federal courts have called “extortion-like” settlements. Perhaps if there is a greater opportunity to obtain attorneys fees representation would be obtained by those facing truly specious claims.
I’m not sold on this idea, although I do very much like the idea and think it is coming from a good place and is a step in the right direction. But what is the guarantee that the federal courts will actually grant the prevailing party attorneys fees when there is a finding that there was not a reasonable likelihood of succeeding?
There are several obvious flaws in the legislation, which if amended could become much better. First, and most obvious, is what is a “reasonable likelihood of succeeding”? The federal courts are virtually certain to interpret that very restrictively because they don’t want to punish those who bring a lawsuit and lose. That is not the America Rule of paying for attorneys fees, and historically has been frowned upon in the U.S. because it could have a chilling effect. We prefer to err on the side of allowing cases to be brought and not punishing those who have a legitimate claim but ultimately do not prevail. So you can almost bet your last dollar that “reasonable likelihood of success” will not mean what you think it should mean, and it will be interpreted extremely narrowly. Thus, the Act absolutely needs some definition of “reasonable likelihood of success,” or at the very least factors that a federal court must consider.
The other obvious flaw is that the statute only applies to the infringement of a “computer hardware or software patent.” Why? I mean I get it, sort of.
The best business in the world to be in right now is that of a patent troll, who I define as a nefarious actor and not merely any non-practicing entity (NPE). The bad actors, and they can be those who acquire patents or are the originating innovator, get their hands on a patent and say that it relates generally to X and, well, you generally do X, so I want you to pay me. If you don’t pay then the sue. There is little, if any, attempt to ever determine whether there is actual infringement of one or more claims in the patent. That is on its face legally absurd because only the claims define the exclusive rights give to the patent owner.
The problem with patent trolls is that that they have these patents, they don’t care whether they are really infringed, they sue and then threaten a long, drawn out proceeding unless you pay them a relatively meager sum, at least a meager sum compared to what it will cost you to even retain a competent attorney to defend and fight. There is nothing you can do to turn up the heat on the patent troll unless you have at least several hundreds of thousands of dollars laying around to defend, and even then you will likely go through that money quicker than you might imagine. Patent litigations are extremely time intensive and very costly. But because the patent troll is not actually in the business of doing anything other than collecting royalties you have no effective counter-claim against them for anything.
It will be useful to have a law that more broadly awards attorneys fees to those sued by the bad actors in the industry who have no reasonable likelihood of success. The patent troll market is overwhelmingly in the computer and software space because that is where you can acquire one or a few patents and legitimately conclude that many thousands of entities are doing something that is at least in the same technical area as the patent. Thus, there is a target rich environment with lots of players so small that they cannot afford to mount a legitimate patent infringement defense. It is like shooting fish in a barrel.
Having said this, why limit this provision to computer and software patents? Why should anyone ever be able to bring a lawsuit when they objectively had no reasonable expectation that they would succeed? It seems foolish to me to allow harassment lawsuits of any kind whatsoever. That includes those the relate to computer and software patents, but why doesn’t the same logic and the same basic principles of fairness mandate that such a rule apply across the board for all patents? Why shouldn’t the patent owner be required to do at least some reasonable due diligence to legitimately come to the belief that patent claims are actually being infringed before they file a naked complaint that does nothing more than offer speculation and conjecture? Of course, the worst actors doen’t even offer speculation and conjecture. They know full well those they are suing don’t infringe and they sue anyway. The federal courts are complicit in the patent troll problem. Something must be done!
If Congress really wants the SHIELD Act to have any teeth they would mandate that a claims chart must be provided in every complaint filed. That claim chart will break down the patent claim being asserted and the accused infringing device or method, offering at least some reason to believe that there is a reasonable chance that the patent owner can prevail.
If the SHIELD Act required a claim chart upon filing, applied across the board to all those who would seek to manipulate the patent system and not just computer/software patents and defined “reasonable likelihood of success” I would be on board with both feet. As it is, I am on board with one foot and hopefully that improvements can be made to this important piece of legislation.
The bad actors — those patent trolls who sue without caring whether there is really infringement — are an unacceptable tax on business, mostly small business. That is unconscionable. I applaud Congressmen DeFazio and Chaffetz for identifying a problem and offering a solution that actually has a chance to solve the problem that they seem to want to address.