More Dreck on Patent Trolls from Attorneys Cozying Up to Silicon Valley

https://depositphotos.com/138845832/stock-photo-fake-news-concept.htmlOn July 3rd, the Buffalo Law Journal published an column with the incredibly dubious headline Fighting Back Against Patent Trolls. The piece, co-authored by David Principe and David Rudroff, both lawyers at the Buffalo, NY-based law firm Phillips Lytle, looks through recent Supreme Court case law as well as Congressional legislation and offers tips to patent infringement defendants on how those recent developments have “made it easier than ever to fight back against this unfair practice.” That unfair practice, of course, being the enforcement of an intellectual property right against someone who is infringing on that property.

Principe and Rudroff unfortunately regurgitate much of the misguided dialogue, which has done nothing to serve this country except to decimate its patent system in recent years. In the view of the authors, patent trolls, or patent assertion entities (PAEs) (which the authors note is the less pejorative term), provide no market value and often enforce software or business method patents which have questionable validity. Of course, it is worth noting that in its 2016 study on PAEs, the Obama Federal Trade Commission called the term “patent troll” both unhelpful and prejudicial, and also specifically recognized that PAEs can and do play a valuable role in the market. So the conclusions of Principe and Rudroff are not supported by even an FTC study commissioned for the purpose of condemning patent trolls. 

It’s rather curious for either of these attorneys to be putting their name on a piece designed to stoke fears regarding the owners of property rights.

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Rudroff, a commercial lawyer at Phillips Lytle whose practice involves patent and trademark infringement cases, would seem to have a bit more reason to cater to the efficient infringement crowd. According to information collected through Lex Machina, Rudroff is one of the attorneys on record representing patent infringement defendant MIFAB Incorporated in a patent suit brought by W.D. Manor Mechanical Contractors Inc. currently ongoing in the Northern District of Illinois. According to Lex Machina, that is the only case involving either trademark or patent infringement claims in which Rudroff has appeared as counsel, so perhaps his lack of experience led him into the patent troll debate.

Principe’s role in the article is much more confusing, raising the question about whether he is selling out to the efficient infringement cabal that wants people to think that patent trolls actually exist (beyond MPHJ Technology Investments, of course).

Principe has a great deal more experience in legal matters surrounding patents; his bio page on the Phillips Lytle website notes that he has prosecuted at least 17 utility and design patents at the U.S. Patent and Trademark Office. Right there, it comes off as a little disingenuous that Principe would co-write an article that scoffs at the value of patents when he has been engaged in secure those same patent rights for his clients.

Further, although Lex Machina data shows that Principe hasn’t served as counsel of record in a patent infringement case in district court, he did represent patent owner Moneycat Ltd. in four covered business method (CBM) review proceedings petitioned by ecommerce giant eBay at the Patent Trial and Appeal Board (PTAB). One of those CBMs was denied institution. The three CBMs  instituted resulted in final written decisions of all claims invalid. The PTAB has often been heralded by efficient infringement supporters as a way to deal with patent trolls and Principe’s failures at that forum, coupled with his recent diatribe against patent trolls, could be indicative of an “if you can’t beat ‘em, join ‘em” mindset.

This mindset seems even more likely given one of the Supreme Court decisions touted by Principe in the Buffalo Law Journal article as an effective means for fighting against patent trolls in court. The column cites the 2006 decision in eBay v. MercExchange as a positive development, which has caused U.S. district courts to be much more hesitant in granting permanent injunctions upon a finding of patent infringement. To the contrary, the eBay decision is widely regarded as the turning point against patent rights and innovators, and one of the pivotal moments most responsible for the overall weakening of the U.S. patent system. See The Top 3 Reasons the U.S. Patent System is in Decline

It would be interesting to find out whether Moneycat knew that Principe was so supportive of eBay’s effects on the U.S. patent system prior to hiring Principe to represent the firm at the PTAB against eBay. As if that wasn’t bad enough, Principe also hails the creation of the PTAB as part of the enactment of the America Invents Act of 2011 as a “more hands-on approach” available to those who want to challenge a patent’s validity. To his credit, Principe only discusses inter partes review (IPR) proceedings at the PTAB and smartly stays away from any mention of CBM reviews, lest he come off as a complete shill only trying to make up for perceived sins of the past (i.e., his representation of a patent owner in CBM proceedings). 

Of course, the creation of the PTAB is widely recognizes as one of the other seminal moments in recent patent history most responsible for the dismantling of the U.S. patent system. Indeed, none other than USPTO Director Andrei Iancu has pledged not to follow the same path and has the Patent Office reviewing PTAB procedures from top to bottom with major revisions anticipated because the administrative tribunal has run amok. Indeed, the first revised proposals have already been released. Still further, the U.S. Chamber of Commerce annual report has continually cited the PTAB and its opposition proceedings for year after year decreasing the ranking of the U.S. patent system, which now ranks 12th in the world. See U.S. Patent System Falls to 12th.

Perhaps Principe and Rudroff should stick with matters they know more about. 

 

Image Source: Deposit Photos.

The Author

Steve Brachmann

Steve Brachmann is a writer located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He has become a regular contributor to IPWatchdog.com, writing about technology, innovation and is the primary author of the Companies We Follow series. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients.

Steve Brachmann

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 15 Comments comments. Join the discussion.

  1. Curious July 23, 2018 9:43 am

    Principe has a great deal more experience in legal matters surrounding patents; his bio page on the Phillips Lytle website notes that he has prosecuted at least 17 utility and design patents at the U.S. Patent and Trademark Office.
    Seriously, I had to laugh at that. I could have said the same after I was a summer associate.

  2. Roberta Jacobs-Meadway July 23, 2018 12:51 pm

    It would be good to have a discussion of the issues without the insults. There are non-practicing entities that have threatened retailers with overbroad patents that should not have been issued. There are defendants who look to prolong the pain of litigation to discourage plaintiffs without deep pockets. We need serious discussion with all the relevant stakeholders about the issues that have plagued the system since State Street Bank.

  3. Jianqing Wu July 23, 2018 12:52 pm

    Before joining more fights against patent trolls, one should consider following two problems.

    I found two big problems in the U.S. patent system. First one is that the number of granted U.S. patents is hugely inflated. In many other countries, one broad patent is granted to one invention. However, due to examination culture of the U.S. patent system, most inventions are patented by two to several patents. Multiplicity of patents is achieved by prolific restriction actions and repeating rejections that force patent owners to use narrow claim language. This means that 1 million U.S. patent means only 300,000 inventions relative to other nations. The actual invention number originated in the U.S. is much lower. If you further adjust against foreigner-owned patents and many extremely narrow inventions, the U.S. pool is much worse than it appears to be.

    Patent abandonment has another huge impact on the U.S. marketing. When the huge number of patents are let to expired in each week, the market is open to everyone from the world. Although U.S. now still controls the market in cell phones and social media, it will lose control in new technology areas. People in other nations can control most of technical space while the U.S. cannot. When technologies shift from cell phones/social media to new technological spaces, the U.S. will be in a disadvantaged position.

    I hope lawmakers and justices can see the long-term adverse impacts before they will totally burn down the patent system. Most decisions are made only because those people do not understand the critical role of the patent system and have been misguided by articles like Principe’s.

    Although everyone hates patent trolls, I do not. I always think that patent trolls are essential components for a health patent system. No patent trolls means a dead patent system. Most inventions by individual inventors cannot be practiced by themselves. That is why the Constitution provides incentive. They need patent troll’s services. What is needed is only reasonable regulations.

    For lawmakers: damages are enough. Do not do more in the name of fighting patent trolls.

  4. Ned July 23, 2018 1:47 pm

    Why are you guys so biased in favor of PAE’s? Why the personal attacks?

  5. Anon July 23, 2018 5:14 pm

    Ned and Roberta,

    The animus can be explained at least in part due tot eh lemony effect and the fact that people swallow the pure propaganda of the “Patent Tr011” narrative without being informed on the issue.

    It is less a bias FOR any particular group and more a reaction against propaganda that has run amuck, and the resulting damage to innovation protection mechanisms from such purposeful obfuscations.

  6. Curious July 23, 2018 5:52 pm

    Why are you guys so biased in favor of PAE’s? Why the personal attacks?
    The use of the term Patent Assertion Entity (PAE) is merely chum used by the anti-patent folks to get the judicial/legislative sharks to kill ALL patents — not just those asserted by PAEs. With no exception that I’m aware of, whatever can be used against a PAE can also be used against a normal inventor. As such, when we are “biased” in favor of PAEs, it just means that we are against attacks against all inventors.

  7. Anon July 23, 2018 8:28 pm

    tot eh lemony effect

    egads – that should read: to the lemming effect”

  8. LazyCubicleMonkey July 29, 2018 2:07 am

    If a PAE is suing a another party that is infringing on their patent, how often does the other party actually scour various patents (and therefore extract value from them) so they can implement the feature in question vs how often do they come to that solution independently?

    It really seems that if they came to that solution independently (and this happens many times since PAE’s tend to sue many companies) – then the patent was quite obvious – and doesn’t actually add any value to the economy. If anything – it drains value because it diverts money to legal issues instead of their core business.

    Patent and Copyright Clause of the Constitution. [The Congress shall have power] “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

    How does granting the patent used by PAE “promote the progress of science and useful arts”? Since that exact “invention” was independently invented by many parties (otherwise they wouldn’t be infringing), what exactly are they promoting?

  9. Gene Quinn July 29, 2018 11:22 am

    Lazy Cubicle Monkey —

    First, with a fake name and a fake e-mail address you are obviously here to troll the comments. So, interesting that you would have negative things to say about a PAE.

    Second, your “considered” opinion is that Thomas Edison didn’t deserve any patents. That is asinine.

    Third, the viewpoint that if someone eventually comes up with something that must mean that many years earlier when someone else came up with it first it was obvious is beyond asinine.

    If you want to contribute, fine. But those using fake names and fake e-mail addresses who spew legally incorrect and clearly ridiculous views do not have an absolute right to comment here. If you want to put your real name to your ridiculous thoughts so we know who is trolling this comment thread then please, say whatever ridiculous thing you want.

  10. Anon July 29, 2018 12:16 pm

    To be more direct, LCM, your understanding of the legal notion of obviousness and the concurrent view of independent creation are simply not reflective of how patent law works.

    The fact of the matter is – and remains – that just because multiple people are working on something (and to vary Gene’s point as to timing), and that innovation may be forthcoming from several different people even near-concurrently, does not mean that THAT innovation must be obvious.

    Even before the AIA changed the game to be much more of a “race between parties to see who files first,” the concept of MULTIPLE parties racing was not a foreign concept to patent law. Your view, taken to its logical ends then, would be concomitant with a view that only Genius level, absolute one of a kind breakthroughs are “worthy” of a patent.

    Such is simply not the proper view of patents.

    I would also slightly change Gene’s advice to you as to posting. I would NOT welcome anyone posting dreck just because they “use their real name.” Instead, I would welcome those that wish to post, but who post willing to have their un-informed opinions change to being INFORMED opinions.

    As I have commented previously, the editorial control of a proper email address (one that serves to validate the identity of the individual, even as that identity is NOT shared on the boards) serves to protect the forum from abuse. Make no mistake, this forum has been the target of abuse from those whom having an informed opinion runs against their philosophies. Gene runs a relatively tight ship here, and the interactions are an order of magnitude better than other blogs that do not control for the abuse of those whom informed opinions get in the way of the diatribe that is wished to be expressed.

    This is NOT to say that other views and philosophies that do not embrace a strong patent system are not welcome here.

    This is NOT to say that these pages MUST exhibit a “group-think” only in the patents are good” direction.

    It IS to say that any and all views need to be able to withstand scrutiny and that those supplying the views must not be here solely to abuse the process of dialogue by being unwilling to become informed.

    One other aspect for your consideration: The phrase “necessity is the mother of invention” is apt for your view of the blocking action of patents being some “bad” thing. That blocking action of patents is actually a very good thing. Even in the face of (and in fact, especially in the face of) independent creation.

    This is because your version of independent creation would “promote” NO cross interaction to make sure that what is being independently created clears the work of others. One then may be likely to simply ignore what else is going on and NOT build on the work of others.

    Such a model is perfectly fine for other areas of Intellectual Property law that protect different aspects: notably, copyright and the protection of expression. Patent law on the other hand aims to protect utility rather than expression, and thus runs on a different paradigm. Patent law is thus “more strict” and has NO “independent creation” excuse from infringement. Infringement then is more like trespass of property in that one’s culpability only rests in whether you meant to walk where you walked, and not whether or not you meant to walk on someone else’s land. The different driver of utility versus expression drives the different legal treatment.

    And this is a good thing.

    Expression lends to “thin” protection covered over longer periods of time. Utility lends to “thick” protection for much shorted period of time. There is no such thing as “Fair Use” defense for the thicker (and shorter) utility-driven aspects. Nor is it desirable to have such. This is part and parcel of WHY the phrase noted above (the mother) came into being in the first place. When one “wants to DO,” being blocked is an EFFECTIVE motivator for coming up with inventive ways TO DO. Protections of expressions simply have a different flavor, and thus the different results of “thinner” and “longer.”

    I would also make it a point that throngs of software workers have been led astray on this point, It is not difficult to do so, since software is an item that actually carries with it elements of BOTH utility and expression (and earns protection for the different aspects under the different IP realms). Many software workers simply do not realize that multiple DIFFERENT aspects are present, and have been led to believe that only one form of protection is either required, desirable, or even proper.

    What IS proper though is that EACH aspect is properly protected under the EACH of the different forms of IP law that exist to protect different things.

    A rudimentary understanding of the actual protections under the law would go a long way to eliminating the (improper) propaganda that comes out of those opposing software patents.

    Finally, to Gene’s point here, you receive a fairy harsh rebuttal because while this may (but may not) be your first time engaging as you do engage, it IS a common pattern from those who do not want proper protection, and speak without what many here involved with the law have come to expect as having the rudimentary understanding of the law upon which your comment aims.

    Further, there have been commenters here who have steadfastly refused to be informed, and who dogmatically repeat a mantra of the uninformed, even after others have attempted to enlighten them. Sadly, these are the very same people who resort to attempts to bypass the editorial control of supplying a proper email address.

    If you have been a reader for any appreciable time, you would recognize that I am an active champion for posting in anonymous and pseudonymous fashion. For me, there are several reasons for doing so, including a conscious choice to NOT piggyback on my position or name outside of the actual content of my posts. I recognize that this is a choice, and I am perfectly fine that others choose differently. Bottom line though is that I respect this forum, its purpose and the editorial controls put on place in order to protect dialogues against the all-too-easy abuse to a forum open to the public.

    I welcome your views and I welcome the chance to provide some informing such that your views come to reflect the actual law (and reflect the nature of innovation). But I welcome such only if you are actually interested in dialogue and only if you are open to being informed.

    It is simply not too much to ask of you (and any poster) to abide by the common courtesy of providing proper bona fides with your views.

  11. LazyCubicleMonkey July 29, 2018 4:45 pm

    Gene:
    While my name is fake (but so do others’ comments, no?), the email address isn’t – I have a different alias for each service I use – the advantage of running my own domain & email server so if anyone ever sells my email address – I know exactly which service did it. Also makes my login info easier to remember.

    Regarding Thomas Edison – I was under the impression that many of his ideas were indeed stolen: https://www.usnews.com/opinion/articles/2013/03/21/why-thomas-edison-isnt-the-inventor-of-the-light-bulb so I’d need to know which exact patent we’re talking about – before saying whether he deserved it or not.

    I’ve never said that if someone eventually comes up with it – I’ve said that if MANY people come up with it
    (since PAE’s tend to sue many parties at once) within the period, then the invention must, indeed be obvious.

    Regarding my “trolling” – I actually prefer challenging myself by reading viewpoints I don’t agree with. As someone who writes software and reads a lot https://www.google.com/search?q=site%3Aarstechnica.com+patent+trolls&oq=site%3Aarstechnica.com+patent+trolls&aqs=chrome..69i57j69i58.5855j0j1&sourceid=chrome&ie=UTF-8 arstechnica.com about patent trolling, I’m curious as to who actually supports the other side. I’m much more likely to learn something talking to people I disagree with, no?

    Anon:
    I would think obvious inventions are ones that an(y?) expert in the field would come up with as a solution to a particular problem. How experts in a field have to come up with a particular solution for it to be considered obvious?

    Regarding your point about cross-interaction – are you suggesting that software engineers start going through software patents before writing what they think is un-obvious software? (Perhaps I’m mis-reading it – please correct me if i’m wrong).

    More importantly, just going by the Constitution (and not the laws & case laws that came after – IANAL – only a software engineer), what progress to the arts and sciences does a patent confer if an(y?) expert in the field will come up with that exact same solution?

    I think it would help if I also explained that I’m coming from a different default position – it seems your defaults are coming from a place where intellectual property law = automatically good = helps innovation. I think that intellectual property law is a necessary government enforced monopoly (https://torrentfreak.com/nothing-new-under-the-copyright-eclipsed-sun-110218/) that should be used as sparingly as possible to achieve the desired goals or promoting the useful arts & sciences for the benefit of the public. Under those parameters, if many experts come up with the same solution independently, it seems counter-productive (to society) to prevent subsequent “creators” from being blocked from using that implementation.

    I do think that if someone actually looks at the patent and then uses that to give themselves some advantage they wouldn’t have otherwise had, then they are absolutely infringers and should suffer the relevant penalty.

    As I’ve stated earlier – IANAL so my legal opinion is based off the relevant claws of the constitution – but that doesn’t mean that I can’t see that some laws/decisions that are on the books are contrary to that clause. So while you’re analysis of what’s legally correct under current laws is far superior to mines, you also make arguments on what a particular decision should’ve been in light of particular (case) laws. I’m doing the same thing – but going back to the original clause in the Constitution that started this whole thing.

    Note: My opinions on patents are limited to the software industry as that’s my expertise. I have read studies that patents are particularly beneficial to other industries such as pharma.

  12. Gene Quinn August 1, 2018 11:24 am

    Lazy @11-

    Your definition of not using a fake e-mail address is peculiar, although I understand what you are saying.

    Please understand that it is not my job to rescue comments from the spam filter, or to approve comments awaiting moderation. Your last two comments have been awaiting moderation for some time because we were all out of the office at our Patent Masters event.

    We get many hundreds of spam comments a day that our filter flags and segregates. Prior to using our current firewall the number was in the tens of thousands per day. I’m telling you this because those who are regulars in the comment section know all of this, and understand that the technical systems we employ routinely flag as spam comments coming from those who use both fake names and fake e-mail addresses.

    Substantively, those who require the type of anonymity you demand routinely arrive to troll us and interrupt thoughtful discussion. That is not tolerated by those who demand absolute anonymity.

  13. Anon August 2, 2018 10:32 am

    Gene,
    Can you check the buffer?

    I just lost a long reply to LCM with a message of “cannot reach this site”

  14. LazyCubicleMonkey August 3, 2018 11:37 pm

    Understood. Nothing I can do about the email – it’s not the first time I ran into something like that – I recall a particular site refusing to recognize any email address on my domain, without even trying to send a validation email. I ended up not signing up for that site ;-(

    No plans on trolling – I actually find intellectual property debates intellectually appealing because it’s one of the few subjects (legal matters?) without a clear black/white right/wrong answers (at least for me) – so even a slight shift in position due to a good argument is a possibility.

  15. Anon August 7, 2018 10:16 am

    LCM,

    Look forward to engaging in discussions with you. For what it is worth, I too find it refreshing to engage with someone not having my perspective.

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