This is a paper I wrote in 2015 entitled CULLING THE HERD: CONFRONTING NON-PRACTICING ENTITIES IN THE ERA OF INTER PARTES REVIEW. This was for a class called “Intellectual Property and Business Organizations”. The paper wasn’t particularly great. It wasn’t ever published anywhere. Part of the reason for that was that I wasn’t interested in writing a law review article. Part was because I later found out that there were groups (Unified Patents) dedicated to exactly what I proposed in the article. Nonetheless, I’ve posted it up here for y’alls “enjoyment.” It addresses the ways the America Invents Act (ca. 2011) impacts the relationship between operating companies and patent trolls. Without further adieu, here it is:
Non-Practicing Entities (NPEs), which are sometimes more disparagingly described as patent trolls, have repeatedly ducked legislative and financial attacks lobbed in their direction. Industries, policymakers, administrators, and adjudicators have been expending significant energy on both the state and federal levels to attempt to hobble patent trolls.1 This is a high stakes battle, because publicly-traded companies have incurred $579 billion in losses from 1990-2010 due to NPEs.2 Although patent trolls have been a hot topic in the media recently, NPEs have been around for centuries. Thomas Edison allowed his licensing company to use his patents in a very aggressive manner to target competitors.3 Attorney Joel B. Carter of Quatdebaum, Grooms, Tull & Burrow, PLLC categorized NPEs into three primary types: inside, heat-seeking, and trolling.4 Inside NPEs are entities associated with an industry player. They assemble a patent portfolio on behalf of the industry player and consistently attack competitors through patent litigation. Heat-seeking NPEs and trolling NPEs are not affiliated with an industry player. They acquire patents from patent holders through various means for the sole purpose of asserting those patents.5
The trolling and heat-seeking NPEs are particularly onerous to deal with due to the asymmetrical nature of the litigation. In traditional competitor litigation, there is opportunity for the accused infringer to countersue the patent holder using their own patents on their technologies. Since both parties are industry players who have products on the market, there is often a détente, a mutually beneficial de-escalation of tensions, potentially resulting in cross-licensing or other cooperative measures. However, NPEs have no such product on the market, and so their aggression is not tempered by a fear of countersuit.6 At least the insider NPEs have the fear of their affiliated industry player facing the wrath of their competitors, but the untethered trolling and heat-seeking NPEs don’t even have such a limitation. With the Mutually Assured Destruction threat off the table, the companies targeted by these untethered NPEs have had to resort to other measures in attempt to reduce that half-trillion dollar impact to their collective bottom line.7 Certain industries have used their public policy influence to affect patent legislation so that it was easier and less expensive for them to invalidate the patents asserted against them. They also have been accumulating their own patent portfolios as a defensive asset.8
Industry competitors have also banded together to form joint defense groups. These groups were especially popular prior to the America Invents Act (AIA), when NPEs could file a lawsuit against a large number of industry players with deep pockets in a single complaint.9 The benefits of spreading the risk and costs across a number of companies is an attractive proposition when discovery alone can cost between $300,000 and $750,000, and with total litigation costs sometimes topping $2.4M for suits against NPEs.10 In view of these numbers, it is understandable when small and mid-sized businesses simply pay the $50,000 settlement demand from the NPE, because even if they win in court, they still lose on the balance sheet. When a number of alleged infringers are similarly situated against an NPE suit or demand letter, it certainly makes sense to attempt to collaborate and defray costs across the group.11
In combination with or instead of the joint defense groups, certain companies opt to form a patent pool. A patent pool is a licensing scheme where a certain number of competitors transfer their patents in a specific technology to a single entity which then licenses the patents based on a set of pre-negotiated licensing rules.12 Patent pools are sometimes created to prepare for future litigation in order to position the company favorably for settlement negotiations, and ultimately for the future litigation.13 No matter the specific strategy chosen, reducing litigation cost is a primary concern of companies that are targeted by NPEs.
This paper proposes a new type of entity, a Patent Culling Entity (PCE) that uses the Inter Partes Review (IPR) process created by the AIA to more effectively protect companies from NPEs than the pre-AIA methods used in industry. By leveraging the ability to challenge the validity of a patent without incurring the cost of litigating the validity issue in court, the PCE attacks an NPE’s patent portfolio through Inter Partes Review.14 IPRs, in particular, are beneficial to companies targeted by NPEs because of the 12 to 18 month deadline for completing review, the limited discovery, and the more favorable preponderance of the evidence burden to declare a patent invalid (as compared the federal courts’ clear and convincing evidence burden).15 Although there are other entities that file IPRs on behalf of an industry or their members, such as RPX and the Electronic Frontier Foundation, these legacy entities are holdouts from the pre-AIA era that suffer from the same problems of the other pre-AIA industry practices.16 Rather than focusing exorbitant time, money, and effort on attacking the NPEs themselves, only to watch another pop up when they manage to bankrupt the first, PCEs are purpose-driven entities that attack the source of the problem, the bad patents used by the NPEs.17
This paper will discuss how companies who are targeted by NPEs can leverage the advantages of industry collaboration along with the advantages of IPRs under the AIA. In Part II, this paper will discuss the strategies that companies have used to confront NPEs prior to passage of the AIA. Part III will discuss the AIA and specifically IPRs under the AIA. Part IV will discuss the use of IPRs as a tool to confront NPEs. In Part V, this paper will propose Patent Culling Entities (PCEs), by companies that would otherwise participate in patent pools or joint defense groups. PCEs would leverage the benefits of a collaborative effort, such as reduced individual cost and shared risk, along with the benefits of IPRs under the AIA, such as reduced total cost and a favorable burden to prove invalidity. Part VI will compare PCEs to other strategies, both pre-AIA and post-AIA, to confront NPEs. Finally, this paper will conclude by describing how using a PCE is an effective solution for an industry to reduce the threat from NPEs.
Pre-AIA Strategies for Confronting Non-Practicing Entities
Prior to the AIA, strategies for confronting NPEs largely consisted of making one’s company look unpalatable to NPEs, making sure the company’s bite was as strong as its bark, and aligning the public against the NPEs.1 Companies would preempt the threat from NPEs and make themselves look unpalatable by engaging in collaborative opposition, such as patent pooling and joint defense groups.2 Companies would make themselves look even more unpalatable by reducing the NPEs’ economic incentive through indemnification, quick response, and by developing a reputation as a company that does not settle with NPEs.3,4 Then, companies would use litigation strategies such as making a strong push for invalidating the patent in question and attempting to shortcut litigation costs through motion practice.5 Finally, companies would leverage their ties in government and in the general public to get more industry friendly legislation introduced at the state and federal level.6
Collaborative opposition arose primarily in three forms: patent pools, joint defense groups, and defensive aggregators such as RPX.7,8 These three forms largely survived the AIA, and are still used as a collaborative opposition to NPEs.
One type of collaboration undertaken by an industry is patent pooling. A patent pool is an entity created so that member of the patent pool can transfer their patents pertaining to a certain technology to the pool. They are then licensed rights to the patents, and to the patents of the other pool members.9 The patent pool provides economic benefit through licensing royalties, competitive benefit by allowing access to competitors’ technology, and removes intra-industry patent conflict, which can chill innovation in the field.10 Patent pools have existed since the middle of the 19th century, but largely subsided in the 20th century due to antitrust concerns.11 With the rise of software and biotechnology in the late 20th and early 21st centuries, patent pools have made a comeback.12 In recent years, patent pools have been subject to the essential patents test.13 The essential patents test requires that the patents included in a patent pool must be essential to the technology or standard that the pool defines.14 This is determined using two tests: the internal test and the external test.15 The internal test requires that the patents in the pool must be complements; each one of them must be licensed in order to create the technology or comply with the standard.16 The external test requires that the patents in the pool must not have substitutes outside the pool.17 Further, antitrust law requires that the patents included in the pool must be offered at a Fair, Reasonable, And Non-Discriminatory terms (FRAND).18
Patent pooling is a cooperative aggregation of patents in a transactional context that happens during the development of technologies, such as technology standards.19 However, patent pools offer little protection once a patent reaches the open market. In contrast, defensive aggregators such as RPX are proactive by either buying patents that NPEs would otherwise buy, or even just offering money to buy a patent that is being asserted against its members.20 These defensive aggregators “reduce litigation and settlement costs” for their members by offering a handful of services such as insurance.21 Primarily, these defensive aggregators are known for purchasing patents and licensing them to their members as protection from NPEs.22 Although RPX and other similar defensive aggregators have traditionally worked to wrest troublesome patents away from bad actor NPEs, these groups have expanded their scope in an interesting manner.23 Since the AIA, defensive aggregators have taken on a new service for their members; they have begun filing IPRs against NPEs.24
Finally, once all of the transactional techniques have been exhausted, a company still has collaberative options during litigation. A joint defense group is a coalition built when multiple alleged infringers pool their resources and share information as they proceed with their cases.25 A joint defense group is particularly useful when the alleged infringers are all being sued under the same patent, and the alleged infringers are putting forth an invalidity argument against the patent.26 The joint defense group largely works collaboratively on issues such as discovery, claim charting, claim construction arguments, and invalidity analysis.27 However, noninfringement arguments tend to be less amenable to group work, since they’re so highly dependent on each alleged infringer’s specific product.28 Joint defense groups benefit the companies involved by sharing costs across the group, sharing useful information, and coordinating strategy to hopefully get the asserted patent declared invalid. Joint defense groups do, however, increase the risk of competitors accidentally receiving proprietary information.29
Many of these pre-AIA strategies for confronting NPEs are still applicable in the era of the AIA. However, the AIA significantly changed the balance of power between patent holder and potential infringers. The introduction and augmentation of post-grant reviews has had a significant impact on the tools available to a corporation targeted by an NPE. The benefits of combining resources and spreading risk across multiple defendants is borne out by the popularity of patent pools and joint defense groups.30 It is simply cost prohibitive to self fund the entirety of litigation against NPEs, especially when the NPEs have identified a company as a good target.31 The added bonus of deterring litigation from industry competitors adds to the importance of pooling resources.32
One of the biggest benefits of patent pools and joint defense groups is the shared risk. No single company has to pay for the entirety of the validity portion of trial, so the costs are defrayed across the multiple members of the group.33 Another benefit associated with shared risk is the unified front that is able to be presented by the members of the group in the face of an NPE.34 While a single company may be forced to settle due to mounting costs, with a significant portion of the costs defrayed, the company can stand strong against the NPE for longer, and thus increase the NPE’s costs and reduce its incentive to target any member of the group again.35
Another large benefit of patent pools and joint defense groups is the pooled resources.36 By pooling resources, the members of the groups can proceed on more avenues of defense than if a single company were to attempt a defense against an NPE.37 By tearing down the barriers between each company’s patents in a patent pool, all companies are afforded the advantages of indemnified access to every patent in the pool.38 This gives every company taking advantage of the pooled resource access to more defense resources, and can also use the pool as a shield from NPE attacks.39
The AIA and Inter Partes Review
The Leahy-Smith America Invents Act was passed by Congress on September 8, 2011 and signed into law by President Obama on September 16, 2011.1 Taking effect largely in September 2012, the AIA implemented sweeping changes to the U.S. patent law system, including implementing Inter Partes Review over inter partes reexamination. IPRs allow a petitioner to “request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.”2
Petitioners are required to submit with the petition 1) a petition fee; 2) an identification of all real parties in interest; 3) an identification of each challenged claim, along with the grounds for the challenge and the evidence supporting those grounds; 4) any other information required by USPTO regulation; and 5) copies of the required documents sent to the patent owner.3 Of specific import is element 2), which requires an identification of all real parties in interest. An IPR that is filed by an entity on behalf of a real party in interest has estoppel effects on the ability of the real party in interest (and any privy of the petitioner).4 Specifically, section 315(e)(2) states that “The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not assert . . . in a civil action . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.”5
Specifically noted by the Federal Circuit, the Patent Trials and Appeals Board (PTAB) has concluded that there is no “real party in interest” or “privy” relationship when “there was no evidence that [the defendant in a law suit] had ‘the right to intervene or control Petitioner’s defense to any charge of patent infringement’ and that [the IPR petitioner] and [the defendant in the law suit] had ‘distinct interests in the related [district court] litigation.'”6 This is important in the context of cooperative opposition because if all companies who are part of a group are estopped from asserting certain invalidity arguments at trial due to an IPR, the utility of the IPR goes down significantly.7 The privy relationship is further discussed in the context of Patent Culling Entities later in this paper.
However, despite the potential privy relationship pitfall, IPRs give the petitioner two significant advantages over arguing invalidity in court. First, IPRs are governed under the burden of “preponderance of the evidence,” whereas federal courts govern invalidity determinations under the burden of “clear and convincing evidence.”8 Second, IPRs only give the patent owner the opportunity to “file 1 motion to amend the patent in 1 or more of the following ways: (A) Cancel any challenged patent claim. (B) For each challenged claim, propose a reasonable number of substitute claims.”9 The patent owner is restricted in the amendments they may propose to attempt to get around the prior art challenge of the IPR.10
Using Inter Partes Reviews to Confront Non-Practicing Entities
The general focus of IPRs are to stay district court litigation and get a validity ruling on the patent in question from the technical experts on the PTAB.11 However, certain companies have used IPRs as a preemptive strike against their competitors. Like the aforementioned litigation strategies, a smart company that is targeted by an NPE may choose to handle the issue of validity of the asserted patent in the confines of the restricted IPR discovery rules.12
IPRs are a Superior Tool for Confronting NPEs
NPEs attempt to use every machination of the district court to try to squeeze their target into settlement. One such way is to attempt to create ever-increasing discovery costs, which disproportionately fall on the alleged infringer.13 By instituting an IPR and attempting to stay district court proceedings, a targeted company can successfully rein in discovery to the much more reasonable levels that are mandated in an IPR,14 and can hopefully get to a favorable settlement by the NPE without spending the massive discovery costs that would have accrued in district court.15 This route could end up saving the company millions of dollars. According to one study, the median cost of an IPX (which would compare favorably to an IPR) was $250,000, whereas the median cost of district court litigation was up to $6M.16
However, IPRs are not without weaknesses, and the largest weakness is the estoppel produced by a final decision from the PTAB.17 This estoppel weakness is magnified in a collaborative group, where “real party of interest” and “privy” relationships may estop all members from arguing the same invalidity argument in district court, even though they did not participate directly in the IPR.18
IPRs have gained the interest of many parties. Companies have filed increased numbers of IPRs each month.19 Beyond just industry, other parties have taken interest as well, such as hedge fund managers.20 One such hedge fund manager, Kyle Bass, has begun using the IPR process to challenge patents he believes are spurious.21 Using the significant favor towards invalidating patents as an investment tool, Bass and his organization avoid settlement, and short the company that owns the patent, hoping that the PTAB will invalidate the patent.22 His Coalition for Affordable Drugs blends the benefits of collaborative efforts (of his investors) with the increased efficiency of the IPR.23 Lessons from the Coalition for Affordable Drugs can be harnessed by industry members to address the ever-present NPE issue.
Patent Culling Entities: A Proposal to Reap the Benefits of Pooling Resources while Avoiding the Difficulties of Non-IPR Strategies
As previously mentioned, certain defensive aggregators such as RPX have begun petitioning for IPRs against NPEs that hold patents that have been asserted against the group’s members. While this is an effective way to challenge validity of the asserted patents, the patent purchasing groups are in a dubious position regarding “real party in interest” and “privy.” In order to be able to effectively have two bites at the apple, an entity petitioning for IPRs must be sufficiently distanced from the industry players it serves such that those players are not real parties in interest or privies.
This paper proposes a purpose-built entity called a Patent Culling Entity (PCE) whose sole purpose is to challenge patents in a certain technology area that are held by NPEs. This PCE would be funded by industry stakeholders, but would operate independently of those stakeholders to preserve a distance so that the stakeholders would not have “the right to intervene or control Petitioner’s defense to any charge of patent infringement.”1 The PCE would also operate independently of any pending litigation, so it could still be claimed that the PCE and the stakeholders had “distinct interests in [any] related [district court] litigation.”2
This purpose-built entity will act much like an antibody in the blood stream. Once created and empowered, it will operate somewhat independently of the stakeholders, and will avoid the entangling features that are inherent in patent pools, cross-licensing agreements, and joint defense groups. By focusing solely on filing IPRs, the PCE will be a lean entity that is not susceptible to conflicting priorities that may arise when competitors are closely involved in an ongoing agreement, such as the perpetual licenses and indemnification of a patent pool. Further, by not actually owning any patents, the PCE can devote its entire focus to NPEs without worrying about maintaining its own patent portfolio, especially in light of the competing companies who own rights in the patent portfolios of patent pools.
As an example, the telecom industry is well suited for the creation of one or more patent culling entities. The telecom industry uses patent pooling and other cooperative methods to protect themselves from NPEs and to monetize their technology, especially around technical standards. In a hypothetical situation where a new industry standard was being created, certain industry players would come together and aggregate their patents on the industry standard into a patent pool. However, either instead of or in complement to the patent pool, the industry players could create a patent culling entity. The industry players would provide funding to create the entity, but would not exert significant control over the PCE’s day-to-day operations. The PCE would be chartered with a specific mission. In the telecom hypothetical, the PCE’s purpose would be to challenge patents in the realm of the industry standard that are held by non-practicing entities. The industry players would have to specify the breadth of the challenges (how far does “realm of the industry standard” extend?) and other specifics, but the PCE would be largely independent of the industry itself. Taking a page from the Coalition for Affordable Drugs, the PCEs could eventually self-fund by shorting the companies that they file the IPRs against.
In practice, the telecom PCE would monitor the patents available on the market, assignments, NPE activity, and other metrics and would create a confidential priority list of the patents that are most threatening to the industry. Then, prior to any litigation being filed using the patent as a basis, the PCE would file an IPR against the NPE that holds the threatening patent. The PCE is lean enough to be able to act on assignment information almost immediately, and is powerful enough to kill bad patents rather than just squash the latest NPE incarnation to crop up.
Although some are afraid of “reverse patent trolls,” trolls that use IPRs to attack industry players, there is not a strong economic incentive to challenge the stronger patents of the industry players.3 Further, since PCEs are created by industry players, they can be limited to a scope that precludes them from becoming reverse patent trolls. Whether or not reverse patent trolls can be prevented, PCEs have little bearing on that analysis.
By filing IPRs rather than supporting litigation, the PCE can be run relatively cheaply. With IPRs costing on the order of $100,000 and litigation costing on the order of $10M, the 100x savings makes a PCE very palatable compared to relying on a joint defense group or the costs of litigation borne by a patent pool.4 Also, by specializing on filing IPRs rather than being stretched across many areas of patent litigation, a PCE and its staff will become specialized, and may be able to improve their success rate, even compared to the already great invalidity success rate of IPRs.5
Finally, a PCE is performing a public service, and should generate goodwill among the public. Not only is the PCE clearing potential landmines out of the way of its stakeholders, but it is clearing those same landmines out of the way of all businesses that operate in that technology sector. IPRs benefit the public by ensuring the value of a patent, and the PCE is assisting by targeting patents that may have slipped through during the first round of examination.
Situational Comparison of Patent Culling Entities to Other Strategies
Despite the improvements PCEs have over more traditional cooperative methods of combatting NPEs, there are certain situations where PCEs have drawbacks. The single largest drawback for a PCE is that has the potential to estop future invalidity arguments.
It is unknown, given the current case law, whether a PCE would be considered a privy to its stakeholders. There are certain cases which may eventually address whether RPX and other defensive aggregators are privy to their members when they file an IPR, but at this point, the courts have not been forced to address this issue.1 Given the factors described in Achates, one could readily argue that a PCE is not a privy of any of its stakeholders, because they are not “sufficiently close such that both should be bound by the trial outcome and related estoppels.”2 The fact that the PCE does not file IPRs in response to litigation should also be a large factor in favor or arguing against it being a privy of its stakeholders.
Estoppel in Future Litigation
The estoppel issue is highly linked to the privy issue. If it can be shown that the stakeholders did not exercise sufficient control over the PCE, the stakeholder can still preserve the same invalidity argument for use in district court that was used by the PCE in an IPR.3 By limiting the scope of the PCE and making sure it is merely a purpose built entity that files IPRs against NPEs in a technology space, the chances of collateral estoppel applying to any of the PCE’s stakeholders is significantly reduced, especially as compared to more directly controlled entities such as patent pools, joint defense groups, and defensive aggregators. If PCEs were adopted by companies in certain industries, it would be in their best interest to take the same legislative petitioning actions that they took prior to the AIA in order to attempt to influence Congress and the judiciary to work in favor of PCEs when it comes to the privity issue so that companies are not hampered by collateral estoppel simply because they are a stakeholder in a PCE that attempted a similar invalidity argument in an unrelated IPR.
This paper has proposed a new type of entity, a Patent Culling Entity (PCE) that uses the Inter Partes Review (IPR) process created by the AIA to more effectively protect companies from NPEs than the pre-AIA methods used in industry. The PCE is a purpose-driven entity created by industry players to attack patents owned by NPEs. PCEs uses the lessons learned from the collaborative efforts that were created and honed pre-AIA, and combines those pre-AIA lessons with the flexibility and cost effectiveness of a purpose-driven IPR filing entity. PCEs, as entities with the sole purpose of filing IPRs against bad patents, will be in the best position to challenge NPEs prior to litigation or even a demand letter.
Other entities, such as defensive aggregators and hedge funds, have harnessed the power of the IPR to challenge the validity of patents used by NPEs. However, these entities, especially the defensive aggregators, are larger, full-service companies that are not well suited to the fast-paced and nimble nature of IPR practice and confronting NPEs. By targeting the patents rather than each specific NPE, and by targeting the patents prior to a demand letter, PCEs are cost-efficient, effective means of nipping the NPEs in the bud.
Of course, industry players would not be interested in creating and funding PCEs if they are at risk of being estopped from asserting the best invalidity contentions at trial. With IPRs being a cost-saving measure compared to district court, there may be a conception that the IPR is not tried using the best resources available to the industry player. However, given the fact that courts have not found it necessary to establish privity between the defensive aggregators and their members, which is a much stronger and more direct connection than would exist between an industry player and a PCE, it is quite unlikely that a PCE’s arguments in front of the USPTO would estop any industry players, especially since these IPRs would be filed prior to any demand letter or other action from an NPE.
In this post-AIA world, industry players have struggled to limit the impact of NPEs. While companies have used a combination of pre-AIA tactics such as patent pools and defensive aggregators along with taking advantage of new AIA methods, such as IPRs. Given the difficulties of confronting NPEs, companies are in a position where they should be open to new ideas. The patent culling entity is such an idea that combines the best of the pre-AIA tactics and the new AIA methods, resulting in an effective deterrent to the worst of the NPEs. The PCEs create a hostile environment to the bad patents that are used by NPEs in the most egregious manner to extort money from companies in the industry. While PCEs are not a total solution to the NPE problem, they are an efficient investment that raises the stakes on the NPEs who acquire bad patents and assert them. By targeting the worst of the patents, PCEs guarantee, at the very least, that NPEs think twice before acquiring those bad patents, because they will run a significant risk of becoming the target of an IPR before they get a chance to assert the patent.
1 Nicholas M. Kunz and Andrew F. Halaby, “TROLL FIGHTER: An Interview with Vermont Attorney General William J. Sorrell,” 7 No. 3 Landslide 46 (January 2015).
2 James Bessen, Peter Neuhäusler, John L. Turner, and Jonathan Williams, “Trends in Private Patent Costs and Rents for Publicly-Traded United States Firms,” p. 6 (March 2015). Available at http://ssrn.com/abstract=2278255
3 Joel B. Carter, “RESPONDING TO A PATENT TROLL’S THREATS” 48-SUM Ark. Law. 30 (2013).
6 Scott S. Brown, “”NON-PRACTICING ENTITES AND ASYMMETRICAL LITIGATION,” 2014 WL 3773054 (June 2014).
7 Bessen, Neuhäusler, Turner, and Williams, supra Note 2.
8 John P. Hanish, “EFFECTIVELY DEFENDING AGAINST PATENT TROLLS AND THE EFFECTS OF INCREASING TROLL LITIGATION ON PATENT LAW AND PATENT DISPUTE PROCEDURES,” 2013 WL 6683686 (November 2013).
9 Id. at p. 5.
10 Brown, supra Note 6 at p. 3.
11 Id. at p. 5.
12 Edward D. Manzo, “America Invents Act–A Guide to Patent Litigation and Patent Procedure,” America Invents Act § 16:1 (August 2014).
13 Id at § 18:1.
14 Erik Hovenkamp and Herbert Hovenkamp, “PATENT POOLS AND RELATED TECHNOLOGY SHARING,” p. 1 (Sep. 2015). Available at http://ssrn.com/abstract=2645905
15 Jay Pil Choi, “Patent Pools and Cross-Licensing in the Shadow of Patent Litigation,” p. 4 (November 2003). Available at http://ssrn.com/abstract=466062
16 David Wanetick, “How Sun Tzu Would Outflank Patent Trolls,” 45 les Nouvelles 75 (June 2010).
17 Id. at 75-76.
Citations- Pre-AIA Strategies
1 Brown, supra Note 6 at pp. 5-6.
2 Hanish, supra Note 8 at p. 2.
3 Hovenkamp, supra Note 12 at p. 1.
5 Josh Lerner and Jean Tirole, “Efficient Patent Pools,” p. 2. Available at http://ssrn.com/abstract=322000
6 Id. at pp. 2-3.
7 Id.at p. 4.
8 Brown, supra Note 6, at p. 5.
9 Brown, supra Note 6, at p. 5.
10 Brent A. Olson, “Business Law Deskbook, Advanced Topics In Business Law,” 20A1 Minn. Prac., Business Law Deskbook § 17:1.
11 35 U.S.C.A. § 311(b).
12 35 U.S.C.A. § 312(a).
13 35 U.S.C.A. § 315(e)(2).
14 Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652,654 (September 30, 2015).
15 35 U.S.C.A. § 316(e).
16 35 U.S.C.A. § 316(d)(1).
17 Gregory M. Stone, “Recent Patent Developments and Their Effects on Innovation of Cyber Technologies,” 2014 WL 3810647 at p. 7 (August 2014).
18 Stone, supra Note 67, at p 7.
19 Eric W. Schweibenz, Robert C. Mattson, Lisa M. Mandrusiak, “Automatic Stay of Litigation Pending Inter Partes Review?,” 7 No. 1 Landslide 40, 42 (September 2014).
20 Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652, 654.
22 Tom Engellenner, Comparison of Federal Court, ITC, and USPTO Proceedings in IP Disputes, p. 31, http://www.aipla.org/committees/committee_pages/IP-Practice-in-Japan/Committee Documents/2014 MWI Presentations/Tom Engellenner – IP Dispute Cost Comparison.ppt (2014).
24 GEA Process Engineering, Inc. v. Steuben Foods, Inc.,618 Fed.Appx. 667 (2015); see also e-Watch, Inc. v. ACTi Corp., Inc., 2013 WL 6334372 (2013); see also Signal IP, Inc. v. Fiat U.S.A., Inc., 2015 WL 5719670 (2015); see also Hall Data Sync Technologies LLC v. Apple Inc., 2015 WL 4396349 (2015),
25APPLE INC. PETITIONER v. ACHATES REFERENCE PUBLISHING, INC. PATENT OWNER, IPR2013-00081, 2013 WL 8595560 (2013).
26 Apple v. Achates IPR.
28 Choi, supra Note 49, at p. 11.
29 Erik Hovencamp and Herbert Hovencamp, Patent Pools and Related Technology Sharing, p. 7, http://ssrn.com/abstract=2645905(Sep. 2015) .
30 Brian J. Love, Inter Partes Review as a Shield for Technology Purchasers: A Response to Gaia Bernstein’s The Rise of the End-User in Patent Litigation, 56 B.C. L. Rev. 1075, 1094 (footnote 59).
31 Harnessing Patent Office Litigation, Vol. XI (Sep. 16, 2015), http://ipr-pgr.com/wp-content/uploads/2015/11/IPR-PGR-Report-Vol.-11.pdf (84.3% of claims challenged in IPR are cancelled in the final written decision as of Sep 16, 2015).
32 Mike Masnick, Kickstarter Refuses To Settle or Be Silenced Over Ridiculous ‘Teledildonics’ Patent Lawsuit (Oct. 9, 2015, 2:04 PM), https://www.techdirt.com/articles/20151007/11394132469/kickstarter-refuses-to-settle-be-silenced-over-ridiculous-teledildonics-patent-lawsuit.shtml.
33 See also Jason Rantanen, Slaying the Troll: Litigation as an Effective Strategy Against Patent Threats, 23 Santa Clara Computer & High Tech. L.J. 159, 170-74 (2006).
34 Richard J. Gilbert, Antitrust for Patent Pools: A Century of Policy Evolution, 2004 Stan. Tech. L. Rev. 3, 85-86 (2004).
35 Richard Acello, Tools Against ‘Trolls’, 95-Mar A.B.A. J. 16 (2009).
37 Id. at pp. 2-3.
38 Id. at p. 3.
39 Id. at p. 3.
Citations – The AIA and IPRs
2 Phillip B. Nelson, Patent Pools: An Economic Assessment of Current Law and Policy, 38 Rutgers L.J. 539, 544 (2007).
3 Personal Audio LLC v. Togi Entertainment, Inc., 2014 WL 1318921 (March 31, 2014); Hall Data Sync Technologies LLC v. Apple Inc., 2015 WL 4396349 (July 17, 2015).
4 Wanetick, supra Note 16 at p. 77.
5 Erin Griffith, RPX and the Complicated Business of Stockpiling Patents for Good, not Evil, https://pando.com/2013/09/09/rpx-and-the-complicated-business-of-stockpiling-patents-for-good-not-evil/ (Sep. 9, 2013).
6 Anne Kelley, Practicing in the Patent Marketplace, 78.1 U. Chi. L. Rev. 115, 120 (2011).
8 Thomas G. Pasternak and R. David Donoghue, Making Joint Defense Agreements Work, 34.4 Litigation 1, http://www.chicagoiplitigation.com/files/2008/09/Making-Joint-Defense-Agreements-Work.pdf (2008).
9 Pasternak supra note 42, at 2.
10 Id. at 2.
11 Lerner, supra Note 28, at p. 2.
12 Pasternak supra note 42, at 2.
13 Wanetick, supra Note 18, at p. 77.
16 Pasternak supra note 42, at 2.
17 Wanetick, supra Note 18, at p. 77.
19 Yasser El-Gamal, Ehab M. Samuel, and Peter D. Siddoway, The New Battlefield: One Year of Inter Partes Review Under the America Invents Act, 42 AIPLA Q.J. 39, 62-63 (2014).
20 El-Gamal, supra Note 63, at p. 47.
21 El-Gamal, supra Note 63, at pp. 46-47.
22 El-Gamal, supra Note 63, at p. 47.
23 Id. at 54.
Citations – Patent Culling Entities
1 El-Gamal, supra Note 63, at pp. 48-50.
2 Joseph Walker and Rob Copeland, New Hedge Fund Strategy: Dispute the Patent, Short the Stock, Wall Street Journal, April 7, 2015.