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Google, NetApp Sidestep Courts to Combat Patent Claims

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Google Inc. on Sept. 4 settled its patent review against licensing company EMG Technology LLC, saying the two also had dismissed their court claims against each other. Photographer: Tony Avelar/Bloomberg

Rackspace Hosting Inc. lawyer Van Lindberg is fed up with what he considers dubious patent-infringement lawsuits -- like when licensing company Rotatable Technologies LLC demanded $75,000 to settle a February case.

Many companies negotiate to pay the company to go away, since it’s cheaper than what may become a lengthy court battle.

Using a procedure called inter partes review created by the 2011 America Invents Act, Lindberg instead petitioned the U.S. Patent and Trademark Office for a new examination of the computer-image display patent. If Rackspace persuades the agency the patent never should have been issued, the suit will be dismissed. Rotatable says in court documents its patent is valid. Its lawyer Austin Hansley in Dallas didn’t return calls.

“We said, ‘No thanks’” to Rotatable’s demand, said Lindberg, head of the intellectual property section of the San Antonio-based Web computing services provider. Rackspace, he said, decided “to stand up and not be pushed around.”

Companies including Google Inc., NetApp Inc. and Oracle Corp. see the new review as a way to fend off royalty demands by patent-assertion entities -- sometimes derided as trolls. They like the process for the reasons patent-licensing firms don’t: they offer quicker rulings at less cost than litigation and shift the burden of proof to patent owners.

“We are looking at the most cost-effective way of dealing with dubious suits,” said Doug Luftman, chief intellectual property counsel of NetApp, a Sunnyvale, California data-storage company.

Tech companies say patent lawsuits -- especially targeting end users or one aspect of a business -- drain resources and innovation. Patent-licensing companies say litigation protects inventions, though Congress is considering curbs on abuse.

Faster Timetable

At least 592 petitions have been filed since reviews began a year ago, exceeding the 520 the agency expected. Two cases were decided as of Oct. 3, as the patent office stayed open during the government shutdown. Costs run as much as $300,000, less than half of the minimum $650,000 for a court challenge.

Patent owners win more than half of trials, while the median damage award for patent-licensing companies in 2012 was $11.2 million, a PricewaterhouseCoopers LLP study found.

Under the new patent law, the Arlington, Virginia-based patent office set up processes to look at some finance-related business methods, such as SAP AG’s challenge of Versata Software Inc.’s patent for customized pricing, and to streamline the older procedure for anyone challenging a patent’s validity.

Decisions on whether a patent is valid or not are required within 12 months. Patent reexaminations under the old rules ordinarily can take years. Patent office officials had no comment for this story, said Paul Fucito, an agency spokesman.

‘Bad Patents’

Scott Cole of the law firm McKool Smith in Austin, Texas, says the agency’s rules can work against patent owners, whom he often represents.

Courts presume patents are valid while the patent office doesn’t. Patent holders can’t demand company e-mails or depose employees, as they can in court. The focus is technical evidence, such as whether earlier inventions invalidate the patent. Examiners have patent backgrounds, unlike most jurors.

“The odds of winning a validity challenge are orders of magnitude higher than in other current forums,” Cole said. The patent office “wants to be heavily involved in assessing validity of their patents because they get political criticism when they issue a bad patent. It takes the heat off.”

Nothing prevents multiple review requests for the same patent, so challengers can “come back and try to win again on the same arguments or different arguments,” Cole said.

Google, 3M

Michael Fleming, a former chief administrative patent judge who helped set up the new reviews, said the patent office can combine related cases and disallow baseless challenges.

“When you file your petition, you’re required to show that there’s a reasonable likelihood that indeed there is one claim that would be invalid,” said Fleming, now at Miles & Stockbridge in Tysons Corner, Virginia.

Google wants Congress to expand the quick review for business methods beyond finance because it allows a broader range of arguments, such as whether the idea is an abstract concept ineligible for legal protection, said Laura Sheridan, Google’s patent counsel.

Some of the nation’s biggest companies, including General Electric Co., 3M Corp. and Johnson & Johnson oppose expanding business-method patent reviews. It could risk patents covering data processing for cancer therapies and safety systems for cars, they told lawmakers.

There’s no guarantee of winning at the patent office and there’s the risk that losing will damage your court case, Google’s Sheridan said. “If you’re not successful, the jury will hear about that,” she said.

41 Settlements

Offsetting the risk, the reviews have helped some companies sued for patent infringement convince litigants to settle, sometimes for less money than they originally demanded.

Forty-one patent challenges have been settled so far. Google settled two lawsuits filed against it after asking for reviews. One, against licensing company EMG Technology LLC, was announced last month and involved dismissal of legal actions.

The reviews also are being used by competitors involved in litigation. Real estate listing company Trulia Inc. filed a petition with the patent office after being sued by Zillow Inc., and persuaded a federal judge to put the case on hold until the patent-validity review is completed. Zillow said Trulia was “employing gamesmanship” after it couldn’t get the case dismissed by the trial judge.

Patent Pushback

Rackspace is planning another 10 challenges, despite the costs of as much as $300,000 each.

A federal judge already found that one element of Rototable’s patent is invalid. Rotatable is appealing that order, as well as the judge’s interpretation of key terms of the patent. Rackspace seeks the suit to be put on hold until that appeal is decided.

For small companies that may be unable to finance patent challenges, Google and NetApp started Unified Patents Inc. to help them pool resources.

“All of these companies are seeing litigation on the same patents across all of their products,” said Kevin Jakel, a former Intuit Inc. patent counsel who founded Unified Patents.

Almost every review filed in the past year involves patents also in litigation, said Scott Daniels, a lawyer with Westerman Hattori in Washington who blogs about new requests. An increasing number involve drugs and medical devices, though most are for computer-related technology, he said.

“If you try to sue a ton of companies and make a mint off each one, you have to expect you’re going to get some pushback,” Daniels said.

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