Tech Startups: Get Smart about Patent Litigation

The Webb Law Firm

The Webb Law Firm

By Daniel H. Brean, The Webb Law Firm

It is a sad fact, but success often breeds opportunistic lawsuits.  The technology sector seems especially vulnerable to this phenomenon, and the litigation de jour is patent litigation.  Startups have never been targeted with patent infringement lawsuits more than they are today.  Companies that dance in the footsteps of elephants (i.e., tech giants) and show promise as new competitors may find themselves being sued for infringement by a well-funded plaintiff.  Additionally, when startups garner enough attention they can find themselves targeted for patent infringement by patent assertion entities, or “patent trolls,” who are not market participants but merely own patents and attempt to enforce them in order to monetize them.  Patent trolls send demand letters and file lawsuits to pursue these monetization efforts.  The end result of these actions can be suppression of competition and stymied innovation.

Receiving a demand letter or a complaint for patent infringement can be intimidating.  The technology and the law at issue is often highly complex, and the burden and expense of litigating can render a dispute a “bet the company” scenario.  Most patent trolls are looking for at least tens of thousands of dollars to settle cases early on, with the settlement demands increasing if the litigation proceeds past the initial stages.  Ultimately, they will seek millions of dollars in damages for the cases that go to trial.  Operating companies may be seeking even more money, mandatory licensing schemes, and might also want to get an injunction to stop a company from making, using, and selling its technology.  Often these demands are made with barebones analysis and paper thin allegations, relying on the expense and hassle of defending an uncertain and vaguely-defined case to lead most companies to try to resolve matters outside of formal legal proceedings.

While there is no doubt a place for legitimate disputes regarding the scope of patent claims and the need to enforce patents, curbing abusive patent litigation is so important to this country that all three branches of our federal government are taking steps to help stem the tide.  Congress has been considering legislation to reduce patent infringement litigation abuse for the past few years, and seems to be nearing the passage of such reform.  Such legislation would, among other things, potentially increase the burden of filing lawsuits by requiring more specificity about the alleged infringement from the patent owner when the case is filed.  The Supreme Court is set to consider this term whether there are better ways to make those who file baseless lawsuits pay the legal fees incurred by their targets who defend themselves and prevail in the litigation.  And President Obama recently issued several executive orders to improve the quality of issued patents, and even worked with the Patent Office to launch a website with information to assist those who may find themselves threatened with patent infringement allegations (http://www.uspto.gov/patentlitigation).  Getting up to speed on patent litigation via this website is a must for any new or small technology company.

This new website explains the basics of how to tell if a patent is infringed and how to tell if it is valid.  It identifies some options to fight a lawsuit or to challenge the validity of a patent in a proceeding at the Patent Office.  It provides information on how to learn who has been sued or threatened with litigation over a particular patent, and how to find the court documents or demand letters in those related cases, along with crowd-sourced discussions about the patent owners and the patents in some cases.  It includes guidelines for how to understand and respond to both demand letters and complaints.  There is also a glossary of patent terminology and there are links to resources for legal research.   Finally, the website provides guidance on when you may need to seek legal help and how to find qualified counsel.

Hopefully, you never find yourself targeted with spurious patent infringement claims, but if you ever do, do not allow yourself to be blindsided or intimidated when faced with an allegation of patent infringement.  Once a demand letter is sent or a lawsuit is filed, a lot can happen very fast and legal assistance may be necessary.  Knowledge is power, so empower yourself to defend against infringement allegations that have no merit.

Daniel H. Brean is a senior intellectual property attorney with The Webb Law Firm in Pittsburgh, PA.  He is an experienced patent litigator and patent prosecutor, working primarily with mechanical, electrical, and software technologies.  Dan also has considerable expertise in the area of industrial design protection and design patents, frequently publishing and speaking on these topics.  Questions or comments for Dan may be directed to dbrean@webblaw.com or (412) 471-8815.  The opinions expressed in this article are solely those of the author, and should not be attributed to The Webb Law Firm or any client thereof.

The Webb Law Firm Hires Business Development and Marketing Administrator

The Webb Law Firm

The Webb Law Firm

Kathleen M.  Bodenlos has joined The Webb Law Firm as a Business Development and Marketing Administrator.

For the past 20 years, Ms. Bodenlos has worked in business development for several diverse industries including medical devices, industrial equipment, hardware and software, design and engineering services and plastic injection molding.  Prior to joining The Webb Law Firm, she led the business development initiatives for a private equity firm’s design and manufacturing acquisition.  Ms. Bodenlos is a Pittsburgh native and a member of the Legal Marketing Association.

The Webb Law Firm has been helping innovators safeguard their discoveries, advance their technologies and achieve historic milestones since 1845.  The Firm’s patent attorneys hold dual degrees in law and the sciences and combine their legal expertise with an in-depth personal understanding of business and industry.  The Webb Law Firm is located in One Gateway Center in downtown Pittsburgh.

The Webb Law Firm announces two hires

Kenneth D’Alessandro, Electrical and Computer Science Expert, Joins The Webb Law Firm

Kenneth D’Alessandro has joined The Webb Law Firm, with his extensive practice and over thirty years of experience in obtaining and enforcing electrical, computer science, materials science and medical technology patents, adding to the Firm’s expertise in protecting and enforcing intellectual property for its clients.

Prior to joining The Webb Law Firm, Mr. D’Alessandro founded and managed his own intellectual property firms for almost twenty years, and was the head of the Patent Practice Group at a large southwest regional firm in Nevada, Arizona, New Mexico and California. Mr. D’Alessandro’s experience includes all aspects of intellectual property law, including preparing, prosecuting, and litigating patents, trademarks, trade secrets, and copyrights, as well as related licensing and transactions. His technical expertise includes analog and digital integrated circuits, semiconductor structures and fabrication processes, gaming and entertainments devices, systems and methods, antennas and other rf technologies, communication systems, MIDI systems, materials processing, medical instruments and systems, and neural networks. He is a named inventor on several patents. Mr. D’Alessandro also managed his own company that designed multimedia control systems, and worked as an electronics engineer and audio engineer prior to his legal career.

Mr. D’Alessandro is admitted to practice in California and Nevada, the United States Patent and Trademark Office, the U.S. Court of Appeals for the Federal Circuit, the U.S. Court of Appeals for the Ninth Circuit, the U.S. District Courts for the Eastern District of California, the Central District of California, the Northern District of California and the District of Nevada, the U.S. Court of Federal Claims, and the U.S. Court of International Trade. Mr. D’Alessandro received his J.D. degree from The University of California, Los Angeles School of Law, where he was a member of the Law Review. He was a law clerk for the Honorable Giles S. Rich of the United States Court of Customs & Patent Appeals. Mr. D’Alessandro received his B.A. degree cum laude in Physics from San Francisco State University.

David DuMont Joins The Webb Law Firm as an Intellectual Property Litigator

David DuMont has joined The Webb Law Firm as an Intellectual Property attorney with particular focus on intellectual property litigation relating to patent, trademark, copyright, and other Intellectual Property issues.

Prior to joining The Webb Law Firm, Mr. DuMont completed a two-year clerkship under The Honorable Cathy Bissoon with the United States District Court for the Western District of Pennsylvania. He assisted the Court in the resolution of many difficult and complex litigation issues, providing him with valuable insight into the litigation process.

Mr. DuMont graduated in 2001 from The Michigan State University with a degree in Astrophysics and a double major in Physics, and studied at the graduate level in Physics at The State University of New York at Stony Brook. He was a Physics Associate at the Brookhaven National Laboratory, and participated in the United States Particle Accelerator School at Yale University and at the University of California at Santa Barbara. Mr. DuMont received his J.D. in 2007 from the University of Pittsburgh School of Law, where he received the Alcoa Scholarship, the Dean’s Scholarship, and the Foreign Language Areas Studies Fellowship (Russian). He is admitted to practice in Pennsylvania and the U.S. District Court for the Western District of Pennsylvania.

The Webb Law Firm has been helping innovators safeguard their discoveries, advance their technologies and achieve historic milestones since 1845. The Firm’s patent attorneys hold dual degrees in law and sciences and combine their legal expertise with an in-depth personal understanding of business and industry. The Webb Law Firm is located in One Gateway Center in downtown Pittsburgh. For more information, visit www.webblaw.com.

The Webb Law Firm Slays Another Patent Troll

The Webb Law Firm

The Webb Law Firm

The Webb Law Firm achieved another victory on behalf of its client Newegg Inc., the leading electronics e-retailer in the United States, in Newegg’s long-running legal battle against “patent troll” Soverain Software LLC. On September 3, 2013, the Court of Appeals for the Federal Circuit invalidated an additional claim of Soverain’s widely asserted “shopping cart” patent and denied Soverain’s request for an en banc rehearing of the Court’s January 28, 2013 decision invalidating the balance of the claims asserted against Newegg.

Soverain originally sued Newegg and other well-known e-commerce retailers in 2007, alleging that the defendants infringed three patents allegedly covering the online checkout process, order histories, and the online “shopping cart.” All of the other defendants settled while Newegg alone took the case to trial. Following the September 3, 2013 decision, all of the asserted claims for each of Soverain’s three patents have been held to be invalid. The results of this decision will be far reaching as the Court agreed that the common sense application of well known shopping techniques to the Internet alone is not patentable. This decision also likely renders moot Soverain’s later multi-million dollar verdicts against Avon and Victoria’s Secret based upon the same patents, as well as the dozen cases pending against addition e-retailers.

The Federal Circuit’s decision in Soverain Software LLC v. Newegg Inc. is The Webb Law Firm’s third significant victory on behalf of Newegg in 2013. Earlier this year, the Federal Circuit also affirmed The Webb Law Firm’s trial court victories against Alcatel-Lucent USA Inc. and Kelora Systems LLC.

The Webb trial and appeal teams included Kent E. Baldauf, Jr., James J. Bosco, Jr., Dan H. Brean, Bryan P. Clark, and David C. Hanson.

The Webb Law Firm has been helping innovators safeguard their discoveries, advance their technologies and achieve historic milestones since 1845. The Firm’s patent attorneys hold dual degrees in law and the sciences and combine their legal expertise with an in-depth personal understanding of business and industry. The Webb Law Firm is located in One Gateway Center in downtown Pittsburgh.

The Webb Law Firm Elects Kent E. Baldauf, Sr. as Chairman, Richard L. Byrne as President and Nathan J. Prepelka as Secretary

The Board of Directors of The Webb Law Firm has elected Kent E. Baldauf, Sr. as Chairman of the Board, Richard L. Byrne as President, and Nathan J. Prepelka as Secretary.

Mr. Baldauf succeeds William H. Logsdon, who was Chairman of the Board for 16 years. Mr. Byrne succeeds Russell D. Orkin, who was President of the Firm for 16 years. Mr. Prepelka succeeds Mr. Byrne as Secretary. Mr. Paul M. Reznick continues as Treasurer. The Board of Directors wishes to thank Mr. Logsdon and Mr. Orkin for their outstanding service to the firm. During their tenure, the firm, which specializes in Intellectual Property matters, has grown from 17 attorneys to 43 attorneys. Mr. Logsdon and Mr. Orkin will continue to practice Intellectual Property law with the Firm.

Mr. Baldauf is an Attorney with more than 40 years of experience with patents, trademarks, copyrights, and related practice areas. Mr. Baldauf received his J.D. degree from the Cleveland Marshall College of Law, Cleveland State University, where he was a member of the Editorial Board of the Law Review. Mr. Baldauf received a B.S. degree in Metallurgical Engineering from Carnegie Mellon University.

Mr. Byrne is an Attorney who has addressed every aspect of intellectual property law during his 34-year career. Mr. Byrne received his J.D. degree from the George Washington University, and a B.S. degree in Electrical Engineering from Carnegie Mellon University.  Mr. Byrne was a Clerk for the Honorable Judge Jack R. Miller for the United States Court of Customs and Patent Appeals (the predecessor to the current U.S. Court of Appeals for the Federal Circuit).

Mr. Prepelka is an Attorney who works with all aspects of intellectual property law, including computer-implemented method, systems, software, and business process patents, and cyber law matters involving domain name disputes and patent, copyright, and trademark Internet and computer issues. Mr. Prepelka received his J.D. degree from Duquesne University School of Law, and a B.S. degree in Chemical Engineering from the Pennsylvania State University.

Mr. Reznick is an Attorney with 27 years of experience with intellectual property law, including patent and trademark prosecution, patent interference, litigation and client counseling. Mr. Reznick holds a J.D. degree from Duquesne University School of Law, and M.S. and B.S. degrees from Carnegie Mellon University, where he majored in mechanical engineering and economics.

The Firm’s Management Committee continues to be headed by Chairperson Kirk M. Miles, who is joined by Lester N. Fortney and Kent E. Baldauf, Jr.

The Webb Law Firm has been helping innovators safeguard their discoveries, advance their technologies and achieve historic milestones since 1845. The Firm’s patent attorneys hold dual degrees in law and the sciences and combine their legal expertise with an in-depth personal understanding of business and industry. The Webb Law Firm is located in One Gateway Center in downtown Pittsburgh.