Friday, March 1, 2013

The SHIELD Act - Is creating “second class citizenship” for certain patent owners the answer to the “troll problem”?

Rep. Peter DeFazio recently introduced a bill to the House, H.R. 845, cited at the “Saving High-Tech Innovators from Egregious Legal Disputes Act of 2013,” or by its cooler, short-hand name, the SHIELD Act.  The SHIELD Act has a noble purpose.  After all, who can argue with the proposition that innovators deserve saving from egregious legal disputes?  Despite the noble purpose, however, it is reasonable to question whether the method being employed by this bill – singling out a class of patent owners for disparate treatment by the courts – is the right way to solve the “problem.”  Let’s explore.
First, let’s consider what I perceive to be the real problem.  There has been a growing trend over the last decade for third parties to acquire patent rights as an investment vehicle and assert those rights to obtain a return on their investment.  Unfortunately, in many cases, the assertion is utterly baseless, yet respectable companies with a need to make reasonable business decisions are compelled to pay to settle these cases because it is far less expensive to pay than it is to fight and win.  This is certainly a problem:  bad actors bringing frivolous patent suits against good companies with the goal of extracting a settlement from those good companies based on the rational business judgment that it is far less expensive to settle the frivolous suit rather than pay much larger legal fees to prove non-infringement and invalidity.  No one can reasonably defend this type of abusive conduct and any legislation that could effectively eradicate this bad behavior, without prejudicing patent owners that did not engage in such egregious conduct, would be a tremendous benefit.  The question is, does the SHIELD Act acomplish this difficult goal?

The SHIELD Act has at its core a loser-pays provision that will require some patent owners (hint – NPE’s) to “post a bond in an amount determined by the court to cover the recovery of full costs [which include “reasonable attorney’s fees”].  If the patent owner does not prevail, on both infringement and validity,  “the Court shall award the recovery of full costs to any prevailing party asserting invalidity or noninfringement…upon the entry of a final judgment if the court determines that the adverse party did not meet at least one of the conditions described in subsection (d),” which defines the special class of patent owners subject to this Act.
Looking at subsection (d), the act applies to all patent owners, except those that fit into an enumerated exception.  These exceptions serve define who is a “good” patent owner who is outside the scope of the act.  The exceptions in subsection (d) include (1) the “original inventor” or “original assignee” at the time of patent issuance, (2) a party that can demonstrate “substantial investment…in the exploitation of the patent through production or sale of an item covered by the patent,” or (3) “University or Technology Transfer Organization[s]."  When you take out these exceptions, the SHIELD Act applies to entities that acquire the patent from the original owner and do not currently practice the invention.  This second-class of patent owners would be required to post a bond to cover the defendant’s litigation costs – typically in the 1-3 Million dollar range for a “simple” patent case with less than $25 Million in dispute – and risk forfeiting this amount if they don’t win at trial.  It is important to note, that the fees are not paid as a result of baseless litigation or misconduct.  It is simply because the patent owner does not prevail.

Even though I often represent corporate defendants accused of patent infringement by non-practicing patent owners, I am hesitant to define the “ NPE problem” more broadly to include all patent owners who don’t practice the patented invention but who have a reasonable and good faith basis to assert infringement. It is certainly a strategic concern for defendants that patent litigation against a non-practicing entity is the worst form of “assymetric warfare” with no upside for the defendant and little downside for the patent owner. It is also a practical business concern that once a defendant is named in a patent suit it is already a “loser” in that it must divert resources to address the suit, regardless of the merits. But, these concerns are not unique to patent litigation.   A patent is simply a bundle of rights, and those rights shouldn’t depend on the nature of the patent owner.   After all, even a landowner that is a complete jerk still has the right to enforce his no tresspassing signs and keep people off of his property.

The exceptions in the Act are intended to isolate “patent trolls” but will not be so limited.  For example, what happens if GOOD COMPANY assigns its patents to its own patent holding entity for tax or management purposes, e.g., GOOD COMPANY HOLDING LLC, (which is not uncommon), and it does not make a product within the scope of one of its patents but its competitor does with a directly competing product.   If GOOD COMPANY wants to bring suit to stop the infringement or secure a royalty from COMPETITOR, it would be subject to the SHIELD Act.  Lets go one step further and assume that COMPETITOR brought the first action and GOOD COMPANY asserted that same patent as a defensive counter-claim.  Same result, GOOD COMPANY is subject to the Act and may need to post a substantial bond in order to maintain its counterclaims.  What about an “original inventor” that wants to take advantage of the benefits of incorporation and assigns her rights to her company?  That small company formed by the “original inventor” is now subject to the SHIELD Act and must find a way to post a bond for several million dollars before bringing suit, regardless of how meritorious (or not) the suit may be.  It is not too difficult to think of more examples of how this Act may have unintended, or at least undesirable, consequences for many patent owners that are not "bad actors."
The SHIELD Act has a noble purpose in reducing the number of baseless patent infringement suits, but it seems to be punishing the wrong behavior.  The “problem,” as identified by the name of the Act, is “Egregious Legal Disputes.”  This is the conduct that patent reform needs to address rather than discriminating against a class of patent ownership that cannot be properly tailored to truly solve the “problem” without significantly impairing the value of all patents.  The bench, the bar and Congress each have a responsibility to keep looking at ways to curb litigation abuse and reduce litigation costs.  I applaud Congressman DeFazio’s efforts to curb litigation abuse, but the SHIELD Act, as it currently stands, does not seem to be the answer to the “problem.”

The opinions expressed above are ONLY mine and should not be attributed to Dorsey & Whitney, its clients, or anyone else. (This is always the case, but worth mentioning again in connection with this posting since reasonable minds can certainly differ on this topic.)


  1. Well put. Unlike practically all of the near-hysterical bemoaning about patent assertion entities, your comment identifies the correct problem. In doing so, it reveals several of the problematic aspects of the SHIELD act.

    If the main concern is baseless lawsuits, the law already permits courts to sanction litigants and attorneys who advance positions that have no good faith basis in the law. If courts were less reluctant to employ the protections the law already allows, the issue of frivolous lawsuits would be diminished.