In-house counsel on the need for more patent reform

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

In-house counsel on the need for more patent reform

In-house lawyers disagreed last week about the need for more reform of patent laws to tackle litigation from so-called patent trolls

Mary Huser

Speaking at the International Women’s Leadership Forum in San Jose last week, Mary Huser, general counsel, BlackBerry Technology Solutions (pictured, right of picture with Alexis Garcha), claimed there was a fatigue within the legal profession caused by having to deal with high numbers of lawsuits filed by non-practising entities.

“Last year was a watershed for the explosion of NPE activity. Maybe there was some nugget in some cases but most were completely frivolous,” she said.

Huser said that the America Invents Act (AIA) had provided operating companies with more tools to fight back, including new rules on fighting patent validity before the PTAB.

“Many NPEs are public companies that need to present quarterly reports just like any other company. The threat of a two-to-three-year delay is a real threat. The AIA presents a practical tool. If we can show prior art, the potential level of damages exposure and so on, and lay it out at the start, if we tell them we will go to the PTO and litigate for a few years – then that presents a nice little leverage for settling early.”

The downside of such an approach, said Huser, is the risk that the plaintiff will file amended claims: a risk that must be assessed strategically.

But while she welcomed the impact of parts of the AIA, she argued that courts must be more proactive in tackling frivolous litigation.

“I have encouraged judges to develop local rules to deal with the administration of cases. There has to be a real motion to dismiss stage. That would ensure that non-meritorious cases would not go forward.”

But Alexis Garcha, senior IP litigation counsel at Nokia, told the audience that there are important reasons for protecting innovation.

While she acknowledged that some people now no longer regard Nokia as an operating company, after it sold its handset business to Microsoft last year, she said that the company still has valuable intellectual property.

“I am wary of too much patent reform, Garcha said. “Patent aggregators actually have a value. Frivolous patent suits are an abuse but we don’t want to prevent everyone from enforcing their patents.”

more from across site and SHARED ros bottom lb

More from across our site

Attorneys explain why there are early signs that the US Supreme Court could rule in favour of ISP Cox in a copyright dispute
A swathe of UPC-related hires suggests firms are taking the forum seriously, as questions over the transitional stage begin
A win for Nintendo in China and King & Spalding hiring a prominent patent litigator were also among the top talking points
Rebecca Newman at Addleshaw Goddard, who live-reported on the seminal dispute, unpicks the trials and tribulations of the case and considers its impact
Attorneys predict how Lululemon’s trade dress and design patent suit against Costco could play out
Lawyers at Linklaters analyse some of the key UPC trends so far, and look ahead to life beyond the transition period
David Rodrigues, who previously worked at an IP boutique, said he may become more involved in transactional work at his new firm
Indian smartphone maker Lava must pay $2.3 million as a security deposit for past sales, as its dispute with Dolby over audio coding SEPs plays out
Powell Gilbert’s opening in Düsseldorf, complete with a new partner hire, continues this summer’s trend of UPC-related lateral movement
IP leaders at Brandsmiths and Bird & Bird, who were on opposing sides at the UK Supreme Court in Iconix v Dream Pairs, unpick the landmark case and its ramifications
Gift this article