Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

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 ros bottom lb

More from across our site

Online storytelling platform Humans of Bombay isn’t wrong for trying to protect its copyright, but it could have handled its dispute better
We have started accepting submissions from in-house counsel and teams for the 19th annual Managing IP Awards programme
Patient groups and generics makers may have to bear the brunt of India’s latest attempt at patent reform
Each week Managing IP speaks to a different IP lawyer about their life and career
Paolo Tavolato, who will share the role, said private equity support would help the IP consultancy achieve its ambitious M&A plans
Cyril Amarchand Mangaldas has hired former Anand & Anand partner Swati Sharma and hopes to compete with specialist IP firms
Rapporteur-Judge András Kupecz ruled that education and training weren’t legitimate reasons for a member of the public to access documents
Searches for comparison prior art will be a little easier, but practitioners will have to put more thought into claim construction and design patent titles
The Helsinki local division rejected AIM Sport’s request for a preliminary injunction in a dispute with rival Supponor
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP