Whose Patent Are You Infringing? Advice for Printers

Patent Trolls, or patent assertion entities, are firms that acquire patents primarily to pursue licensing fees. Instead of using or developing the acquired technology or transferring it to other businesses, these companies extract fees by threatening or initiating lawsuits, compelling others to settle.

This year, countless printing executives found themselves faced with alleged patent infringements. Accusations came from patent holders of QR codes, scanning, computer-to-plate workflow, and online ordering, all demanding licensing fees.

The Printing Industries of America identifies eight patent owners – not all of whom qualify as trolls – seeking licensing fees from print companies.

These patent owners typically initiate their claims by sending a legal letter accusing the printer of infringing a specific technology used in their operations. This letter outlines the patents and technology in question and offers a license for continued usage, mentioning or implying the risk of a lawsuit.

1. React promptly to the initial letter. Ignoring it won’t shield you from potential lawsuits and might increase your chances of being deemed a deliberate violator, subject to harsher penalties. Do not discard the letter!
2. Consult with an attorney, preferably before a lawsuit commences, to obtain an infringement opinion. A pre-lawsuit non-infringement opinion can help defend against accusations of willful infringement.
3. In your written reply, assure the troll and its attorney of your firm’s respect for patent rights. However, clarify that you won’t enter licensing negotiations until you understand the specific patent claims allegedly infringed. Request a comparative chart of the patent claims and your accused technology for further evaluation. If the response deadline is nearing, ask for an extension.
4. If you manage to get the troll to specify the infringed patent claim, your attorney might present a non-infringement claim chart. This evidence might dissuade the troll from proceeding with a lawsuit.
5. Inform your relevant equipment and software suppliers about the infringement claim. Ask for their assistance in reviewing the patent and commenting on whether their equipment is causing the infringement. Review your purchase contracts to determine if your suppliers have agreed to protect you against patent infringement lawsuits.
6. Inform your local affiliate and the Printing Industries of America about the allegations to understand the extent of the accusations and learn about other companies’ responses. Joining forces with other accused companies might lead to shared legal defenses, saving on legal costs.
7. Continue requesting evidence of infringement from the troll and attorney. If they can’t provide this, consider the accusation as groundless and, if sued, seek to dismiss the suit with the attorney’s fees and penalties against the accusing attorney.
8. Read the patent claims. Even though it’s the patent owner’s responsibility to show infringement, it’s beneficial to conduct your evaluation. If you believe there’s no infringement, write it down and request to withdraw the accusation.

Jim Workman, Assistant Vice President; and
Dr. Mark Bohan, Vice President, Technology and Research, Printing Industries of America

Other options are also available. This article was published by Printing Industries of America.