A reader of intellectual property trade publications is certainly aware that there exists a degree of antipathy towards “Non-Practicing Entities” (“N.P.E.s”), wherein such entities are pejoratively known as “trolls.” Most of this is instigated by the corporate infringers (“scumbags”) sued by the N.P.E.s. Much of it is unwarranted; some, however, is not.
A recent case is so outrageous as to give even trolls a bad name. Triune Star, Inc. v. The Walt Disney Company, WDIG Mobile, LLC (D/B/A Disney Mobile), Pantech & Curitel Communications, Inc., Pantech Co., Ltd., Pantech Wireless Inc., LG Electronics, Inc. and LG Electronics Mobilecomm USA, Inc.
Triune owns a patent covering cameras with a built-in GPS locator. The claims are limited to infrared cameras. This limitation was added, by Triune, in order to secure allowance of the claims. The patent issued in 2000.
Undaunted by the aforesaid limitation, Triune sued Disney and the several cell phone manufacturers in 2007, claiming that cell phones, with camera capability and internal GPS, infringed their patent, although the subject cell phone cameras did not operate in the infrared range – a fact readily apparent to everyone. Triune’s trial counsel, who had themselves prosecuted the patent-in-suit and were well aware of the limitation to infrared cameras, proceeded nevertheless.
The defendants all moved for summary judgments of noninfringement, which were granted. They then moved for sanctions under Rule 11 which allows for such imposition if a lawsuit is “not well grounded in fact and is not warranted by existing law or a good faith argument for the extension, modification, or reversal of existing law.”
The Court found that “any reasonable pre-suit investigation would have revealed that the allegedly infringing devices could not have literally infringed Plaintiff’s patent and that the suit was therefore frivolous” and granted the motions for sanctions. The plaintiff presented claims totaling over $600K. In a rather lengthy opinion, the Court ultimately awarded about $190K, to be imposed against both the plaintiff and its attorneys.
THE LESSONS TO BE LEARNED: For N.P.E.s – there is a difference between enforcing your rights and extortion; for defense counsel – get real, even the courts think your fees are outrageous.