Ask Slashdot: What To Do About Patent Trolls Seeking Wi-fi License Fees? 347
An anonymous reader writes "My company has been contacted by certified letter by Delaware law firm. They are seeking license fees for a Wi-fi patent. I believe this is a patent troll (not that this matters in relation to dealing with this issue). This is a newly formed law firm less than 4 months old. This patent is U.S. Patent No. 5,506,866. This patent covers equipment and method related to the transmission of information involving the multiplexing information into a stream of signal points (and demultiplexing the same), and related technology. They have 'offered' to license this patent with no amounts specified. Unfortunately we are a small free software company. The company is setup as a sole proprietorship. I'm not asking for legal advise from the Slashdot community. The question is where might one look for 'legal counsel' with the expertise to answer these types of legal questions as it relates to this inquiry. I would prefer to avoid legal fees, court cases, or license fees running the company into the ground. The company is registered in New Jersey."
See an IP laywer. (Score:3, Informative)
Wwhere might one look for 'legal counsel' with the expertise to answer these types of legal questions as it relates to this inquiry. I would prefer to avoid legal fees, court cases, or license fees running the company into the ground.
You should see an IP laywer. While this won't avoid you all legal fees, you'll be able to get some basic answers for a small cost, and it will let you know if your other constraints (avoiding court or license fees) are reasonable.
Contact an atty. (Score:5, Informative)
You should find yourself an attorney.
1) this patent was filed in 1993, making it a 17 years from issue date patent. Based upon it's issue date of April 9, 1996, it expires (dies) on April 9, 2013. So in a very very short time, the patent will be useless anyway.
2) What is claimed is based upon side channel data in a simultaneous analog/digital signal. It is very unlikely to actually apply to WiFi, but if they can scare you into paying them, then they win. With a competent atty., it is very likely you can make them look elsewhere for victims they can frighten into settlements.
Re:Links? (Score:5, Informative)
http://www.google.com/patents/US5506866
Lazy bones.
Re:not the right place (Score:4, Informative)
a public debunking with a standard legal response is exactly what's needed. saves everyone else he time and effort.
Re:See an IP laywer. (Score:3, Informative)
Re:Curious (Score:5, Informative)
Being organized as a sole proprietorship means his personal assets are at risk. These types of legal debts are not disposable by bankruptcy, so they could follow him around the rest of his life.
Modem patent - not WiFi (Score:4, Informative)
This patent is explicitly for PSTN modems, from the looks of it low rate V34 or V17, and is extremely unlikely to be held legitimate or even remotely applicable to WiFi if you go to court/war over it. Further, it expires very soon, so it may be best to not respond and wait for expiration. Simply looking at the diagrams included in the patent text may be sufficient to get the case thrown out, should it come to that. However, by that point, you will have wasted a ton of money.
Probably the best approach is to not respond, and do no further releases until its expiration in april so that if a suit arrives, you can say that you immediately stopped using the offending code. I don't know that I would even bother to hire an attorney given what I see in the patent, but that's up to you.
Re:Contact an atty. (Score:5, Informative)
Re:Contact an atty. (Score:5, Informative)
It actually expires 15 November 2013, 20 years from the filing date, because patents in force or pending as of the 1995 change in patent term get whichever term would be longer.
Keep in mind that the expiration of a patent doesn't immediately mean that you're in the clear. You can still be sued for infringement that occurred during the patent term, and they can file the suit anytime until the statute of limitations runs out (I think that's 3 years, but ask a lawyer).
Go to www.Groklaw.net (Score:5, Informative)
Re:Contact an atty. (Score:4, Informative)
> this patent was filed in 1993, making it a 17 years from issue date patent. Based upon it's issue date of April 9, 1996, it expires (dies) on April 9, 2013.
if that is true then how come the mp3 patent hasn't expired? It was filed in 1992...
It's because there is no 'mp3 patent'. There are several patents applicable to the format; some have already expired, and some have yet to do so.
From Wikipedia: [wikipedia.org]
The various MP3-related patents expire on dates ranging from 2007 to 2017 in the U.S.[52] The initial near-complete MPEG-1 standard (parts 1, 2 and 3) was publicly available on 6 December 1991 as ISO CD 11172.[53][54] In the United States, patents cannot claim inventions that were already publicly disclosed more than a year prior to the filing date, but for patents filed prior to 8 June 1995, submarine patents made it possible to extend the effective lifetime of a patent through application extensions. Patents filed for anything disclosed in ISO CD 11172 a year or more after its publication are questionable; if only the known MP3 patents filed by December 1992 are considered, then MP3 decoding may be patent-free in the US by September 2015 when U.S. Patent 5,812,672 expires which had a PCT filing in Oct 1992.[55][56][57]
Re:Links? (Score:1, Informative)
Link. [google.com]
Ignore it. It's not a WiFi patent. (Score:1, Informative)
In order to be found in violation of this patent, your violation must satisfy all the claims listed on the patent.
Claims #3, #24, #37, #46 refer to an analog voice signal, not present in WiFi data communications.
Claims #23, #36, #45, specifically refer to a modem
Additionally, most of this patent seems to be algorithmic. There are a number of claims that would be thrown out based on them describing
a mathematical function.
This would not survive a re-examination, but since it expires so soon, it wouldn't even make the short list.
Re:Get the hell out of that country. (Score:5, Informative)
Canada bows quickly to US patent pressure, so no, Canada wouldn't work.
Re:Contact EFF (Score:5, Informative)
Re:Links? (Score:5, Informative)
Accepting certified letters (Score:5, Informative)
You shouldn't have accepted the certified letter.
Certified letters have to have the sender noted on the slip that you get from the post office. Sometimes the post office doesn't do this (I have to remind my postal carrier all the time), but if you return the slip with "WHO IS THE SENDER?" written on it then they will fill it out properly and redeliver it.
If the sender isn't someone you know, or with whom you have a business arrangement (and from whom you might be expecting such a letter), don't take delivery. Don't send it back "refused delivery", just don't go get it. You can claim that you were out of town, never got the note, never had time to get it, or otherwise had a legitimate excuse. They can't do anything unless they have proof of "notice of service", which means that they have proof that they contacted you for the suit.
A certified letter is proof of service (ie - you were served with the letter), and they can use this to file suit against you.
If you don't accept the letter, they have to hire someone to personally hand you the notice. This costs them money - in my area the sheriff charges $80 for serving letters. The sheriff will get to it "when he gets to it", which in practice means anywhere from 2 weeks to never.
(As a personal anecdote, some bank in NYC decided from their internal records that they had been paying my NH property taxes for the last 5 years, and "would I just enclose a check for this and send it back"? I never accepted any of their certified letters, and they couldn't be bothered to send a person out to deliver the notice personally. Eventually they gave up. I had cancelled checks going back 5 years, but couldn't convince them otherwise because "their records showed payments for the last 5 years.")
This is one way to deal with frivolous lawsuits. If the lawsuit is genuine, then these sorts of barriers won't matter and you can address the legitimate legal issues. If the lawsuit is genuine and is something that you should address, then they should have no problem sending you information in a regular letter, which isn't considered proof of service.
I know this advice will cause the real lawyers here to cringe and complain, but then again they don't have any good ways to block frivolous suits.
Infringing by using a commercial product? (Score:5, Informative)
While I'm not very experienced in US and IP law, I don't understand how a user of a commercially available product can be held liable for using something he just bought. How should one be expected to ensure that every piece of hardware you buy on the open market is legal as far as IP and licensing goes? ... including damages payments for the company targeted in this way ...
Sounds to me like it's a complete scare tactics on the side of this lawyer, and should be punishable by law
But then, when has the legal system been sane and understandable for any person with at least half a brain ...
Re:Contact an atty. (Score:4, Informative)
No often that I agree with ACs, but in this case I do. Nice job AC!
There is an unfortunate reality that the system is currently very broken. Get an attorney, and start gathering evidence to deny their claim. EFF is a great place to go, and there are other sites like Groklaw that help gather patent invalidation evidence. Important: I'm not saying go to Groklaw, it may not work, as the lawsuit needs to be relevant to the site's area of interest.
EFF can help your company file the paperwork to the USPTO, which is required to invalidate the patent. Even if the patent is invalidated in court, the court's hands may be tied as the USPTO still shows the patent as valid.
If you have the resources, why not invalidate more than one of the trolls patents? Sometimes it only takes loud noises to pull the dogs off the trail.
An important thing _not_ to do fight it without legal assistance (and more obviously try to ignore the troll). It's easy to get tripped up in legal protocol and lose before you ever start fighting back, which is a tactic often used by trolls. Remember that while you have a business to run, these people's business is suing people.
Re:By all means answer them (Score:4, Informative)
IANAL, but I would also ask for proof that they actually own the patent, or are legal representatives of the patent owner.
Re:By all means answer them (Score:4, Informative)
As has been pointed out by others here, even if the patent expires you can be on the hook for damages for acts committed before expiration. In other words, you just gave lousy legal advice.
The answer here is always "call a lawyer", not "listen to any advice anyone on Slashdot gives you" (except advice on calling a lawyer).
Furthermore, the guy asking the question knows this and asked where to look for legal counsel. He specifically said he was not asking for legal advice from Slashdot. So why is it half the people answering this question are trying to give legal advice?
Software freedom Law Centre (Score:5, Informative)
if you are actively involved in free software, you automatically qualify for free assistance from the Software Freedom Law Centre. phone them up, immediately. do not hang around. also you did the right thing asking around: do more of that, and specifically ask people to find prior art. look up what newegg did. the article was on here last week.
Re:Curious (Score:3, Informative)
I set up a sole-proprieter LLC and when I did so they made it quite clear that being an LLC was not a magic shield for my personal assets. If I had set up an S-corp or a C-corp, maybe - but with certain flavors of LLC, you and the company are essentially treated as one entity. If the "business" doesn't have any assets, they can certainly try to get them from "you".
You are not alone (Score:5, Informative)
Many businesses are receiving letters like this. It's a fraud.
You might want to read this article:
http://www.dslreports.com/shownews/Cisco-Motorola-Netgear-Aim-Cannons-At-WiFi-Patent-Troll-121594 [dslreports.com]
And this:
http://www.techdirt.com/blog/wireless/articles/20121009/01444620656/cisco-motorola-netgear-team-up-to-expose-wifi-patent-bully.shtml [techdirt.com]
"Last year, we wrote about a crazy patent troll, named Innovatio, who had sued a ton of restaurants and hotels, claiming that anyone who used WiFi was violating its patents. It was even claiming that individuals who use WiFi at home infringed too -- but that it wouldn't go after them "at this time." Instead, it preferred to focus on shaking down tons of small businesses, offering to settle for $2,500 to $3,000 -- which is cheaper than hiring a lawyer to fight it, no matter how bogus. We noted at the time that Motorola and Cisco had gone to court to try to get a declaratory judgment to protect its customers. "
Re:Modem patent - not WiFi (Score:4, Informative)
No, the best approach is to discuss the case with competent legal counsel.
That might not be true in this case. According to this story [arstechnica.com] at Ars Technica
The best strategy for target companies? It may be to ignore the letters, at least for now. “Ignorance, surprisingly, works,” noted Prof. Chien in an e-mail exchange with Ars.
Her study of startups targeted by patent trolls found that when confronted with a patent demand, 22 percent ignored it entirely. Compare that with the 35 percent that decided to fight back and 18 percent that folded. Ignoring the demand was the cheapest option ($3,000 on average) versus fighting in court, which was the most expensive ($870,000 on average).
The "Professor Chien" referred to is a law professor and the author of Startups and Patent Trolls [ssrn.com].
Re:Curious (Score:5, Informative)
This is not a schoolyard bully you have to stand up to. This is a parasitic business. I would just say ignore. A response, any response, refreshes you on their radar. Any response also can be used against you later. Do not engage, better to maintain silence and see their next move.
Maybe they try to engage anyway but with luck, they just move on their merry way, either finding other more compliant suckers or deciding on a new venture. They want easy money, not litigation and uncertainties.
Re:Offer them a percentage of profit? (Score:5, Informative)
Re:Curious (Score:4, Informative)
What are the repercussions or ramifications of you writing back,
"Fuck you, we're not going to play this game."
Serious question.
He says the letter was certified. Does it mean he actually signed for the letter himself? Because acknowledging the receipt of that letter wouldn't be a good idea, especially since that patent expires in April of this year.
Generally speaking, it's always better to keep quiet, than to send back profanity, because by sending back that note, you'd not only be acknowledging that you received the letter, but you'd be implying that you're using Wi-fi.
Another thing he should try to do is see if anyone else received the same letter, and what they did about it. That means he should try a couple of exact Google string searches, in Incognito Mode, on a couple of unique strings in the letter he received.
Also, he should check if the law firm/lawyer(s) in question is certified by a State Bar Association.
Re:Get the hell out of that country. (Score:4, Informative)
Canada bows quickly to US patent pressure, so no, Canada wouldn't work.
I believe you're wrong [michaelgeist.ca]. We don't much fscking care what your USTR may think. We'll happily burn down your Whitehouse anytime. Just give us a call. :-)