By Nancy Wolff, Esq., PACA Counsel
At the PACA 2013 Conference this October, we held a panel on patent trolls that are targeting this industry, and in particular, the Company Uniloc that alleges to have a patent on licensing images online and had targeted 4 companies in the micro stock space. Patent trolls are companies that purchase patents for the sole purpose of bringing claims against third parties. These cases are almost always brought in the Eastern District if Texas, which is a favorable jurisdiction for plaintiffs. Patent litigation is extremely expensive, and many companies will settle just to avoid costs. Many of these patent trolls acquire business method patents, which unlike inventions, merely describe a system for doing business and can be quite vague and overly broad. In the early days of the internet, many of these patents were issued as examiners did not have access to information regarding prior art in many industries.
On the panel was Tamany Bentz, patent attorney from Venable, who represented Dreamstime, as well as Ellen Boughn, who worked as an expert to provide information to the attorneys as to early online business practices in the industry. With patent cases, you can attempt to invalidate a patent if you can establish prior art. Other defenses include showing how your process is different from the one described in the patent. (Dreamstime in fact settled with the plaintiff but Ellen’s report was apparently used by the other defendants. As noted below, those cases were dismissed with prejudice before any judicial ruling on the patent claim.)
The initial claims were brought against the following companies:
Dreamstime — settled
Inmagine — dismissed
RevoStock — dismissed
Depositphotos — dismissed
During the panel discussion, it was recommended that PACA help be a source if business information, and that if other claims are brought by Uniloc or others, the industry collaborate together in order to defeat these claims. Since the meeting Uniloc has filed new patent claims in Texas against a numbers of other companies, listed below.
Getty, Corbis, iStockPhoto LP, Age Fotostock America Inc., SS SPV LLC, Envato PTY Ltd., Fotolia LLC., PhotoShelter, Inc., Photo Stock Plus, and VectorStock Media Limited
It may be helpful the join forces and share as much information as we are able to publicly, to discourage these claims. PACA is willing to be the central point for collecting information.
Tamany has agreed to speak to any PACA member and can be reached below. We will continue to update members as we learn more about these filings.
Tamany Vinson Bentz, Esq.
2049 Century Park East, Suite 2100
Los Angeles, CA 90067