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Sometimes the plaintiff wins partially: Becker, of Intellectual Property and Manatt, Phelps & Phillips, pointed to the eBay v. MercExchange case in 2006, which determined that unless a defendant is a direct competitor, the plaintiff is unlikely to secure an injunction. "That was a big deal, because that threat used to be the big hammer. The pendulum swung against plaintiff." In the eBay case, MercExchange owned the patent covering the retail site's "Buy It Now" function.
For solution providers that develop applications and write software, it may seem like a jungle out there. Patent trolls are lurking, waiting to pounce on the hapless soul who unwittingly infringes a patent. To help safeguard against such trouble, Becker offered some tips:
Avoid the Drama
1. It's easy to do research and see what sorts of lawsuits are out there; so many people are accused of using the same patent. You can also hire a search firm.
2. Note that it is difficult to do a patent search to see if you're free to operate. Often, the only option is to move forward and wait for a cease and desist letter. If it arrives, and if you desist, the issue goes away. Many companies opt to monitor the situation, waiting to see if another company goes to court with the plaintiff. Should the defendant win, you can start up again, and you've saved the cost of a trial.
3. Go to the patent office and look at the patents of your competitors. Learn who are the most litigious. Forewarned is forearmed.
PUBLISHED Aug. 28, 2012