Taking on Trolls
How Stephen C. Hall helps inventor-clients overcome nuisance suits
Published in 2016 Kentucky Super Lawyers Magazine on December 17, 2015
Big ideas. Steve Hall spends part of his time helping his clients patent them; another portion defending their existing products against infringement claims. That sometimes means doing battle with abusive litigants—otherwise known, not so fondly, as patent trolls.
Hall is well prepared for the job.
“Before I became a patent attorney, I spent about 10 years or so doing nothing but litigation,” he says. “So I do both: I help people get patents in the patent office, and I represent people in the United States District Courts when there’s a patent dispute.”
The partner at Wyatt Tarrant & Combs helps clients obtain patents for devices that combine medicine and engineering, as well as inventions used to test food and water safety. “There is quite a spectrum of inventions that we see,” he says.
His clients range from experts with many patents to newbies, so plain talk helps. “People appreciate when you can take a complex idea and boil it down to its essence,” he says, “and make it not only understandable, but make it so that it sticks with them.”
Hall says there are two sides of the coin in patent law. “One key to defending any patent litigation is a thorough understanding of the client’s product, and how it is either like or unlike the patent claims that are supposedly infringed,” Hall says. “On the other hand, a thorough understanding of the client’s invention and the inventions that came before is key to advising someone on whether to pursue a patent and then helping them obtain a strong patent.”
Currently, Hall is in the middle of obtaining a patent that “truly would be disruptive for this particular industry if it were to become the standard.” He means that in a good way: “groundbreaking, and such a departure from the norm as to potentially change the way players in the industry operate.” Careful about releasing details, he says that if and when the patent arrives, it’s one case he will definitely remember.
If there’s one current disruption in the patent industry—not in a good way—it’s those patent trolls.
In 2013, Congress undertook patent litigation reform, changing the federal laws in an attempt to control the trolls. But there’s still work to be done, Hall notes. Congress is again looking at the issue, and considering amending the laws to further protect companies facing abusive patent litigation.
Hall serves as vice chair of the patent litigation subcommittee of the Defense Research Institute’s intellectual property litigation section, “a group of lawyers from around the country who tend to defend patent-infringement cases in the courts.” Their aim is to help companies who are vulnerable to being sued by patent trolls. “The group is attempting to advocate for their rights and to come up with solutions that can be used either in courts or suggested to legislatures to help protect them,” Hall says.
“There are some good things coming out of the Defense Research Institute about what litigants might do in cases where the party that they’re up against is behaving in a coercive way in terms of suing lots of different people in the same industry.”
In some instances, trolls use the volume method: filing claims against many people in a given industry, claiming they all infringed on a particular patent—“just suing a lot of different people,” Hall says. “You don’t always see the most robust research that went into their decision to assert that case.”
The committee is putting together sample motions for attorneys to use to help persuade judges to shift successful defendants’ attorney fees on parties who brought the cases in bad faith. It is also researching how to create records of the troll's investigation, to see whether or not they have done a thorough job. If not, that’s something to point out to the judge.
The hope is that abusive patent litigators would “face consequences for not doing a reasonable investigation before each suit is filed,” Hall says, adding that attorney-client privilege makes it difficult for the courts to assess the quality of the litigants’ investigation. “A proposal that has been discussed is for courts to require, in appropriate cases, the high-volume plaintiff to provide their pre-lawsuit investigation to a neutral third party,” he says, “which would be kept until the end of the case so it could be considered by the court in deciding whether to require the plaintiff to pay the attorney fees of a prevailing defendant.”
There’s far less drama, but lots of research, involved when it comes to helping people get patents.
“Being a patent attorney is so interesting because the kinds of inventions out there are so broad, and technology is always evolving,” he says. “There is always something new to learn.”