TLO® INSIGHT: How To Fight A Patent Troll
Companies seeking to license their patent rights take many forms. One of those companies is Sorensen Research and Development Trust. Your company may have received a cease and desist letter from Sorensen demanding several hundred thousand dollars. You are probably first wondering, who is Sorensen? Sorensen has a portfolio of patents relating to plastic molding technology. Under Sorensen’s business model, it searches for plastic products that might be covered by its patents. Upon finding a possibly infringing product, Sorensen demands that the manufacturer or retailer pay for a patent license or else be sued for patent infringement.
Sorensen does not make or sell any products itself; it makes money by licensing its patents. In the world of patent law, this makes Sorensen a Non-Practicing Entity (NPE). Some refer to companies with this kind of business model as patent trolls because they troll for licensing fees. Some news reports have suggested that Sorensen is the sixth most litigious NPE in the country. Sorensen has sued on its patents in more than seventy (70) patent infringement cases. Considering its willingness to drag companies into litigation, Sorensen should be taken seriously even if you believe the accusations against you are meritless.
We have represented two companies to date in litigation against Sorensen. In the first case, we represented a premier manufacturer of plastic containers called Highland Plastics, Inc., known for the quality of its American made products. Highland was accused of infringing Sorensen’s U.S. Patent No. 6,599,460. After seven months of litigation, Sorensen voluntarily dropped its lawsuit against Highland by filing a covenant not to sue Highland ever again on the same patent. We know of no other case in which Sorensen voluntarily dismissed an infringement suit without a settlement.
In the second case, we represented Homeland Housewares, the maker of the famous Magic Bullet® and Baby Bullet® blenders. Homeland was accused of infringing Sorensen’s ‘460 patent. In the Homeland case, we filed a motion for summary judgment explaining to the Court why Homeland’s products did not infringe the ‘460 patent. The motion for non-infringement was granted. Our motion for attorney fees was also granted. The attorney fees were awarded because we were able to prove that Sorensen had failed to conduct a proper investigation of the infringement and had engaged in misconduct during litigation.
We have succeeded in our fights against Sorensen because we have worked closely with our clients from the outset to fully develop a factual record to prove that we do not infringe. This is an effective strategy for winning any patent case. But in Sorensen’s case, we understand how they operate and have developed a wealth of information and strategies for attacking Sorensen’s allegations of patent infringement. Our extensive experience with Sorensen gives your company the best opportunity for winning the fight or settling on highly favorable terms.
There is always the chance that your product may run afoul of Sorensen’s patent rights. If a new client came to us whom we determined did infringe, then we have strategies for invalidating Sorensen’s patent rights that we have learned from our fights with Sorensen. Attacking the patent rights can also set up discussions for a more favorable settlement than you could otherwise achieve.
There are many NPEs that properly investigate infringement claims and have a legitimate right under current law to monetize their patent portfolios through licensing. But NPEs who send out form letters with demands for licensing fees without properly investigating the alleged infringement deserve to be called patent trolls and give patent law a bad name. We welcome the opportunity to fight them on your behalf.