New York cracks down on patent trolls

Patent troll MPHJ will repay all New York licensees in settlement with state

New York State’s Attorney General Eric Schneiderman is sending out a verbal warning to companies across the state as a recent settlement with notorious patent troll MPHJ Technology Licensing is requiring the company to repay all money received from organizations in New York.

MPHJ has contacted hundreds of small and medium-sized businesses in New York over “likely infringement” of patents related to document scanning technology, according to a statement from the office of the Attorney General. The deceptive letters implied that MPHJ had analyzed the target company’s scanning system and found it to be infringing its patents when, in fact, MPHJ merely sent form letters to companies of a certain size and industry classification.

In the settlement, MPHJ has agreed to repay licensing money received from companies in New York state and has had a number of other requirements imposed upon it. “The requirements should serve as guidelines for all patent trolls engaged in similar patent assertion behavior,” said Schneiderman.

They include the requirement to conduct a serious effort to determine whether a target company has infringed upon a patent, provision of a detailed explanation of the alleged infringement, revealing the identity of the patent holder and to not make misleading statements about a license.

MPHJ has fought with other states including Vermont and Nebraska who have sued the firm. Last year, the company reached a settlement with Minnesota in which the company agreed to stop its licensing efforts in the state. But, patent experts think the New York settlement could prove especially influential.

"It's detailed and very carefully thought out," said Robin Feldman, a patent-law expert and professor at the University of California's Hastings College of Law. "It has the potential to serve as a model for others who are looking to craft legislation and regulation.”

Recently, state attorneys general from around the nation have been tackling the patent troll problem head on. To learn more about their efforts, join Vermont AG Bill Sorrell, Nebraska AG Jon Bruning and Missouri AG Chris Koster for a roundtable discussion on the patent troll problem. The roundtable takes place on Feb. 4 in New York City and will also feature general counsel from DuPont, Walmart and Rackspace. For more information or to sign up for the event, click here.


For more on patent trolls, check out these articles:

Patent trolls invade the cloud

South Carolina’s attorney general latest to join war on patent trolls

Lawmakers continue to fight patent trolls with more realistic version of the Innovation Act

Patent trolls go after bigger targets


Contributing Author

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Amanda Ciccatelli

Amanda G. Ciccatelli is a Freelance Journalist for InsideCounsel, where she covers intellectual property, legal technology, patent litigation, cybersecurity, innovation, and more. She earned a B.A....

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