Don’t Be Bullied by a Patent Troll

by Bradley Arant Boult Cummings LLP

One of our favorite stories growing up was the “Three Billy Goats Gruff,” the main character of which is a terrible troll who lived under a bridge. The troll tried to terrorize and eat three goats who just wanted to cross a bridge to the greener pastures on the other side. The troll’s greed was his downfall. The first two goats convinced him to wait until the largest (and more appetizing) of the three goats came along. But, when the troll confronted the largest goat, he met his match. The largest goat butted him over the bridge, he was never heard from again, and all the goats lived happily ever after.

A Troll in the Land of Patents

One can see the analogies between the troll in “Gruff” and a recent patent troll who is terrorizing honest enterprises seeking to conduct business in green pastures around the country. The bridge that this latest troll purports to guard is a process referred to as “paperless copying” or “virtual copying.” Unfortunately for the business community, this troll has lawyered-up, hiring a Texas firm to send a series of letters (sometimes enclosing a signed, but unfiled, complaint) that accuse businesses of infringement by engaging in the basic administrative task of “scanning paper into a digitally-formatted file that is automatically emailed to the intended recipient’s email address.”

One might ask, how is it possible to patent the sending of an electronic copy of a document to an email recipient using a scanner? It is a good question, and one perhaps answerable only by the over-worked staff at the United States Patent and Trademark Office (“USPTO”). Reading the actual patents the troll and its lawyers rely upon will not provide much of an explanation.

The threatened lawsuits actually reference two United States patents -- 7,477,410 and 7,986,426, both issued to Laurence Klein; however, there appear to be other related patents and several applications in the pipeline. The USPTO’s records reveal that both the ‘410 and ‘426 patents have been assigned and sublicensed multiple times and that strangely named entities, such as AdzPro, AllLed, BarMas, GosNel, IntPar, and JudPur, have been the recipients of these licensed rights. All of this appears to be based on the patent troll’s strategy to divide and conquer by industry group. As is well known, patent trolls often threaten dozens of alleged infringers in the hope of scoring quick license fees from those who understandably prefer to provide a (relatively) modest payoff, thereby avoiding expensive and protracted litigation.

Interpretation of the virtual copying patents is an exercise in futility. Take this clause from Claim 1 in the ‘410 patent:

…at least one processor responsively connectable to said at least one memory, and implementing the plurality of interface protocols as a software application for interfacing and communicating with the plurality of external destinations including the one or more of the external devices and applications, wherein the computer data management system includes the capability to integrate an image using software so that the image gets seamlessly replicated and transmitted to at least one of other devices and applications, and via the Internet.

So, what is a business to do when confronted with nasty letters threatening suit over such indecipherable patent claims? One strategy is to mimic the first two goats in “Gruff,” or what one might call a “go-after-the-bigger-guy” approach. This approach takes various forms, all of which are intended primarily to avoid a fight. For instance, some businesses negotiate and quickly pay a license fee to the patent troll. Others sometimes “lay low” and avoid responding to the demand at all, assuming that the troll is not planning (or able) to pursue every target. This approach, however, is not without risk.

The Patent Troll Meets His Match

On the other hand, in the spirit of what the third goat did in “Gruff,” at least one business has decided to butt heads with the virtual copying troll. A company called Engineering & Inspection Services (“E&I”) recently filed a preemptory lawsuit in federal court in Louisiana against IntPar, the patent licensee that had sent threatening letters to E&I. E&I says in its complaint that it is in the engineering, design, and inspection business and that it maintains and operates standard equipment such as copiers, scanners, and servers much like many businesses across the world. E&I’s lawsuit attacks the ‘410 and ‘426 (and other related) patents on several fronts, including the claim that the patents do not remotely cover what the attorney’s letters say they cover, and claims of invalidity, unfair competition, antitrust, and extortion. A copy of E&I’s complaint (Case No. 2:13-CV-00801-JCZ-SS) can be accessed on-line. Click here.

Whatever approach one decides upon, it is wise to consult qualified patent litigation counsel. A potential willfulness claim can arise from a reckless disregard of a valid patent, and thus, a decision not to respond needs to be carefully evaluated. And, as with other claims against your business, it is also prudent to consider evaluating potential insurance coverage.

The Moral to Our Tale

Just like the goats in “Gruff,” there are several ways to deal with a troll.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Bradley Arant Boult Cummings LLP | Attorney Advertising

Written by:

Bradley Arant Boult Cummings LLP

Bradley Arant Boult Cummings LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.