United States: Five Things Patent Trolls Don’t Want You To Know About Litigation

Patent trolls are not all the same. They have different tactics, different areas of expertise, and they can behave in very different ways in litigation. But they all want money. And they all do what they can to get as much of it as possible. But there are certain things that they hope you do not know about them so that they can possibly make even more money.

This list is written from the imagined perspective of an experienced troll, one who does not easily give up his secrets. But, under the persuasion of a persistent billy goat, this troll has spilled the proverbial beans.

1. Sometimes we'll sue you without knowing for sure whether you're infringing

The vast majority of patent trolls assert patents that are directed to software, computer systems, and computer based services. This technology does not lend itself well to pre-suit analysis. In contrast, when a patent holder makes claims about a chemical having a certain composition, pre-suit analysis can relatively easily determine whether samples contain the requisite elements. But when a patent holder's claims are directed to the way in which a computer or computer network processes data, it can be very difficult to know the specifics of how that processing is done. Accordingly, patent trolls may not know how your system works when they bring suit. They may only have a vague idea of the information that is available and the end product produced. They are likely waiting on information from you about your system that they will obtain during discovery to know whether your system actually infringes.

Thus, do not assume that patent trolls are correct when they assert — often in  a cease and desist letter — that your technology infringes. This sounds simple. But as you get into litigation, it can be easy to get distracted by the process and the arguments and forget that the patent owner may have no idea how your technology works. You should not dismiss their claims without investigation, but you should ensure that their claims are plausible. It is important to  carefully investigate the patent troll's arguments and determine at an early stage whether they have any merit. This is one of the chief advantages that defendants in a patent litigation have — they have access to the most important information about how their accused system works. You should use it. If you can demonstrate that your system or service could not possibly infringe upon the patent owner's claims, you may, though not likely, convince the patent owner to dismiss you from the suit without payment. More likely though, even if you are not able to convince the patent troll to drop its suit, by making the patent owner aware of the impossibility of its claims at an early stage, you may be able to set yourself up for an award of attorneys' fees if the patent owner continues with its suit in the face of strong evidence to the contrary.

2. We may not have thoroughly examined our patents

While patents are entitled to a presumption of validity when they issue, as a defendant, you should not assume that all aspects of the patent's validity have been examined by the patent holder. Patents grant a powerful, government-sanctioned monopoly. They are, therefore, subject to myriad technical requirements to remain valid. They are required to include the proper inventors. They are susceptible to invalidity arguments based on problems with assignments or if they do not share common inventorship with prior patents in the same family. They require maintenance payment that, when missed or forgotten, may affect the validity of the patent.

Because patent trolls often acquire their patents from third parties, the patent trolls may not know all of the problems with the patent or its history. And because time spent thoroughly investigating the patent is not compensable, the patent trolls may not have sought to thoroughly scrutinize the patent before bringing suit. The patent may have left off a necessary inventor. There may be problems with the chain of title in the patent. Other interested third parties may be necessary in the litigation in order for the patent troll to have standing to sue. The spouse of one of the inventors may have inventorship rights in the patent due to marriage laws. Therefore, if you are sued on a patent (or group of patents), you should ensure that your patent counsel thoroughly investigates the entirety of the patent's history, its chain of title, and all aspects of the patent's validity early in the litigation. Problems with these technical aspects of the patent may be your ticket to an early, and cheap, exit from the litigation.

3. We don't want to go to trial

One may assume that  being in the business of litigating would mean that patent trolls look forward to going to trial. This is not the case. Trials are expensive. While patent trolls may have much of the required disclosures, written discovery, and other aspects of pre-trial already prepared or available from prior litigations of the patent, each trial is unique and presents a unique set of issues and problems. Accordingly, each trial's materials (its evidence and exhibits, its witnesses, its jury instructions) all must be prepared for each trial. This requires a great deal of work, which costs money — money which, in one way or another, eats into the patent troll's ultimate profits.

Furthermore, trials are unpredictable. Patent trials are even more so. Patents involve complex technology, myriad of technical statutory requirements, and can be confusing for even highly qualified judges. For lay person jurors, they can be a nightmare. Thus, it can be very difficult to predict what may happen in a patent litigation at trial. This unpredictability creates risk to the patent troll's profits — and especially to its counsel, who may not get paid if they lose. That risk can possibly be exploited to lower settlement demands.

4. If we do less work, we make more money

Most patent trolls enter into contingency agreements with their counsel to handle litigation on their patents. These agreements give counsel a percentage of any damages awarded or license fees paid in exchange for the work done on the litigation. This means that counsel does not receive payment for their day to day work on the case. They only get paid if they win or if defendants take licenses.

This not only puts pressure on patent troll counsel to win the litigation, it also encourages counsel to do as little as possible to keep each case as profitable as possible. The more work the patent owner's counsel does, the less profitable the case becomes. This fact can be used by defendants to leverage favorable settlements. For instance, if your company's technology is unique, complicated, or different from other defendants sued by the patent owner, the patent owner is going to have to spend more time (and thus more if its own money) accounting for your technology. You may be able to leverage this added cost to lower the patent owner's settlement demand (because getting rid of you results in cost savings to the patent owner).

5. When you pay us to go away, we don't

Make no mistake about it, patent trolls are in the business of litigation. They do nothing else. They know what tactics are used in litigation by defendants. They know the arguments that will be made. They know what a typical patent litigation will cost. And you can expect that they are familiar with those parties whom they have litigated against in the past.

As described above, the less work counsel for a patent troll does, the more money counsel and the patent troll make. Accordingly, defendants who would rather pay to make litigation go away than fight make great targets for litigation. Getting a reputation as a "soft" target for patent suits may result in more and more suits being brought against you or your company. This could turn the short-term economic advantage of paying a small licensing fee into a long-term economic disadvantage of having to face multiple lawsuits brought by patent trolls who smelled blood in the water and went after you. 

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.