Access practice tools, as well as industry leading news, customizable alerts, dockets, and primary content, including a comprehensive collection of case law, dockets, and regulations. Leverage...
By Tony Dutra
April 18 — The U.S. Supreme Court's refusal to hear whether federal or state courts should deal with patent royalty “demand letters” could be bad news for 29 states with laws on the allegedly abusive letters.
The court rejected the state of Vermont's request that the Federal Circuit be barred from reviewing appeals from accused abusers.
But the high court also dealt a blow to MPHJ Technology Investments, rejecting its cross-petition. MPHJ, a non-practicing entity that mailed thousands of letters to small businesses in Vermont demanding royalty payments for using store-bought scanners, wanted federal courts to review its case for enforcing its patents.
Denial of its petition means Vermont can drag MPHJ into state court.
MPHJ was accused of violating Vermont's general consumer protection statute, prior to Vermont's passing the Bad Faith Assertions of Patent Infringement Act (BFAPIA). Multiple decisions forced MPHJ into state court.
The U.S. Court of Appeals for the Federal Circuit handled MPHJ's appeal based on its patent-related counterclaim. The court ultimately gave Vermont what it wanted, but it also ruled that it would have authority to review BFAPIA judgments. Vermont v. MPHJ Tech. Invs., LLC, 803 F.3d 635, 116 U.S.P.Q.2d 1595 (Fed. Cir. 2015)(188 PTD, 9/29/15).
The other 28 states have laws similar to BFAPIA and would undoubtedly also be subject to the Federal Circuit's review.
Vermont had hoped the high court would tell the appeals court that it had no jurisdiction to even consider the counterclaim (02 PTD, 1/5/16).
MPHJ's Jan. 29 cross-petition argued that its letter-sending campaign was insufficient to meet the requirement of having “minimum contacts” with Vermont to establish personal jurisdiction (23 PTD, 2/4/16).
Vermont Solicitor General Bridget C. Asay was counsel of record for the state. Farney Daniels P.C. represented MPHJ.
Advocacy organizations Public Knowledge and the Electronic Frontier Foundation filed an amicus brief supporting review of Vermont's petition. PK's Charles Duan submitted the brief.
To contact the reporter on this story: Tony Dutra in Washington at email@example.com
To contact the editor responsible for this story: Mike Wilczek in Washington at firstname.lastname@example.org
Vermont petition at http://src.bna.com/bOc.
MPHJ cross-petition at http://src.bna.com/coJ.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to email@example.com.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to firstname.lastname@example.org.
Put me on standing order
Notify me when new releases are available (no standing order will be created)