from the sneaky,-sneaky,-sneaky dept
Rembrandt IP is a patent hoarding firm that we’ve written about a few times before. It buys up patents and then sues companies to get them to pay licensing fees. However, one thing that’s been really interesting about Rembrandt is how it’s been figuring out new and creative ways to skirt recent Supreme Court rulings that seek to lessen the impact of such non-practicing entities. Two years ago, in the landmark MercExchange case, the Supreme Court ruled that courts shouldn’t automatically grant injunctions preventing the sale of products, even if they’re found to have violated a patent.
This didn’t get rid of injunctions entirely, but basically (reasonably) noted that the courts should take into account whether or not the product on the market was actually harming the market for the patent holder’s products. Thus, if you were a non-practicing entity (patent hoarding firm), it didn’t make sense to ban another company’s products from being in the market — it just made sense to fine them. After all, since the patent holder didn’t have a product on the market, what harm was being done to the patent holding firm’s market? Patent hoarding companies flipped out, because the threat of an injunction barring the sale of products was one of the biggest weapons they had (it’s part of what made RIM pay $612 million to NTP, even though the USPTO had said that NTP’s patents were invalid).
So, how is Rembrandt getting around this ruling that takes away the threat of injunction as a weapon? Well, earlier this year, we noted a sneaky trick where it sued two companies in a single market over the same patent, but gave each of them a choice: whoever settled first, would get to join the lawsuit against the other one. Then, since the side that joined was a practicing entity, it could push for an injunction against the other. Sneaky, right?
Well, now it gets better. Rembrandt also happens to hold some patents on cable modem technology. In this case, Rembrandt bought the patents from a former AT&T subsidiary that had an agreement with the cable companies to license the patents under reasonable terms. Rembrandt is now claiming that since it bought the patents, it no longer needs to abide by that earlier agreement (despite the fact that the FTC has already slammed other patent holders for claiming similar things). Rembrandt, however, is pushing ahead and has sued a ton of cable companies, broadcasters and cable modem makers over this patent — but how can it get an injunction since it’s not a practicing entity?
Well, how about pretending to be a practicing entity?
Broadband Reports points us to the news that Rembrandt has convinced a small Taiwanese cable modem manufacturer to make a batch of cable modems with Rembrandt’s name on them, which have now been sold to a tiny ISP in
Seattle Tacoma. So, now, Rembrandt can try to claim that it’s really “in the market” (even though it has admitted publicly to being a non-practicing entity) and can push for an injunction against all the companies it’s suing. Those companies are calling out this practice as a “sham,” and it will be interesting to see how the court rules. If the court rules that this practice allows Rembrandt to ask for injunctions, we may start seeing other patent hoarding firms quickly finding “partners” who can white label a few products just for the sake of appearing to be a “practicing” entity rather than a non-practicing one.