Patent News

Apr. 29, 2014

Houston Business Journal: Alleged energy “patent troll” says it fights for the little guy, by Jordan Blum

This article originally appeared in the Houston Business Journal on April 29, 2014.

Whether they’re called patent monetization firms, non-practicing entities or the dreaded “patent trolls,” such companies are entering the energy sector more in disputes over technologies and patents.

But the leaders of such firms said they are “certainly not winning the PR war” and are being unfairly bullied by giant companies that want to ignore the existence of patents.

One of the biggest firms, California-based Acacia Research Corp. , has a top subsidiary in Plano called Acacia Research Group LLC that has a new Houston office to focus on technology and patents in the energy sector.

“Large corporations don’t like receiving those lawsuits and they defend them vigorously,” said Marvin Key, CEO of Acacia Research Group. “There’s (often) a concerted business decision to get products to market first and worry about infringements later.”

Acacia, for instance, buys patents and licenses them to other companies. Acacia also files lawsuits to get damages for alleged patent infringements. The original patent holders that sold to Acacia then get royalties or cash payments.

“We’re simply providing a service for someone (the inventor) who doesn’t know how to do it themselves,” Key said.

Acacia is hardly a “litigious ogre,” he said, because the company has only gone to trial four times on about 1,300 separate patent deals.

One recent Acacia lawsuit against Houston-based Schlumberger Ltd. (NYSE: SLB) is receiving increased attention. The suit involves alleged patent infringement against the three-dimensional modeling technology patented by Plano-based Dynamic 3D Geosolutions LLC.

The controversy first began last year when Schlumberger’s deputy general counsel for intellectual property, Charlotte Rutherford, left to take a job as an Acacia senior vice president in Houston. In December, Acacia partnered with Dynamic 3D and then, in February, sued Schlumberger for patent infringement in federal court in Austin.

Schlumberger then countered last month by suing Rutherford in state court for allegedly taking trade secret data shortly before leaving the company.

Key said the timing of Rutherford’s departure and the lawsuit is “purely anecdotal” and “has no merit.” He said Schlumberger’s lawsuit is a “bullying tactic in response.”

Jonathan Spivey, a partner and intellectual property attorney with Bracewell & Giuliani in Houston, said though that Acacia’s timing “leaves a lot to be questioned,” noting that Acacia sued just two months after acquiring the Dynamic 3D patent.

Spivey said Schlumberger and defendants in similar cases also are using U.S. Patent and Trademark Office procedures to challenge the validity of the patents filed.