Trolls At The Gates: Where’s The DSF Or DSA?

July 10, 2013 by Dave Haynes

Affectionately-named patent trolls have been around this sector for a few years now.

I get emails and phone calls periodically from software execs asking what I know about patent troll activity in this sector. I tell them I am, mercifully, not running a software company like them, so I have not had the pleasure of getting a notice from a lawyer, usually suggesting  the intellectual property they or their clients own has been infringed.

But I know most of the companies of any size out there have received those letters (with some paying go-away money). Alarmingly, it appears the firms that seem to largely exist to sue other businesses are now going after the end-users.

Consider Activision TV vs Harley-Davidson, filed just last month in a Delaware court. Harley as you know makes motorbikes, not signage software. Now I can only speculate, but it’s reasonable to think the plaintiff naming an end-user as the defendant in a case would put some serious pressure on the software vendor. That “WTF???” phone call from a client, asking about a software patent lawsuit, is the fast lane to an ulcer.

Use Google to search on the terms: remote control electronic display system Activision TV. All kinds of companies are dealing with infringement cases, including Build-A-Bear and Wawa. In this case, the patent infringement claims are being dropped on the desks of network operators because the patent infringement issue is about the overall method of using a PC, flat panel display and software to run messaging on screens.

Here’s the patent at issue (8,330,613):

A remotely controlled electronic display sign which operates with a plasma display and which provides for humidity and heat control and the like allowing the sign to be used in various environments. The sign is essentially self-contained and includes those components necessary for enabling a display of desired material from a remote control source or one located at the sign. A controller in or associated with the sign is accessible either electrically, or through satellite transmission or other wireless transmission from the remote source which allows the display of the sign to be changed at will. Thus, an operator at a remote source may, with the aid of a pre-prepared graphic design, transmit that design to the controller at or associated with the sign for display of that graphic information and potentially with sound.

There’s another patent (5,309,174) out there, from a party called Minkus, that has separate and different claims.

Disclosed is a remotely controlled display system in which various forms of messages may be remotely provided to a display, and information regarding the display and/or the message may be provided to the control location. The information provided to the control location may be status information regarding the status of the message or the message medium, which may be, for example, a billboard or other sign, or it may be the verification of the message(s) sent to the remote location for display.

It has always struck me that this patent issue is exactly the sort of thing an industry association exists to address and fight. The DSA  (not picking on anyone) says its objectives include being the unified voice of the members for the betterment of the industry, and helping members operate their businesses more profitably with growth and diminished risk and cost.

Like stepping in and pooling resources and acumen, instead of watching at a distance as predators single out victims from a disorganized herd.

I am not aware of the Digital Signage Federation or Digital Screenmedia Association doing anything. So, my simple question to them was: What is your organization doing to address the ongoing patent troll issue that has touched on most or all of the substantive software companies in this sector?

[highlight color=”eg. yellow, black”]Updated -[/highlight] Here’s the official, as of this morning, position of the DSF board:

The Digital Signage Federation is of course concerned about the impact of patent enforcement actions on our members and the industry. Some patents are in fact enforceable, while others are not.  The legal resources to properly assess each and every patent in play at any given time, and there have been several even in the short history of the DSF, would be considerable and extremely costly. Annual membership dues are roughly equivalent to an hour of a good attorney’s time. It is a slippery slope for an industry association to take on the legal costs of evaluating these claims, never mind preparing defenses. It is not farfetched to imagine a scenario where there are two member companies on either side of a given case.

As advocates for our members, we feel it is our role to help build awareness, share information and generally advance the causes of our diverse members. We do that through our active committee structure, networking and communications strategy.

Me: In other words, the DSF is saying we really don’t even want to go there. I’m not sure the expectation is that an advocacy group would lawyer up, but was kinda thinking pooled resources and experiences would make some sense.

Here’s what Brian Gorg, Executive Director of the DSF, said Tuesday:

Dave,

Thank you for this question.  I have had the opportunity to discuss the issue last year at a trade show with Activision but it didn’t register as being as widespread an issue as you allude to.

The hard/straight answer is that the DSF has not taken any official action on the patent troll issue.  We are organized around operational committees (membership, advocacy and outreach, education, etc.) and not on any industry sector (software, hardware, network operators).  Topical items like this may not get addressed in our committees and we need our members and voices from the industry such as you to spur us on to look at what our collective voice can do.

I am going to take it as an action item to gather input from 4-5 of our more active software company members to bring a recommended action to our board.  It may be to simply monitor the situation or it may be a greater organizational priority in which we take a stand on defining and calling out these companies.

The official answer – we have not addressed it.  The forthcoming answer is we are asking our software members for input on what we should do, as the DSF, to stand against this practice.

Meanwhile, David Drain from the DSA sent me a separate note:

Hi Dave,

We are looking into this issue, as it seems to have reared its ugly head again. Back in 2010 we organized a meeting of companies affected by the Minkus activity

I’ll let you know when I have more news.

So, there is activity, but very limited. Given this is something that touches on so many software companies, and now end-users, is it perhaps time to get organized and develop a unified response and tactics? Or at least a common understanding so that those getting sued can quickly get a base understanding of the issue, implications and where they sit.

If you want to see activity cool down in this sector just let it steadily percolate out there that simply starting a network may infringe a patent.

You have to think this is more important to members than the educational webinar, networking and similar efforts these associations seem to mainly be about.

Disclosure: I’m not a member of either the Hatfields or McCoys, a little because I’ve not seen compelling value in being a member, but a lot because I am not the personality type that gets excited about conference calls with steering committees. Some people do, and bless their twisted souls.