A Postcard from the Solaia Patent Odyssey
Philip Brooks' "Patent Infringement Updates" points a September 26, 2005 article in the Star Tribune by Dee DePass describing the experience of nine companies that joined together to defend allegations of patent infringement from a reputed patent troll:
Initially, each of the nine companies hired an independent counsel, sought
software specialists and met with plant managers to verify that the patent in
question -- No. 5,038,318 -- was not employed in their automated manufacturing
processes. The patent, which Solaia purchased in 2001, was related to a
spreadsheet software device for communicating real-time data between automated
In June 2003, seven of the Minnesota manufacturers [filed a declaratory judgment action against] Solaia in U.S. District Court in Minnesota.
Solaia tried and failed to consolidate the Minnesota lawsuit into others being tried in Chicago. Solaia's law firm, Niro & Scavone, then took the unusual step of suing Fish & Richardson, accusing the law firm of soliciting manufacturers not to honor Solaia's patent. That case was dismissed this year. "I have never heard of any lawyer being sued because they were representing us. That was a new one," Ubel said. "Our group just had a good chuckle and we welcomed Fish & Richardson" to the regular meetings at the Minneapolis Club. By sticking together, the firms made a strategy of "divide and conquer" impossible, said Peyton of the National Association of Manufacturers.
"They want to say, 'Oh we are heroes because we banded together and took on
the evil giant.' That is nonsense," said Ray Niro, the Solaia attorney. "All they did was wait until there was a related decision down in Chicago that they perceived as being beneficial to them. And then Solaia agreed that they would defer based on that decision. Absolutely it was Solaia's decision. They didn't have to dismiss the case."
"It really blows my hot buttons to hear all this troll nonsense. Those who talk about trolls are know-nothings. They have no background dealing or enforcing patents," said Ray Niro, the Solaia attorney at Niro, Scovone, Haller & Niro who sent the letter to Valspar. He said his style of patent litigation helps cash-poor inventors protect their intellectual property, adding that big companies are not the only ones entitled to patent protection.