U.S. Supreme Court Decision Clears Way for Vermont to Sue MJPH Technology Investments

According to Bloomberg BNA, the United States Supreme Court has decided not to hear a case in which federal or state courts should deal with patent-royalty “demand letters,” which could be bad news for 29 U.S. states with laws barring such letters. But the court also rejected a cross-petition from MPHJ Technology Investments, a non-practicing entity that has mailed thousands of demand letters to small businesses in Vermont and elsewhere demanding primarily small companies give it royalty payments for using their scanner or MFP’s scanning. Denial of MPHJ’s petition means Vermont can bring MPHJ into state court.

Vermont’s attorney general has accused MPHJ 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.

According to Bloomberg BNA:

“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).”

More Resources

• September 2015: Judge: Vermont Can Proceed with Case Against MPHJ for Allegedly Violating Consumer-Protection Laws
• August 2015: Big Win for Lexmark, Ricoh, Xerox, as Patent Board Finds Eight of MPHJ’s Scan Patents Unpatentable
• June 2015: Lexmark, Ricoh, Xerox ‘Blast’ MPHJ’s Claimed Scan Patents Before U.S. Patent & Trademark Office
• September 2014: Judge Dismisses MPHJ Technology’s Lawsuit Against Federal Trade Commission
• August 2014: Vermont AG Suit against ‘Patent Troll’ MPHJ Technology to Proceed
• November 2014: FTC: MPHJ Can Continue to Send Demand Letters for Use of Scan Patents
• March 2014: Ricoh, Xerox, Lexmark File Petition with U.S. Patent Office to Invalidate MPHJ’s Scan-Patent Claims
• January 2014: Judge: MPHJ Technology can Continue Sending Cease-and-Desist Scan-Patent Enforcement Letters
• January 2014: MPHJ Technology Files Scan-Patent Infringement Lawsuits against Four Companies, Including Coca-Cola and Dillard’s
• November 2013: MPHJ Sues First Company over Alleged Scan-to-email Patent Violations
• August 2013: In a First, MPHJ Technology Agrees to Stop Scan to eMail ‘Patent Trolling’ in a U.S. State