Eighth Circuit Defends Use of Term “Patent Troll,” Vacates Injunction against Infringement Defendant

By on March 24, 2022
Posted In Patents

The US Court of Appeals for the Eighth Circuit vacated an injunction restraining defendants from engaging in certain allegedly harassing conduct because there was no evidence tying the defendants to the alleged misconduct and reassigned the case to a new district judge to obviate any doubts about the judge’s impartiality. Tumey v. Mycroft AI, Inc., Case No. 21-1975 (8th Cir. Mar. 4, 2022) (Erickson, J.)

Tod Tumey is a lawyer who represents Voice Tech Corporation in patent litigation against Mycroft AI, an open-source network focusing on voice assistance technology. Tumey separately sued Mycroft on his own behalf, alleging that Mycroft retaliated against him for representing Voice Tech by launching or inspiring a series of cyberattacks, hacking attempts and harassing phone calls (“heavy-breathing phone calls”) against Tumey, his law firm and his family.

Mycroft had publicized its involvement in the underlying patent litigation and shared negative views about “bogus patents” and “patent trolls,” including statements that it is “better to be aggressive and ‘stab, shoot, and hang’ them, then dissolve them in acid.” Mycroft posted on its blog links to Tumey’s “confidential correspondence,” as well as documents in the underlying patent infringement lawsuit. Mycroft also posted updates on litigation developments with headlines such as “Mycroft Defeats Patent Trolls … Again … For Now.” The company cautioned patent trolls to “stay away” from Mycroft because “You’ll get your ass kicked,” and posted that “Rather than pay the troll toll, we decided to accept the fight.” In the underlying patent litigation, Voice Tech moved for an order requiring decorous and civil conduct by the parties, including a request that Mycroft cease using the term “patent troll.” The district court granted the order, which Mycroft viewed as sufficiently narrow and limited in scope such that it was willing to comply with the restrictions rather than appeal.

In the case brought on his own behalf, Tumey sought a temporary restraining order or, in the alternative, a preliminary injunction to prevent the cyberattacks, phishing and harassing phone calls that he and his family were experiencing and for which Tumey believed Mycroft was responsible. Mycroft opposed the proposed temporary restraining order (TRO), arguing that there was no evidence to attribute any of the alleged conduct to Mycroft. Mycroft also submitted sworn declarations averring that no one associated with Mycroft was involved in cyberattacks or harassment. The district court set a teleconference on the “Motion for Temporary Restraining Order.” About an hour before the set time for the hearing, Tumey circulated to the court and counsel a new proposed order, now styled as a preliminary injunction (PI). At the hearing, Mycroft objected to converting the request for a TRO to a PI hearing. The district court overruled the objection and heard testimony from several witnesses, including Tumey and that of an expert retained by Tumey who testified that he had not found any forensic evidence to attribute any of the cyberattacks or harassment to anyone associated with Mycroft. When Tumey was asked about the results of the expert’s investigation, the court interrupted and sua sponte ordered Tumey not to disclose what the investigation had uncovered. The district court also permitted Tumey to call a neighbor of one of Mycroft’s founders with whom the founder had a contentious relationship and who gave negative character evidence about the founder. Mycroft also called an expert who testified that there was no forensic evidence to connect any misconduct with anyone associated with Mycroft. At the conclusion of the hearing, Mycroft argued that no injunction should issue in the absence of adequate evidence connecting Mycroft to any of the alleged acts of harassment. Nonetheless, after summarily stating that all the factors it needed to consider favored Tumey, the district court granted the preliminary injunction.

Mycroft moved to vacate or stay the injunction pending appeal, asserting that issuing the injunction was erroneous and unconstitutional because it was unsupported by evidence that Mycroft was responsible for the cyberattacks and harassment, was unconstitutionally vague, presented a prior restraint on speech and publication and was overbroad because it prohibited speech protected by the First Amendment. Without addressing Mycroft’s claims, the district court declined to depart from its prior findings and rulings. Mycroft appealed.

The Eighth Circuit granted Mycroft’s request to vacate the injunction and reassign the case to a new district judge. As to the injunction, the Court expressed “doubt” that it was procedurally proper to convert the TRO hearing to a PI hearing on such short notice. Even putting aside procedural due process, the Court held that an injunction was improper where there was no evidence to tie Mycroft to the alleged acts of harassment. The Court did not reach Mycroft’s constitutional arguments, although it defended the use of the term “patent troll” on the grounds that the Supreme Court had used the term before. The Eighth Circuit also pointed out that the US Patent & Trademark Office already invalidated one of the two patents Voice Tech had asserted against Mycroft in the underlying litigation, and that the other patent was subject to an ongoing Patent Trial & Appeal Board proceeding and awaiting a final written decision.

The Eighth Circuit also looked askance at the district court’s sua sponte restricting Mycroft’s access to evidence, or lack thereof, connecting Mycroft to the alleged unlawful conduct. The Court noted that issuing an overbroad (in the sense that it went beyond the purpose of maintaining the status quo) preliminary injunction and overruling Mycroft’s constitutional objections without sufficient analysis reflected a high degree of antagonism between Mycroft and the district judge. Accordingly, the Court found that “a reasonable person aware of all the circumstances and events that have transpired so far would harbor doubts about the judge’s impartiality” such that “reassignment to a different judge is appropriate.”

Paul Devinsky
Paul Devinsky advises clients on patent, trademark and trademark litigation and counseling, as well as copyright counseling. He is also active in intellectual property (IP) licensing, transactions and due diligence, as well as post-issuance US Patent and Trademark Office (USPTO) proceedings such as reissues and inter partes review, covered business method patent review and post grant review, and appellate (Federal Circuit) advocacy. Read Paul Devinsky's full bio.