At the Spring IBO show Billboard Insider’s Dave Westburg had a wide-ranging interview with Burr Smith, Chairman of Broadsign, and Ari Buchalter, Chief Strategy Officer of Broadsign.  We will run excerpts from the interview.  Today Burr Smith talks about taking on an out of home patent troll. The entire out of home industry benefited from Smith’s courageous stand.

Burr, from 2012 to 2020, a patent troll called T. Rex was suing billboard companies, claiming patent violations and seeking massive damages.  Broadsign called their bluff – and won.

I’ll give you a little background on my philosophy around litigation. Earlier in my career in real estate in St. Louis, we were involved in a very public controversy over a proposed privately-financed stadium for the St. Louis Football Cardinals. It drew in the state, the city, Fortune 500 companies, environmental groups—everyone was suing us. At one point I was managing the company while juggling half a dozen lawsuits simultaneously. What that experience taught me was this: litigation is a horrible way to solve anything, I hate it, and I don’t want to do it—but if I have to do it, I’m not scared of it and I’ll do whatever it takes to win.

As for T. Rex—I didn’t really know about them until later. We’d been to industry meetings where people talked about them and what to do, but nobody wanted to take action. Then T. Rex started suing our clients…and we had to act. There were two important facts working in our favor. First, they weren’t suing us directly—if you sue the software provider, you can only file one claim, whereas suing the publishers let them pursue everyone simultaneously. Second, we had been in business before they even filed their patent application. That gave us prior art, which was a serious problem for their case.

We flew to Norway and gave them a simple choice: stop suing, or we’re going to fight. They asked for $2 million to settle. I told them I’d spend $2 million in legal fees before I’d give them a dollar. They didn’t believe me. We first filed an action in Washington, D.C. to get the Patent Office to acknowledge they’d made a mistake issuing the patent—but they weren’t inclined to do that, so we went to New York. There, we started filing motion after motion. Each motion does two things: it costs the other side money to respond, and it builds a picture in the judge’s mind of why the case shouldn’t exist at all. We won a series of motions. After winning the first motion on the fundamental validity of the patent, we had a settlement offer within 72 hours. We agreed to a confidential settlement—but we also made it clear that we would make our work product available to anyone who was still being sued. Patent trolls want you to settle. They don’t really want to go to trial. Once it became obvious that people might fight, there wasn’t much incentive to keep on filing suits.