This week—False Marking II: This Time, It's Personal. Also, lawyer-owned patent-holding companies at work, in Los Angeles and Longview.
- Juniper Networks, Inc. v. Shipley. 09-cv-00696-SBA, N.D. California. Filed 2/17/2009.
Peter Shipley owns a license plate that reads "LIV2HAK." He also owns two patents, 6,119,236 and 6,304,975, which cover his inventions related to computer firewalls. On his personal website, Shipley writes: "Around '93 or '94 I started thinking about network 'auto-defense' and 'reactive firewalls,’ I first filed a patent on these ideas in '96."
While the patent information isn’t all Shipley shares on the site—his resume, Christmas wish list, essays about computer security and hacking, and advice on "nightclub dress and conduct" are also posted—the site is also, strangely, at the heart of the legal battle he’s embroiled in with Juniper Networks.
That fight began in 2007 when Shipley created patent-licensing company Enhanced Security Research; shortly thereafter, ESR filed suit against Juniper in the Eastern District of Texas, alleging infringement.
When operating companies sue one another (see, for example, Microsoft v. TomTom, and GraphOn v. Juniper Networks.), it's not unusual for a defendant to retaliate by filing its own patent infringement suit to gain leverage.
But it's hard for a defendant to gain leverage when a non-practicing entity like ESR files a lawsuit, because there's no product to target in a patent counter-suit. That may help explain the novel approach adopted by Juniper’s attorneys at Irell & Manella in responding to ESR. Their argument: by posting his patent numbers online, Shipley is guilty of false patent marking.
By putting his patent numbers front and center on his website while offering services such as security consulting and web hosting, the Juniper lawyers say, Shipley is claiming that the site advertises a "product or service" that's "marked" with those numbers. And because he hasn't actually had an firewall operating on his site since 1999, the lawyers say, Shipley is misleading visitors to the site with the following language, which is perhaps meant to deter hackers who once plagued him:
"Shields holding captain…"
"D.IP.SHI.T" Dynamic IP SHIeld Technology. A selfmodifing [sic] active firewall/packet filter designed to act as a LAN auto-defense and offense monitor/tool. This is a idea I came up with a few years ago.
Shipley's lawyers at Townsend and Townsend and Crew were surprised, to say the least, to find their client on the receiving end of a false marking lawsuit.
"It was pretty shocking," says Andrew Oliver, a Townsend lawyer representing Shipley in the false marking suit and ESR in the infringement suit against Juniper. Shipley's use of his own patent numbers is simply part of an online list of his accomplishments, says Oliver—an act, he adds, that Congress couldn't possibly have meant to criminalize when it passed the false marking statute: "Could it really be possible that Congress intended anyone who has a network- or computer-related patent to not list it on their online resume, for fear of being liable for false marking?"
False marking suits allow a plaintiff to sue for up to $500 per "offense," and split any damages 50/50 with the federal government. But as TPA reported recently, there's confusion over just what constitutes an "offense" is in this context.
Juniper’s initial argument was that Shipley committed an "offense" each time a person loaded his website in a browser beginning in 1999, which would make Shipley potentially liable for millions of dollars. (Juniper's lawyers did not immediately respond to a request for comment.)
"This seems on its face to raise a real potential for abuse," says Oliver. "What's to stop someone from reloading the web page a bunch of times to increase the damages?"
Judge Saundra Armstrong of Oakland was unimpressed by that argument, and granted a motion to dismiss filed by Shipley's lawyers. She did, however, allowed Juniper's Irell lawyers, led by Morgan Chu, to amend their complaint, which they did on May 19. Oliver and his colleagues responded on June 3 with a second motion to dismiss.
(TPA confesses to having loaded Shipley's page at least six times in the course of reporting this column, which, under this theory, would add $3,000 to the damages tab.)
Meanwhile, ESR has dramatically expanded its enforcement campaign. Working this time with lawyers from Robins, Kaplan, Miller & Ciresi, Shipley filed a new complaint in Delaware on May 29, seeking damages from nine other companies that market firewall products, including Cisco, IBM, and Nokia.
That case is: Enhanced Security Research LLC v. Cisco Systems Inc. et al. 09-cv-00390-UNA, D. Delaware. ESR's earlier patent lawsuit is Enhanced Security Research LLC v. Juniper Networks, Inc., 07-cv-00481-TJW-CE, E.D. Texas (Marshall). Filed 11/2/2007.
In Guardian Suit, Wii Wriggles Free
- Guardian Media v. Coby Electronics Corp. et al. CV-08-08439, C.D. California, filed 12/22/2008.
Guardian Media Technologies is a patent-holding company controlled by Thomas Coverstone, a patent lawyer and former partner at Townsend and Townsend and Crew. TPA covered Guardian Media's most recent patent lawsuit last month.
Guardian’s standard practice is to assert two patents it bought from an Australian inventor. Those patents claim to cover V-chip technology used to censor video content based on age-appropriate ratings.
Now, Foley & Lardner lawyers representing Nintendo Corp.—one of 36 defendants targeted in a suit Guardian filed in December—have managed to get their clients off the hook. On June 2, Judge Manuel Real of Los Angeles granted Nintendo’s motion for summary judgment of non-infringement in the case. Only two of the defendants, Bose and Fujitsu, have settled so far.
In reaching his decision, Real noted Nintendo's argument that Guardian's patents cover old technology—standard video transmissions—and were issued in 1990. Nintendo lawyers argued those patents couldn't possibly cover their product—the Nintendo Wii, a favorite target in infringement suits—because, though the console does have parental controls, it doesn't play movies or TV shows.
Guardian protested, but to no avail. Nintendo's lawyers, led by Foley’s Grant Kinsel beat this one down this one in a mere five months. Clearly, California’s Central District is not the E.D. Tex. Speaking of E.D. Tex…
One Address, Lots o' Lawsuits
- Actus, LLC v. Amazon.com, et al. 09-cv-00168-TJW (Marshall), filed 5/26/2009.
More fun at 111 W. Tyler Street. Actus LLC, a lawyer-controlled patent-holding company that TPA wrote about in April. On May 26, Actus filed suit against 15 other large companies, including Apple, OfficeMax, and eBay, using the same four patents-in-suit, bringing the total number of defendants sued by the company to 35.
Actus is represented by Bo Davis, a lawyer who left McKool Smith recently to set up shop in Longview at the same Tyler Street office as Eric Albritton and Johnny Ward Jr. Court documents show that 111 W. Tyler Street is also the address of Aloft Media, a Texas shell company set up by the Zilka-Kotab patent-licensing shop. Busy little building, that.
Photo: Marking a Zero of its Kills, via Wikimedia.