Last week, The Prior Art interviewed former Fish & Richardson partner Scott Harris in connection with a pair of infringement suits filed based on patents issued in his name. Harris says those patents cover important inventions he came up with related to e-books and spam filters.
This week, his opponents are talking—and they say there’s not much to this patent lawyer’s "inventions."
Illinois Computer Research, or ICR, is a patent-holding company that owns Harris's "touch and feel" patent, which covers the displaying of books online. ICR sued Oprah's Book Club and Sony Electronics in December 2008, saying they infringed the patent, numbered 7,111,252. But ICR—owned by Florida lawyer James Beauregard Parker—has come up empty in the suit against Sony.
"The way they were reading the claims read directly on the prior art in our view," says Rich Gresalfi, the Kenyon & Kenyon partner who headed up Sony's legal team. "We asked them to go away, and they didn’t. We said, this case is over the top, and we're going to file an early summary judgment motion." Once that motion was filed, ICR's lawyers at Niro Scavone dropped the case. (ICR's suit against the second defendant, Oprah Winfrey's Harpo Productions, is still pending.)
Sony's brief sheds some light on Harris’s '252 patent. First, it points out that an early version of Barnes & Noble's main book-selling website met key claims of the '252 patent as far back as 1997—a full three years before Harris first filed his "touch and feel" book display ideas with the U.S. Patent and Trademark Office. Harris even mentioned www.BarnesAndNoble.com in his patent application, but failed to tell patent examiners that the site offered a text-excerpt feature—a fact that Sony intended to highlight in its inequitable conduct defense. (A defense that argues a patent applicant misled the patent office.)
The brief also sheds light on the argument Harris used to get a patent on the display of e-books in the first place. The examiner rejected Harris's main claim based on an earlier patent (referred to below as the "Rhodes" patent) that describes a method of displaying a page from a book online. Because that patent didn't describe a system of displaying more than one page, Harris argued, he deserved to get a patent of his own. The Sony brief quotes Harris, from the '252 patent prosecution file:
"Rhodes teaches nothing about the claimed feature of "'storing a plurality of images representing pages of the book... Rhodes teaches only a single book page, here the cover, being stored for each book."
(Sony Motion for Summary Judgment, p. 11) [PDF]
Ah, some plurality with our e-pages! That's what we've been missing. Of course.
- Southwest Technology Innovations v. St. Bernard Software et al.
Meanwhile, in the same January post that looked at the Oprah Book Club lawsuit, TPA also wrote about Harris's 6,952,719 patent (describing an anti-spam filter), which earlier this month was asserted against five large computer security companies, as well as one tiny Southern California company, Workgroup Solutions.
Workgroup, now called Excelerate Software, does advertise a product called SpamGate, but hasn't sold it since last year (the company continues to support a few existing clients). Excelerate is mainly in the power-management business, not the anti-spam business. TPA spoke to Jack Bailey, the San Diego–area computer consultant who created the SpamGate program now accused of infringing Harris patent.
"It's really kind of crazy," says Bailey. "The patent doesn't actually describe how the filter works. It just says that it filters spam by matching text."
What would be the value of reading the five-page '719 patent to a programmer who wanted to make a spam filter, TPA asked? Absolutely zero, says Bailey.
"It's like saying, 'build me a house' to five programmers. It doesn't say anything about how to do it. You couldn't build any sort of a working program based on that patent. It doesn't actually say how he matches paterns," said Bailey, incredulous.
The '719 patent was used to sue Symantec back in December, but the lawsuit was quickly transferred from Chicago to San Francisco. Lawyers representing the plaintiff Memory Control Enterprise, a holding company that asserts various Harris patents, then tried to add other computer security companies as defendants in the lawsuit, but their motion to do so was denied. The '719 patent was subsequently transferred to Southwest Technology Innovations, which used it to file suit against six more computer security companies.
The patent's transfer record indicates that "past enforcement rights" were somehow split off the patent, presumably to allow the MCE v. Symantec lawsuit to proceed. Symantec is represented by Quinn Emanuel Urquhart Oliver & Hedges.
"If he wasn't hauling people into court, I'd be rolling on the ground laughing," says Bailey. "He snowed somebody into thinking it's a real invention." Matching patterns is still one technique (out of many) used for catching spam, he adds. But an important text-matching system relied on by programmers, the “regular expressions” library, has been used in UNIX applications since the 1970s―decades before Harris's brainstorms occurred.
- Memory Control Enterprise, LLC v. Symantec Corporation, 09-cv-01063, N.D.Cal. 3/16/2009. (Transferred from N.D. Illinois.)
- Southwest Technology Innovations LLC v. St. Bernard Software, Inc. et al, 09-cv-01487 S.D.Cal. Filed 7/9/2009.
Photo: Wikimedia / CJ