The Prior Art

Patent Litigation Weekly: Scott Harris Not So Inventive, Foes Say

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.)

Are East Texas companies becoming pawns in the venue-shopping game?

Bedrock Computer Technologies is a patent-holding company owned by David Garrod, a former Goodwin Procter lawyer. Last month, I wrote about Bedrock's lawsuit against several of the biggest Internet companies—and CitiWare Technology Solutions, a tiny Longview, Texas software company.

Since the publication of that column, CitiWare's owner, Nate Neel-Smith, has taken down his old website and replaced it with a web page denouncing the lawyers who sued him. The lawsuit against him was a big mistake, says Neel-Smith, since he actually went out of business some time ago. "See how you might feel when your [sic] sent a BOGUS lawsuit on which you must waste time and money to defend!" writes Neel-Smith.

In my earlier column, I speculated that CitiWare's inclusion in the lawsuit was a strategy by Bedrock and its McKool Smith lawyers to maintain their preferred venue in the Eastern District of Texas.

The Recorder's Zusha Elinson has done some additional reporting that suggests that theory may be right. Elinson cites research by patent lawyer Yar Chaikovsky showing that since the Federal Circuit's TS Tech ruling in December, it's been easier for defendants to get out of East Texas when they want to—except when at least one local defendant is included in the suit. In those instances, the venue seems to stick. Elinson notes another example of a small East Texas company tangled up in venue politics: Plano-based Big Jump Media Inc., which runs Tangle.com, "a sort of Christian YouTube site that used to be called GodTube." McKool Smith is also lead counsel on the lawsuit involving Big Jump Media.

These small companies may have become "absurd pawns in the patent litigation venue-shopping game," writes Elinson. Read the full article.

Photo: J. Mullin, Longview, Texas

Patent Litigation Weekly: Catching Up With Scott Harris

Scott Harris has been an inventor since he was 12. Later on, he became a lawyer. About two years ago, Harris’s name started popping up in patent lawsuits. Ultimately, his involvement in the patent-enforcement business caused him to split with his former partners at Fish & Richardson.

But Harris was not the first big-firm lawyer to get involved in patent enforcement for personal profit, and others are still plying the trade. Which raises a question: Was Harris’s mistake that he formed a “non-practicing entity” or that he failed to hire his firm to do the legal work?

In recent days, two holding companies have filed new lawsuits based on Harris' patents. One is Southwest Technology Innovations, which used the 6,952,719 patent, describing an anti-spam filter, to sue six technology companies with anti-spam products: five of the defendants are large, and one is a small three-person company based in Orange County. The '719 patent was used to sue Symantec back in December, by another holding company asserting Harris patents. That lawsuit was transferred from Chicago to San Francisco in March. Harris's lawyers from the Niro Scavone patent boutique moved to add new defendants to the suit, but their motion was denied last month; the '719 patent was then transferred over to a new holding company controlled by Harris, Southwest Technology Innovations, which filed its complaint on July 9 [Complaint, PDF].

A second lawsuit, filed against Fujitsu and Lenovo by Innovative Biometric Technology, asserts patent 7,134,016, which describes a biometric security systems for computers.

The Prior Art took the occasion of these new suits to catch up with Harris and find out what he’s up to these days.

Patent Litigation Weekly: Patent Bar, Doctors Face Off in Prometheus v. Mayo

The April/May issue of IP Law & Business featured a story about Robert Shafer, a Stanford University researcher whose free HIV database had become embroiled in a patent dispute that led Shafer to believe medical method patents are out of control.

Since that story’s publication, groups representing most of the American medical establishment have become involved in two major patent cases that turn on the same question that Shafer confronted: just what kinds of "technology" should be eligible for patent protection?

One of those cases, Prometheus Laboratories v. Mayo Collaborative Services et al., is now headed to the Federal Circuit; oral arguments are scheduled for August 5. Amicus briefs filed on both sides show clearly the divide between the patent bar and medical professionals on this issue.

Patent Litigation Weekly: Ex-Fish Lawyer Turns "Troll," Taps Former Firm for Suits

For Fish & Richardson, the Scott Harris saga is a dark chapter in firm history. Harris, readers of this column will recall, is the former Fish principal fired by the firm when it was revealed that his patents were being asserted against some big companies. In the ensuing litigation, Fish accused Harris of committing a “stunning betrayal”: hatching plans to sue technology companies—some of them Fish clients—while he was still employed by the firm.

Compare the strong response to Harris’s transgressions with the firm's reaction to the activities of Choongsoo Park, a former associate in Fish’s Washington, D.C. office who departed last year.

While still a Fish employee, Park acquired rights to several patents that he claims cover CDMA2000, a widely used for standard for cell phones, and 802.11, the protocol used for wireless Internet connections. He also created a holding company, SPH America, to assert those patents.

After Park's departure, his former colleagues quickly took him on as a client, helping him enforce his patents by representing SPH America in two district court lawsuits, as well as high-stakes litigation before the International Trade Commission. (Documents from the SPH America ITC complaint available at Oblon, Spivak's ITC Blog.)

For Fish & Richardson, the Scott Harris saga is a dark chapter in firm history. Harris, readers of this column will recall, is the former Fish principal fired by the firm when it was revealed that his patents were being asserted against some big companies. In the ensuing litigation, Fish accused Harris of committing a “stunning betrayal”: hatching plans to sue technology companies—some of them Fish clients—while he was still employed by the firm.

Compare the strong response to Harris’s transgressions with the firm's reaction to the activities of Choongsoo Park, a former associate in Fish’s Washington, D.C. office who departed last year.

While still a Fish employee, Park acquired rights to several patents that he claims cover CDMA2000, a widely used for standard for cell phones, and 802.11, the protocol used for wireless Internet connections. He also created a holding company, SPH America, to assert those patents.

After Park's departure, his former colleagues quickly took him on as a client, helping him enforce his patents by representing SPH America in two district court lawsuits, as well as high-stakes litigation before the International Trade Commission. (Documents from the SPH America ITC complaint available at Oblon, Spivak's ITC Blog.)

Good Magazine Goes Bad: The Ethics of Patent Trolling

In its current issue, GOOD magazine has a lengthy profile of Erich Spangenberg, one of the most successful "patent trolls."

Good, founded by Ben Goldhirsh to be a magazine for people who "give a damn," missed a great opportunity to address the ethical quandaries at the heart of large-scale patent assertion. While I write for a primarily a legal and business audience, I think that the kind of people who read Good would want to know how widespread patent lawsuits affect them—as consumers and as citizens. It’s an important issue, given that the purpose for patents under U.S. law is to "promote the progress" of science. 

It's one thing to say "patent trolls" aren't such bad guys after all and fill a needed niche in the economy. But Good goes so far as to compare Erich Spangenberg to Robin Hood. Hm... wouldn't we need some poor people to come into the picture after the "rob from the rich" part?

The reporter who wrote Good’s Spangenberg story really missed the point. First, she made the common mistake of mostly ignoring the most important public record of how patents are actually used—federal court litigation. It’s easy, but misleading, to go on and on about the "intellectual property business" when you conveniently ignore what's really happening—patent-holders going to court to enforce monopoly rights.