The Prior Art

Patent Litigation Weekly: Stanford Researcher Loses at PTO, Still Fights On

In the April/May issue of IP Law & Business, we reported on the plight of Bob Shafer, a Stanford University scientist embroiled in a dispute with Luxembourg-based Advanced Biological Laboratories, S.A. (ABL). ABL claimed it owned two patents that were being infringed by the world-renowned HIV-drug resistance database Shafer created, HIVdb.

To recap quickly: After ABL sent Stanford claim charts and a letter asserting its patent rights, Stanford sued to invalidate the patents. That case settled, with Stanford agreeing to post a notice on the database stating that users of HIVdb might infringe ABL's patents.

ABL subsequently sued Stanford, saying the university had violated the settlement terms; the company also sued Shafer for defamation, based largely on comments he posted on his website, harmfulpatents.org. Shafer, tapping his own savings, hired attorneys at Day Casebeer to file reexams on the two ABL patents. (Day Casebeer has since been purchased by Howrey LLP.)

ABL's counterclaims against both Stanford and Shafer individually have now been settled. And it certainly appears that Chalom Sayada, the French doctor who is ABL’s CEO, has concerns about how the litigation makes him look to HIV researchers. The joint settlement statement reads, in part:

Patent Litigation Weekly: Juniper’s Novel Defense Tactic Attracts Unlikely Allies

Peter Shipley is a Bay Area hacker and patent-holder who sues technology companies under the corporate name Enhanced Security Research, LLC. In 2007, ESR sued Juniper Networks in district court in California for patent infringement. Juniper struck back in February with a novel false-marking lawsuit, which The Prior Art reported on in June.

Juniper's argument, readers may recall, is that every time a browser loads Shipley's web page, an “offense” is committed because his mention of two patents he holds, Nos. 6,119,236 and 6,304,975, constitutes false marking. False marking occurs when a product is marked with the number of a patent that doesn't really cover it.

Shipley's attorneys at Townsend and Townsend and Crew and Robins, Kaplan, Miller & Ciresi argue that their client is simply posting his patent numbers as part of an online resume, not as a way of trying to sell or market a product. For that reason, they say, he can’t be accused of false marking.

Juniper’s line of attack against Shipley has now attracted an ally: the Public Patent Foundation, which has asked for permission to file an amicus brief on Juniper’s behalf.

PubPat's bid to jump into the case coincides with its ambitious plans for a false-marking litigation campaign, assisted by David Garrod, public interest lawyer by day and patent enforcer by night. (Garrod owns a patent and has sent East Texas love letters to a large chunk of the Internet, and two smaller companies. Garrod and PubPat founder Dan Ravicher are co-authors on the brief.)

Odom Weighing In On Bilski for Oregon? That's News to Oregon

The Bilski case is heading towards a resolution at the Supreme Court, and 44 amicus briefs already await the justices—with more to come.

One of those briefs is from Gary Odom. Odom is a litigation consultant who claims he invented, and now owns a patent on, the idea of customizable tool groups in software. He has sued Microsoft, and 28 smaller software companies, demanding royalties be paid to him.

Odom's amicus brief for the Bilski case has garnered some attention, owing to the fact that Odom seems to be claiming the brief is actually on behalf of the entire State of Oregon, where he resides. See the front page of the brief [pdf], which states "Brief For The State of Oregon." There's no other reference to the state anywhere in the brief, and no Oregon state lawyers are listed as coauthors.

In fact, no lawyers' names are in the brief at all. Odom is not an attorney, and his coauthor, Jordan Kuhn, is a Colorado patent agent. They describe themselves as "patent practitioners" and Odom also identifies himself as "an inventor and patent holder."

When TPA called Odom today, he wouldn't talk about the brief, saying only "I'm not available right now" before hanging up. Follow-up e-mails and phone calls to Odom and Kuhn went unreturned. In a blog post about Bilski, Odom works his way through a few scatological metaphors before calling his own brief "cogently potent in its brevity and conservatism."

Tony Green, a spokesman for the Oregon Attorney General, said no one in his office had heard of Odom's purported statewide representation before TPA called. "It is our preference that people accurately convey who they're writing an amicus brief on behalf of," says Green. "We neither authorized this or had any knowledge of it."

But Green wasn't overly concerned, since the Supreme Court's Bilski docket clearly states that the brief is on behalf of only Odom and Kuhn, not the state. "It's clear they understand who this is from," says Green.

Monday Miscellany

The Patent Litigation Weekly column took a hiatus last week as I worked on IPLB's annual patent litigation survey and an upcoming cover story. To hold over readers, here's some interesting copyright & patent reading from the past week:

• News companies filed an amicus brief denouncing a judge's order in the "Catcher in the Rye" copyright case, saying she didn't take proper note of the First Amendment before enjoining publication: "Here a book was banned on the basis of a two-hour hearing with no witnesses."
• When The Prior Art last checked in on mystery inventor Gregory Bender, he and his lawyer had filed patent-infringement lawsuits against 28 companies. Now it's up to 37 defendants in 24 different suits, and Judge William Alsup has declined to relate the cases, despite the request of Bender's lawyer. 
• Zusha Elinson on the advantages and disadvantages of joint defense groups in patent lawsuits. (free reg. required)

Update 8/11/09: To clarify, Judge Alsup's order told the parties that it may be possible to coordinate hearings on claim construction and invalidity issues, but infringement issues will remain separate.