The Prior Art

Patent Troll Tracker speaks—and vows to return.

Part Two: The life, death, and promised re-birth of the Patent Troll Tracker blog. In Rick Frenkel's own words.

This is a transcription of Frenkel's five-page declaration dated April 4, 2008, case file N.D. California 08-80075-JF.

Note his promise to return to blogging at No. 9.

Declaration of Richard Frenkel in Support of Richard Frenkel's and Cisco Systems, Inc's Motions to Quash Subpoena and Motions for Protective Order

I, RICHARD FRENKEL, declare and state as follows:

1. I am an attorney and member of the California Bar since 1999, and am licensed to practice in California.

2. I have worked at Cisco since February 2006 as an attoney in the Intellectual Property Legal Department. As of April 2007, my full title became Director, Intellectual Property—Consumer & Emerging Technologies. Among my responsibilities since April 2007 has been oversight of certain patent litigation and other disputes involving the company, and management of employees doing the same.

3. On May 9, 2007, I began a news-oriented website called “Patent Troll Tracker.” My stated goal, in my first post, was “to educate the world on how many patent cases are out there that are filed by trolls.” I continued that education by providing regular news articles about cases filed by non-practicing entities colloquially known as “patent trolls.”

4. The Patent Troll Tracker website continued until late February 2008. During these nine months, I published over 180 articles about different facets of patent litigation and “patent trolls.”

5. Patent Troll Tracker was published regularly. For example, I had a monthly installment where I would review the patent litigation statistics from the previous month, and report on litigation filed by non-practicing entities. I call this by “Troll Call.” Besides the monthly feature, I would try to have an assortment of stories, about two or three per week, focusing on different interesting cases and the debate on patent reform issues.

6. Until earlier this year, I published the Patent Troll Tracker website anonymously. In September 2007, Chicago attorney Raymond P. Niro (“Niro”) contacted me, seeking to find out my true identity. Niro is well known for writing articles and interviews describing himself as the best protector of “patent trolls,” such as a July 20, 2006 article in IP Law & Business featuring Niro, titled “Meet the Original Patent Troll.” Starting with his mid-September 2007 contact to me, Niro began giving interviews publicly decrying my website, and wrote me several emails. I responded to some of his correspondence in my own website.

7. In late November 2007, I learned that Niro was offering a $5,000 information for reward leading to my identity. Later, he increased that award to $10,000, and then to $15,000. When news stories on other websites and magazines began discussing Niro’s reward, someone evidently posted a comment on the website Slashdot, which Niro claimed to be a death threat against him and his family.

8. I voluntarily disclosed my identity on my website on February 23, 2008. My understanding is that Niro claims he did not have to pay the reward.

9. After I revealed myself to be an attorney employed by Cisco, my employer and I were sued in Texas for defamation relating to an article I posted on October 18, 2007. As a result of the defamation lawsuit and related investigations, and since the Patent Troll Tracker website is a website that is published solely by me, I decided to temporarily suspend the website. I intend to resume the publication in the near future, after taking time to attend to some of the legal matters that need my immediate attention. When I resume the publication, I intend to continue to regularly report on patent reform issues as well as patent litigation filed across the country, focusing primarily on news about patent litigation filed by people or entities that are not making any products or providing any services related to the patents. At that time, the website will again be open to the public.

10. Niro was a guest on an internet radio program (“Lawyer 2 Lawyer”) on March 27, 2008, and repeated his criticisms of my website announcing that “I am going to be taking his deposition in a case shortly.” He also made reference to the Arkansas and Texas litigation where I am a defendant along with Cisco, stating that “I know Johnny Ward (the Arkansas Plaintiff) very well and I know Eric [Albritton] (the Texas plaintiff) too.” He then commented on the litigation in a way unfavorable to me.

11. On the morning of Saturday, March 29, as I was leaving the house, I found a subpoena on my doorstep.

12. The subpoena at issue comes from a case pending in the United States District Court for the Northern District of Illinois, Eastern Division, Case No. 078-C-5081, Illinois Computer Research, LLC v. Google, Inc. A true and correct copy of the subpoena is attached hereto as Exhibit C-1. My understanding is that the subpoena was issued at the request of the Plaintiff/Counterclaim Defendant Illinois Computer Research and a third party defendant and counterclaimant Scott C. Harris (“Harris”). The Defendant and Counter-Plaintiff is Fish & Richardson P.C. (“Fish”). ICR and Harris are represented by Raymond Niro of Niro, Scavone, Haller, and Niro. The only cited relationship in the subpoena that I am alleged to have with the Chicago case is “as a close associate of Fish.”

13. It is not true that I am a close associate of Fish. I have never been employed by Fish and during my career as a patent litigator before joining Cisco, I was personally adverse to Fish in at least two cases. When I joined Cisco, I learned that Fish was adverse to Cisco in a case pending in the District of Massachusetts. Up until this case was resolved in mid-October 2007, this conflict prevented Cisco from hiring Fish.

14. In mid-November, it is my understanding that Cisco hired Fish to take over representation of Cisco in a patent infringement case pending in Delaware. Although I do not have direct responsibility for this Delaware litigation involving Fish, I have been indirectly involved in that litigation.

15. As part of the ICR/Harris subpoena, I am being asked to testify about and produce documents regarding confidential sources and unpublished information that I have used to gather and report news about patent litigation on my Patent Troll Tracker website. The subpoena also attempts to compel me to testify about and to produce unpublished documents that I obtained and used for preparation of my communications to the public on my Patent Troll Tracker website. For example, Request No. 6 asks for “Investigative materials, sources for, and procedure for the Patent Troll Tracker blog articles identified in Exhibits A to C.”

16. Throughout the entire publication of Patent Troll Tracker, I have been engaged in newsgathering activities for the purpose of reporting on news about patent litigation and the debate regarding patent reform. I am concerned that if I am forced to produce unpublished information and to testify about and produce such material that it will result in a serious detriment to my ability to gather and disseminate the news.

17. For example, many of the ideas of my articles originated from tips readers would send me about patent lawsuits that were filed, or publicy-available corporate filings by shell corporations revealing the identity of their true owners. Should I be compelled to reveal my sources for these stories, readers will be less likely in the future to provide me with such information.

18. Moreover, the subpoena deposition topics and document requests are so grossly overbroad and are not properly limited to relevant and non-privileged information in the ICR/Harris/Fish litigation. As such, complying with the subpoena would impose an undue burden on me to attempt to comply. The subpoena, which I found on my doorstep on Saturday morning, March 29, 2008, only gave me nine days to produce numerous documents and only ten days before it required me to appear for a deposition. My objections for each and every document requested are set out by my counsel, George L. McWilliams, as an exhibit to his declaration, attached to Richard Frenkel’s Notice of Motion, Motion to Quash Subpoena; Motion for Protective Order; and Memorandum of Points and Authorities. I incorporate those objections by reference herein.

I declare under penalty of perjury that the foregoing is true and correct.
Executed on April 4, 2008.

Signed, Richard Frenkel

---------------------------------------------------------

Scanned PDF version of this document. <link>

Next, Part Three:
The question at the heart of the Harris-Frenkel dispute: Is the Patent Troll Tracker a reporter?

Part One: Scott Harris' lawyers drop Troll Tracker deposition demand.

Americans can't defeat Wal-Qaeda, but Brits will duel with Google: Trademarks stateside and across the pond

Google's feeling tough enough to fight its wars on two fronts when it comes to trademark law.  As I mentioned below, our May issue includes a story about the Rescuecom v. Google lawsuit at the 2nd Circuit, where Google is looking for a big win; today, Slashdot points to this TV news story about how Google intends to allow U.K. advertisers to buy ads on trademarked keywords, as they already do in the U.S. Of course, some mark-holders already are threatening to sue, as several have in the U.S. (they've all either lost, or lost badly.) No word in this story on when Google will implement this new policy, or such changes are in the works anywhere else.

Currently, if a British searcher types in "Ford cars," she'll see an organic link to Ford and possibly a paid ad for Ford, but won't see an ad for, say, Honda, while an American making the same search may see such competitors advertising. (Yahoo doesn't sell trademarked keywords in the U.S., but they'd like to—they weighed in with an amicus brief supporting Google in the Rescuecom case, together with eBay.)

Last month, I talked to Keker & Van Nest lawyer Michael Page, who is representing Google against Rescuecom in New York, and we talked about the differences between American & European trademark laws.

"European trademark laws are very different beasts," says Page. "They really think of it as owning the words, and you can’t use them. American laws are about protecting consumers." Some of the European trademark decisions have been "very harsh," he notes. "Germany and France are very both anti-speech; it's a sort of thought control. eBay has lost a series of decisions... They can’t allow anyone to list for sale World War II or Nazi memorabilia anywhere. It’s a fairly hostile environment for commerce and speech."

So, for example, it might be tougher for Georgia computer store owner Charles Smith to sell T-shirts and beer steins with slogans like Wal-Qaeda and Wal-ocaust outside a Wal-Mart in, say, Paris. (Is there such a thing?) But Smith resides in Georgia, where he is free to thumb his nose at the world's largest retailer and create bizarre and disturbing images like the ones pictured here. After Wal-Mart told him to cease and desist, Stanford Professor Larry Lessig hooked Smith up with lawyers from Public Citizen and the ACLU, who helped Smith win a complete victory in March after a two-year battle against the mega-store. In an 82-page smackdown, a federal judge basically told Wal-Mart that 1) Smith is a parodist, 2) it's a free country, and 3) deal.

Wal-Mart apparently paid $200,000 just to conduct a survey to measure alleged "consumer confusion," and probably paid millions to their Quinn Emanuel lawyers. And for what? Here's the best part: Smith sold all of 62 T-shirts, including 15 to one of Wal-Mart's outside law firms! Not exactly a weapon of mass dilution. (which law firm bought the shirts?? Inquiring minds want to know! Please email pics of any lawyers seen wearing Wal-Qaeda T-shirts.) Wal-Mart lost more than just money in this litigation: the judge ruled that the store has no common-law trademark claim to its yellow smiley face; that's not good timing, since the company's trademark on that symbol is being challenged at the Trademark Trial and Appeal Board.

Speaking personally, I think the term "Walocaust" is a heavy-handed and unfortunate metaphor that's likely to offend folks with connections to the real Holocaust. Using a Holocaust reference to discuss anything that's not actual genocide just isn't helpful to anyone, including would-be parodists and critics.

But Wal-Mart's attempt to label Smith as a lawbreaker for "diluting" and tarnishing their trademark is a good example of how trademark laws, like copyrights and patents, today reach far beyond their historical roots. Unlike copyrights and patents, which are monopolies granted as incentives to creators, trademarks are granted so that consumers clearly understand the true source of a good or service they're buying. We're all better off with only Wal-Mart being allowed to slap up a sign on its stores that says "Wal-Mart," because we know who we're buying from; but the thinking is, we're also better off knowing that if push comes to shove, we can always start selling Wal-Qaeda T-shirts.

Highlights from the May issue

The May issue of IP Law & Business is out. The cover story profiles 50 top IP people  under 45, and is available online. (free registration required)

More highlights from the May issue (subscribers only):

• Patent bar to E.D. Tex: enough is enough. AIPLA has filed a brief urging the U.S. Court of Appeals for the 5th Circuit to force East Texas judges to transfer more cases out of the district. It's an effort to head off more heavy-handed venue reform that could come from Congress, but there are already early signs that the local judiciary is thinking of ways to keep the patent docket heavy even if they lose this case, which involves a product liability lawsuit against Volkswagen.

• Keyword-advertising showdown in Manhattan: Google brings in the big guns, hoping for a solid win at the 2nd Circuit to make it clear that selling trademarked keywords is perfectly legal, pro-consumer—and not so different than traditional advertising practices.

Troll Tracker, hunted: Scott Harris' lawyers come to San Jose

Scott C. Harris was fired from Fish & Richardson shortly after his patent on "Enhancing touch and feel on the Internet" was used to reach out and touch Google, a firm client.

That erupted into a web of allegations between Harris, his former firm, Harris’ lawyers at Niro Scavone—and now Patent Troll Tracker blogger and Cisco IP director Rick Frenkel. Now L' Affaire Harris continues in the good old Northern District.

Last week, lawyers from the Niro firm filed a motion in a San Jose federal court to compel Frenkel’s deposition. I only saw it this morning, and put off posting on it to finish another story; of course, I was promptly scooped by my friend John Letzing at Marketwatch.

Harris’ lawyers want to depose Frenkel this month; can’t wait, they say. Frenkel and Cisco have responded with a motion to quash the subpoena. Niro, of course, is Frenkel’s most well-known adversary; he offered a $5,000 bounty for Troll Tracker’s identity and upped it to more than $10,000. (Niro has said the bounty went uncollected; he doesn’t know who outed Frenkel).

The full petition to depose Frenkel is not online, although a request to speed up the process is.

"Richard Frenkel, in his blog, Patent Troll Tracker, promoted Fish’s ownership claims, creating doubt among potential licensees and boosting Fish’s claims to ownership of the Harris patents."

"Frenkel, as the Director of Intellectual Property at Cisco Systems, has a clear association with Fish & Richardson ("Fish") and its attorneys.  In fact, Fish has represented Cisco in several law suits such as Cisco Systems Inc. et al. v. GPNE Corp., Case No.1:07-cv-00671.  In addition to the professional relationship with Fish as in house counsel for Cisco Systems, Frenkel has maintained a professional relationship with Kathi Lutton, the head of the firm's Global Litigation Practice.  Mr. Frenkel participated with Kathi Lutton and John Dragseth (another Fish attorney) in a webinar on May 30, entitled KSR, Managing Intellectual Property.  Given this association between Fish and Frenkel, it appears that Frenkel was acting at Fish’s behest to interfere with ICR’s ability to license its patent portfolio.  Frenkel may be Fish’s agent or may simply be acting at Fish’s  direction.  ICR is entitled to know the extent of the relationship and common interest between Fish and Frenkel, because it directly impacts Fish’s tortious interference with ICR’s licensing activity.

In a September blog post, Frenkel had asked whether Harris was the "mastermind" behind these lawsuits—an allegation that Fish made explicitly, saying Harris targeted firm clients like Google and Dell for patent infringement lawsuits, a "stunning" betrayal by a top lawyer. Harris won't say whether he has any financial interest in the Illinois Computer Research v. Google litigation (07-cv-05081, N.D. Illinois).

In all, Frenkel wrote the Troll Tracker blog for nine months until he revealed himself; then he was sued by two Texas lawyers, one of whom may have been after him for some time.

Speaking of that lawsuit, the Johnny Ward Jr. defamation suit against Cisco and Frenkel has moved into an Arkansas federal court. Cisco and Frenkel are asking to transfer it, oddly enough, to the Eastern District of Texas.

Documents:

• Harris' request for a speedy Frenkel deposition. <link>
• Frenkel's opposition. <link>

eBay v. lawyers with patents

Google will be headed back to the Western District of Wisconsin to fight off a patent lawsuit it thought it had beat, thanks to yesterday’s appeals court decision in HyperPhrase Technologies v. Google. (Bloomberg News story here; court order is here)

That case is connected, by both venue and attorney, to the Netcraft Corp. v. eBay lawsuit that a Wisconsin federal judge tossed out last week on summary judgment. I wrote about that case in Monday’s Daily Journal, and it’s worth following up on here.

Like the MercExchange case that has dogged eBay for more than six years, the Netcraft litigation involves a patent-wielding lawyer-inventor.

Netcraft Corp. v. eBay Inc., 07-00254 (W.D. Wisconsin)

Andrew Egendorf is a Massachusetts lawyer-inventor who began laying a broad claim to the world of electronic commerce in the mid-90’s. (find a short bio with photo here). In May, he sued eBay for infringing on his patents on “Internet billing methods.”

Netcraft is the patent-holding company set up to assert Egendorf’s patents; in addition to the eBay litigation, he filed a Delaware lawsuit against five cell phone companies in October. Netcraft Corp. v. AT&T, 07-cv-00651 (Delaware). Netcraft’s parent company is called Tradecraft; another entity called Datacraft has popped up in some patent searches).

Netcraft's lawyer is Fish & Richardson partner Frank Scherkenbach—who also represents Google against HyperPhrase, a locally grown Wisconsin patent-holding company. eBay hired an Irell & Manella team led by Morgan Chu, who tells me that Irell started working with eBay in 2006.

Even though he lost this one, Egendorf can’t be too disappointed. After all, it looks like he cashed in a few weeks before he even filed the suit against eBay. He’s one of five named inventors on a “friend finding” social networking patent, number 6,618,593, which was sold for $2.86 million at the April 2007 OceanTomo auction.

Egendorf is a lawyer with deep connections to rise of the Internet. He helped found Symbolics in 1980 with some heavy-hitters out of MIT’s Artificial Intelligence Laboratory, and became the company’s general counsel in 1983.

Symbolics was the first dot-com ever, and the company soon had a famously uncomprising opponent: free software advocate Richard Stallman. Stallman has nothing but disdain for software patents like those Egendorf builds and litigates; he also took a mighty dim view of the folks who founded at Symbolics.

“They would get outside investment, not have scruples, and do everything possible to win,” Stallman said in a lecture transcribed here. Stallman had a bitter falling out with Symbolics, describing its founding as a “stabbing in the back,” but also said the company inspired him to created GNU, his free operating system.

In 1968, Egendorf and a friend wrote to Ralph Nader, describing themselves as "disgusted Harvard graduate students who must endure endless years of drivel in order to mechanically defend the guilty and profitably screw the consumer,” according to this article in the San Diego Union-Tribune. He urged Nader to enlist him in a “judicial jihad” and became one of the original “Nader’s Raiders.” Egendorf is interviewed in the Nader documentary "An Unreasonable Man," which I have not seen.

And file this under interesting timing: the "Andrew Egendorf" entry in Wikipedia was flagged for deletion on May 3, 2007—the same day Egendorf filed his lawsuit against eBay. If I were of a more conspiratorial mindset, I might think that suspicious. But it looks like the Wikipedians who voted to kill the page were mainly annoyed that it was written by his old buddy and former Symbolics president Russell Noftsker. The articlde-deletion debate is nothing special, and can be read here.

Short histories of Noftsker, Egendorf and venture capitalist Jean de Valpine, are on Noftsker's Wikipedia user page. The note on Egendorf mentions that his wife Linda is a well-known sculptor.

She's a would-be inventor, too. Linda Egendorf has her own patent application in the works--it's for a "method of creating a soft sculpture."