In September 2007, Fish & Richardson, a law firm that is a powerhouse in IP, forced out one of its top-billing lawyers. Scott C. Harris had recently sold some of his patents to a holding company, which quickly used them to sue Google, a firm client, for patent infringement. I covered this story as a reporter and am still following it. What follows below is a timeline of relevant events to the Harris-Fish dispute, with links to some key documents. It is meant to be a summary of key events, not an exhaustive narrative. I will update this page time permitting. (Last updated May 2, 2008.)
- Patent office issues U.S. Patent No. 6,666,377, "Bar code entry data device," the '377 patent to Scott C. Harris (pictured at right), a principal at the San Diego office of Fish & Richardson, a top intellectual property law firm. The patent is later used to sue FedEx.
- Patent office issues U.S. Patent No. 6,704,791, "Three dimensional experience for thick and thin clients," or the '791 patent, to Scott C. Harris. The patent is on a method of displaying three-dimensional objects online. It will later be used to sue Dell, General Motors, Panasonic, and others.
- Patent office issues U.S. Patent No. 7,111,252, the '252 patent, to Scott C. Harris, entitled "Enhancing Touch and Feel on the Internet." This patent is later used to sue Google, which led to Harris' split with his law firm.
- Harris sues Kodak, Cars.com and Move.com, accusing them of infringing the '791 patent. Scott C. Harris and Memory Control Enterprises v. Classified Ventures, LLC, et al. 1:06-cv-07055,
N.D. Illinois (Chicago). Harris and patent-holding company Memory Control Enterprises are represented by Niro, Scavone, Haller & Niro, a well-known patent plaintiffs' law firm based in Chicago. The Niro firm represents plaintiffs asserting Harris' patents in all lawsuits referred to in this timeline. (Download Harris v. Classified Ventures, LLC complaint)
- Harris and MCE file another lawsuit, claiming that General Motors, Dell Computer, and Panasonic also violated the '791 patent (diagram excerpt at right). Scott C. Harris and Memory Control Enterprises v. Dell, Inc., et al. 1:07-cv-01389, N.D. Illinois. This lawsuit is later combined with above '791 lawsuit. (Download Harris and MCE v. Dell complaint)
- After this lawsuit is filed, Dell complains to Fish that the suit is connected to Harris, a firm partner. (Source: ICR amended complaint)
- Fish informs Harris he has done "nothing unethical or inappropriate," following an investigation. (Source: ICR amended complaint)
- Fish demands that Harris sell the '252 patents and some others in order to stay at the firm. (Source: ICR amended complaint)
- Harris sells the '791 patent to holding company MCE, which continues to battle Dell, GM, Panasonic, Kodak, Cars.com and Move.com. Harris tries to withdraw as a plaintiff. (source: court records)
- Harris sells the '252 patent to Illinois Computer Research (ICR), a newly formed holding company controlled by James Beauregard Parker, a Florida attorney. (source: Illinois corporate records)
- Harris sells the '377 patent, related to bar codes, to BarTex Research, LLC, a newly formed holding company also controlled by Parker. (source: Texas corporate records)
- BarTex Research uses the '377 patent to sue FedEx in East Texas. BarTex Research LLC v. FedEx Corporation et al, 6:07-cv-00385-LED, E.D. Texas.
- In an Aug. 29 letter to Google, Harris' attorney Ray Niro writes that the company's book search feature is covered by the '252 "Touch and Feel" patent. The letter is addressed to Google's Head of Patent Strategy, Michelle Lee. "Michelle, we have worked with you in the past, so you know that our goal is a studied but prompt and fair resolution of this matter," writes Niro.
- Google immediately complained to Fish "and sought its help in having the the infringement claim withdrawn," according to lawyers at the Niro firm. (source: ICR amended complaint, 10/5/07)
- Honda, LG Electronics, Motorola, Oakley, and US Cellular are sued by Memory Control Enterprises, asserting they have infringed the '791 patent. Memory Control Enterprise, LLC v. American Honda Motor Company, Inc. et al, 1:07-cv-04903, N.D. Illinois. (Download complaint)
- Google calls for Congress to reform the patent system on a company blog. Head of Patent Strategy Michelle Lee is a co-author of the post, which denounces "frivolous patent claims from parties gaming the system." (Lee is the addressee of the letter sent by the Niro firm just five days earlier.)
- ICR sues Google, a Fish & RIchardson client, for patent infringement in Chicago. Illinois Computer Research v. Google, Inc. 07-cv-05081, N.D. Illinois.
- Final settlements are reached in the earlier '791 lawsuits against Dell, GM, and others in which Harris was a named plaintiff. Information Week reports on the ICR v. Google lawsuit.
- After 14 years at his firm, Scott Harris is forced out. Fish & Richardson's Managing Partner, Peter Devlin, demands that Harris resign within 24 hours. Harris complies. (3) The anonymous Troll Tracker blog reports on the ICR v. Google lawsuit, asking "Who's the kingpin?"
- Troll Tracker notes Scott Harris' disappearance from the firm directory and the demise of his web site, entitled "I'm a Patent Troll." (image above right) On it, Harris wrote: "Troll! Guidance for obtaining and using patents. Don't Like Patents? ... Patents will continue to exist whether you like them or not." Harris said he put up the site to “put together some advice for people who were having trouble” with trolls, but never put much content on it.
- Daily Journal publishes first Scott Harris story (download article)"Partner Leaves Fish After he Sells His Patent," by Joe Mullin. Fish claims that Harris' patent business was "for his personal benefit and not authorized by the firm." The ousted lawyer denies he is controlling any litigation based on his patents. "I think the way I've been characterized is very unfair," Harris said. "I'm a technologist and a patent attorney. I've always believed my technology might be used to help the world." Meanwhile, Harris opens a solo patent practice in a San Diego suburb.
- Niro lawyers add Fish & Richardson as a defendant in the ICR v. Google lawsuit, claiming Fish employees tried to "pressure, punish and intimidate" Harris in an attempt to shut down the lawsuit and undermine ICR's negotiating position. (Download ICR amended complaint)
- Daily Journal (download article) reports: "Patent Suit Expands to Include Fish & Richardson as Defendant," by Joe Mullin. “It’s ironic that Fish & Richardson, that touts itself as a protector of inventors and inventions, would treat one of their own inventors this way,” says Ray Niro (pictured), attorney for Harris and ICR. Fish says the allegations are baseless.
- Fish & Richardson counter-sues Scott Harris, accusing him of targeting firm clients for patent infringement lawsuits. Harris “likely retained a financial interest in the proceeds of those suits,” writes Fish's outside counsel at Jenner & Block. “The breadth of Mr. Harris’s betrayal is stunning.” (Download Fish's counterclaim v. Harris)
- The Daily Journal (download article) and The Recorder both report the counterclaim against Harris. (See "Firm, Former Lawyer Face Off," Daily Journal, by Joe Mullin) Harris denies he targeted any firm clients: "I didn't know exactly what they were going to do with [the patent]," he said. "Fish & Richardson told me, in no uncertain terms, to sell this patent and do it sooner rather than later."
- Harris declines to say whether he has any ongoing financial interest in the litigation, as Fish alleges. He also declines to elaborate on his relationship with J. Beauregard Parker, who controls ICR and BarTex Research. Parker praises Harris' invention and condemns "I think Mr. Harris is a genius and a prolific inventor, and has a very creative mind," says Parker.
- Parker declines to comment on the BarTex lawsuit, or to discuss when he first made contact with Scott Harris.
- Scott Harris counter-sues Fish. (Download Harris' counterclaim v. Fish)
- Harris names two other Fish employees who have acquired patents and used them in lawsuits. John Phillips (pictured at right), presently managing principal of Fish's San Diego office, is a co-owner of MercExchange, a patent-holding company that sued eBay in a case that went to the Supreme Court. Court records from eBay v. MercExchange (E.D. Virginia, filed 2001) show that Phillips, who has a 10 percent stake in MercExchange, has taken an active role in defending MercExchange's patents while they are under re-examination at the patent office. Tom Woolston, co-owner and president of MercExchange, prosecuted the MercExchange patents while he was an attorney at Fish, according to Harris' counterclaim.
- East Texas: A small patent-holding company called PA Advisors, affiliated with frequent patent litigant Erich Spangenberg, files a patent lawsuit against Google and 10 other companies in the Eastern District of Texas. PA Advisors, LLC v. Google, Inc. 2:07-cv-00480-TJW, E.D. Texas. This lawsuit does not involve Harris-invented patents or Niro firm lawyers. But one of the lawyers helping PA Advisors sue Google is Joseph Diamante, from the New York offices of Jenner & Block; the same firm is defending Fish, and Google, in Chicago.
- Chicago: Google settles with ICR; infringement claim against it is dropped, thus ending any possibility of a conflict with Jenner & Block. ICR v. Google moves ahead without Google, now a dispute between Harris, his former employer Fish & Richardson, and ICR, the patent-holding company controlled by J. Beauregard Parker.
- San Diego—Daily Journal: "Pressure Mounts for Former Fish Attorney." (download article) Harris says Fish cracked down on him to show it was going to get tough on an employee who did business with non-practicing entities. He denies he 'targeted' any firm clients, but he did discuss possible uses of the patent with potential buyers.
- "They instructed me in no uncertain terms to sell my patents and do it quickly," said Harris in an interview. "The only way to do that was to find a market for it. The only way to do that was to explain to prospective buyers why they might want it."
- Meanwhile, Fish's lawyers are demanding to see the contracts between Harris and the holding companies he sold his patents to.
- Florida: J. Beauregard Parker sues Samsung Electronics Co. and Nokia Corp. in Florida, alleging infringement of four more patents invented by Harris. Innovative Patented Technology, LLC, v. Samsung Electronics Co., 9:07-cv-81148-KAM, S.D. Florida. Niro firm represents plaintiff. (Download complaint)
- Washington, D.C.: Separately, Harris argues at the U.S. Court of Appeals for the Federal Circuit that the Patent Office should accept his patent application on a method of doing business. In re Ferguson, 07-1232, at the U.S. Court of Appeals for the Federal Circuit. (oral argument here, Harris' brief is here, PTO opposition brief is here, Harris' reply brief is here; briefs courtesy of Patently-O, which has the best writeup of the case.)
- Chicago: Fish files motion to compel, demanding that Harris and his lawyers produce any documents relating to Harris' possible financial interest in any of his patents, and any documents relating to the possible assertion of his patents against firm clients.
- Chicago: A Parker-controlled company files another lawsuit asserting Harris patents, this time against Motorola. Innovative Patented Technology, LLC v. Motorola, Inc. 1:08-cv-00005, N.D. Illinois.
- Chicago: Fish & Richardson asks Judge to add six new named defendants to lawsuit, but doesn’t say who they are.
- San Jose: Patent Troll Tracker reveals himself under threat of losing his anonymity. PTT is Rick Frenkel, an IP director at Cisco Systems. Cisco has been a high-profile proponent of patent reform legislation of the type Frenkel advocated for in his blog.
Longview, Tex.: Frenkel is promptly sued for defamation by two Texas attorneys in Texas state court. One of them, Johnny Ward Jr., is the son of Judge T. John Ward, a well-known patent judge. Ward apparently first started hunting for Frenkel in November. Ward first sued in Gregg County District Court, and then moved the lawsuit to Arkansas federal court on 3/13/2008. <Download Ward complaint> Ward v. Cisco Systems, Inc. et al. 4:08-cv-04022-JLH, W.D. Ark.
- Longview, Tex.: The other lawsuit was filed by Texas lawyer Eric Albritton on March 3. <Albritton complaint>
- Texarkana, Ark.: Johnny Ward Jr. moves defamation lawsuit against Troll Tracker into Arkansas federal court.
- San Jose: Scott Harris’ attorneys demand to depose Patent Troll Tracker blogger Rick Frenkel. Illinois Computer Research v. Fish & Richardson, LLC 08-mc-80075-JF, N.D. California. Niro lawyers say they want to depose Frenkel to see if he was working in cahoots with Fish & Richardson
- San Jose: Both Frenkel and his employer Cisco Systems both oppose the attempt to depose Frenkel, and file motions to quash the subpoena. It’s motion to compel v. motion to quash! Mid-May hearing scheduled in San Jose.
- Chicago: Judge Pallmeyer grants Fish motion to add defendants to Chicago complaint. Deadline to file amended complaint is 5/21/2008.
- Texarkana, Ark: Cisco Systems and Rick Frenkel move to dismiss Arkansas lawsuit, claiming improper venue. <Motion to transfer> They want to move lawsuit to E.D. Texas, to consolidate Albritton and Ward cases.
- Texarkana: Ward Jr. agrees to dismiss his charge against Frenkel, but pushes ahead with lawsuit against Cisco.
- ED-Texas: Ward Jr. v. Cisco Systems Inc. is moved to ED-Texas. Frenkel asks for attorney's fees for Ward v. Cisco Systems lawsuit. <link to pdf>
- Ward Jr. opposes transfer, saying Ward and Albritton defamation cases should be kept separate. Reason? E.D. Texas docket is too crowded with patent cases. <link to PDF>