This week: the lawsuit against Amazon you have heard about, and the
lawsuit against Amazon nobody has heard about. Plus, defendants launch
retaliatory lawsuits against a small software company and the world's
largest software company; an Oregon lawyer-inventor creates a new batch
of litigation; a Scott Harris suit moves to the defendant's home turf; and
the bell rings on yet another round in Blackboard v. Desire2Learn's patent spat over
educational software.
Going After Amazon, Part I (or Throw the e-Book at 'Em)
Discovery Communications Inc. v. Amazon.com Inc., 09-cv-00178, D. Delaware, filed 3/17/09.
This one has been well-cover covered: see MarketWatch, WSJ, and CNET, among others; see also Discovery's press release.
The CNET story includes Discovery's non-response to Greg Sandoval's
question: even if it wanted to, is there a Discovery
Communication unit that could even build an e-reader to compete with the Kindle? ("We are
only focused on the Kindle at this time," says Discovery.) Discovery Communications has been on the receiving end
of a few patent lawsuits over the past decade, but has never before
filed as a plaintiff. Discovery is represented by Michael Jacobs of Morrison Foerster, the San Francisco IP lawyer best known for pummeling SCO on behalf of Novell.
Going After Amazon, Part II (or, Please make a donation. Really. We insist.)
The Tobin Family Education And Health Foundation et al. v Amazon.Com, Inc., 09-cv-00160, M.D. Florida, filed 3/17/09.
William J. Tobin founded PC Flowers & Gifts back in 1989, launching the company on the Prodigy network, one of several privately owned online precursors to the Internet. Tobin's company thrived for several years—BusinessWeek once called him a "pioneering online marketer"—but ultimately failed once the Internet opened its virtual doors. By the end of 2001, Tobin had sold the PC Flowers & Gifts website to someone else.
But that's the thing about the way businesses flamed out in 2001: the companies died easy, but their patents are dying much harder. These days, the long, sordid epitaph of the dot-com bust is still being written in the file wrappers and court records of patent lawsuits scattered across the nation. (See, for example, Quinn Emanuel lawyer Michael Powell, whose PitchWare dot-com went bust but left him with a patent he used to squeeze settlements out of a few big media companies last year.)
So it is with the Tobin family's flowers-and-gift enterprise. The business itself may be long gone, but Tobin's lawyers are still adept at creating patents, and alert to the benefits of prompt enforcement.
Case in point: A Tobin patent application filed in the dark days of February 2001 finally yielded U.S. Patent No. 7,505,913 on March 17 (despite the date, it's not a system and method of producing green beer). What this patent describes is a method of conducting customized online marketing. Tobin's lawyers filed their patent infringement suit against Amazon.com the same day he got the patent.
While one of the named plaintiffs here is a charity organization--the Tobin family foundation--the "et al." represents a very-much-for-profit holding company: Commerce Technology Licensing, LLC, also owned & managed by William Tobin.
Tobin is represented by lawyers from Stearns Weaver Miller Weissler Alhadeff & Sitterson, a Florida firm, as well as counsel from Lerner, David, Littenberg, Krumholz & Mentlik, the New Jersey IP boutique that prosecutes his patents.
TomTom Tells Microsoft Where to Go
TomTom Global Assets B.V. v. Microsoft Corporation, 09-cv-118, E.D. Virginia, filed 3/16/09.
Microsoft is proud of its patent licensing program. The company regularly sends out press releases that boast of its licensing deals with dozens of other tech companies. Lately, for instance, Microsoft has been touting cross-licensing deals with printer company Lexmark and 123map, a German company that provides mapping services for mobile phones.
Rarely mentioned in the press (and certainly never mentioned by Microsoft): that such collaboration with other companies often occurs when the alternative is a punishing round of litigation courtesy of the world's largest software company—the equivalent of being faced with a loaded gun, or to borrow Mike Masnick's metaphor, a "pointy stick." But when Microsoft pointed its stick at TomTom, an Amsterdam-based company that's a major provider of software for GPS systems, the latter didn't hesitate to push back.
Microsoft fired full-bore in March, accusing TomTom in both district court and at the International Trade Commission of infringing no less than eight of the software maker's patents .
Microsoft has been rattling its saber for some time about the patents it holds covering Linux-based open source software, the attack on TomTom represents Microsoft finally delivering on its threats against Linux. In its lawsuit, filed in federal district court in Seattle, Microsoft is represented by Sidley Austin and Klarquist Sparkman.
Last week, TomTom retaliated, filing suit in the Eastern District of Virginia. It has accused Microsoft's mapping product, Microsoft Streets and Trips, of infringing four TomTom patents: nos. 5,902,350, 5,938,720, 6,660,994 B1, and 6,542,814. TomTom is represented by Morrison Foerster. And speaking of E.D. Virginia...
Juniper Hits Back at GraphOn
Juniper Networks, Inc. v. Graphon Corporation et al., 09-cv-00287, E.D. Virginia, filed 3/16/09.
Over the past two years, GraphOn, a small software company based in Santa Cruz, Calif., has filed lawsuits against a number of large tech companies, including Juniper Networks and other heavyweights like Google. Now, GraphOn is on the receiving end of a patent lawsuit filed by Juniper.
Considering how many big players GraphOn has sued--and that the company does actually have a product for sale--it's surprising that it took until now for someone to retaliate. In patent disputes, a strong offense is generally the best defense--a strategic approach that some in the high-tech community have described as "mutually assured destruction."
Juniper and a second GraphOn target have also thrown a GraphOn patent into reexam, making this a two-front counterattack.
One interesting twist: GraphOn chose to file all of its suits in the plaintiff-friendly Eastern District of Texas, Marshall Division, where the federal court's docket—still the most popular in the nation for patent suits—has slowed considerably. Juniper, on the other hand, filed its countersuit in the Eastern District of Virginia, home to the U.S. Patent and Trademark Office and still the nation's true rocket docket. Last year, Verizon v. Cox went to trial in E.D. Virginia within just 10 months in a case that earned a spot in IP Law & Business's top 10 IP litigation wins for 2008. (Free reg. required). Juniper's counterpunch may well make it to trial before GraphOn's East Texas lawsuit.
GraphOn, a public company (OCTBB: GOJO.OB) got its patents when it acquired Network Engineering Software, Inc. (NES) in 2005. And, says GraphOn CEO Robert Dilworth, "aggressively protecting the acquired technology is important to maximizing its value to GraphOn." Those patents and applications are growing and maturing: on its website, GraphOn's advertises new patents such as no. 7,424,737, which covers technologies "fundamental in the conduct of online commerce," says Dilworth.
For the record, GraphOn accuses Juniper of infringing U.S. Patent Nos. 5,826,014, 6,061,798 and 7,028,336; Juniper, represented by Alan Fisch at Kaye Scholer, accuses GraphOn of infringing no. 6,243,725. GraphOn has no defense counsel on that case, but has a variety of firms working on its E.D. Texas lawsuits, including Howrey LLP, a big IP firm that has denounced patent trolling but is happy to help GraphOn in its E.D. Tex case against AutoTrader.com. Other GraphOn lawyers include Watson Rounds of Reno, Nevada; Joseph Vanek of Vanek, Vickers, and Masini of Chicago; and Parker, Bunt and Ainsworth as E.D. Texas local counsel.
Human Traffic
Traffic Information Llc v. At&T Mobility Llc et al, 09-cv-00083, E.D. Texas, filed 3/20/09.
Traffic Information, LLC is one of those mysteriously-named "Texas" companies that appears to be Texan only insofar as it has a particularly strong interest in one room in the state—name, Judge T. John Ward's Marshall courtroom.
Texas corporate records show that Traffic Information is managed by the same two Oregon patent lawyers named on its inventions: Kevin Russell of Portland IP boutique Chernoff, Vilhauer, McClung & Stenzel, and Bruce DeKock of medical research company Bend Research. Russell, who prosecuted the patents on the Russell/DeKock inventions, did not answer my calls this week; Bend Research informed me DeKock was also unavailable.
Traffic Information LLC used to be called Russell DeKock LLC, but that name might have seemed a bit too, ah, accurate for two lawyers planning to sue dozens of companies in the Eastern District of Texas. So Russell and DeKock changed their company's name before filing their first lawsuit in 2007. (What, was "Traffic Innovative Technologies" taken?)
Russell and DeKock have now sued nearly 40 companies using their patent, no. 6,785,606, "System For Providing Traffic Information." The list includes every major GPS manufacturer, car companies including Nissan, BMW, Mercedes, Honda, and Volvo, and every major cell phone manufacturer; CBS Radio and XM Satellite Radio were also sued. Seven defendants were hit with an additional patent, 6,466,862.
In this lawsuit, Russell and DeKock sued AT&T Mobility LLC, Research in Motion, Sony Ericsson, Sprint, T-Mobile, Verizon, Volvo, and Volvo of Dallas (a ploy to keep venue?), claiming the companies infringe the '606 patent. Russell and DeKock are the named inventors, along with Richard J. Qian, an engineer who appears to be employed at Microsoft. Qian did not respond to my e-mail, and Microsoft declined to comment on Qian's online resume, and even if he is actually employed by the software giant (which is not on Russell & DeKock's target list, yet.)
Traffic Information is represented by Polaseck, Quisenberry & Errington of Bellaire, Texas. Local counsel is Ireland, Carroll and Kelley of Longview and Capshaw DeRieux of Tyler.
In looking at the number of household-name companies named in the 40-plus patent suits filed during the week, the majority were targeted by these two Oregon patent lawyers. An impressive feat that, as it happens, was matched California inventor Gregory Bender (see below).
* Gregory Bender v. Broadcom Corp, National Semiconductor, and others.
Bender filed nine patent lawsuits on March 16 in which he asserted his own patent, 5,103,188, against a variety of defendants in the Northern District of California. Bender sued Texas Instruments in E.D. Texas back in 2006, and doesn't appear to have filed anything between that case and this batch. As this one is local to me, I'll be watching be watching it closely.
* Memory Control Enterprise, LLC v. Symantec Corporation
09-cv-01063, N.D. California, 3/16/09. Transferred in from Chicago.
Scott Harris is a former Fish & Richardson lawyer who now enforces his own patents, and has been covered extensively here and elsewhere. Harris and his lawyers at Niro Scavone asserted a single patent, No. 6,952,719 (“Spam Detector Defeating System”) against Symantec back in September. Symantec moved to transfer to Northern California and Harris' lawyers at Niro Scavone did not object. The '719 patent has a long history; even while he was at Fish & Richardson, Harris asserted the patent against computer retailer Dell, among others.
* Blackboard Inc. v. Desire2Learn Inc.
09-cv-00040-RC, E.D. Texas., 3/16/09.
Blackboard Inc. owns some patents on e-learning that did a good job of getting the attention of the higher education community. After winning a trial against Ottawa, Canada-based competitor Desire2Learn Inc., Blackboard won $3.1 million and got an injunction against Desire2Learn, which says its design-around means it should be free from that injunction. Blackboard, the industry leader in providing educational-management software used by professors in higher education, has become quite controversial in higher-ed and open source circles for enforcing this patent. It is represented by McDermott Will & Emery. Desire2Learn maintains a blog describing its take on the dispute.
Hope you enjoyed this week's edition! The Week in Patent Litigation will be a regular feature here on The Prior Art; and will be featured on the new IPLB website as well.
Photo: Vijverln / E. Boutet via Wikimedia
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