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.
Q: How's your patent enforcement business going?
A: When you say "my business"... Because of the way things worked out with Fish, most of the patents being enforced are not mine anymore. Innovative Biometric is not my company. I do have some contingent interest in the case, but I don't own the company.
Q: So you are not the decision-maker in terms of when most of these lawsuits are filed and who the defendants are?
A: Correct, I'm not the decision-maker. I have agreed to cooperate with them. I help them identify who infringes, and provide technical assistance.
The Southwest [Technology Innovations] case is a little more complex because that patent has bounced around from owner to owner. It's now one of my companies that owns the patent.
Q: How many companies have been sued now on your patents?
A: It's probably in the 40-50 company range, I haven't kept track of it with any specificity.
Q: Of the various lawsuits asserting your patents, are any moving close to trial?
A: In the FedEx case [BarTex Research LLC v. FedEx Corp.], we're set for trial in January. I don't think anything else is close to trial.
Q: As the named inventor on these patents, have you been deposed in any of those suits?
A: Just once. [For BarTex]
Q: How are you doing in terms of getting settlements?
A: We're doing well. I and the people who own the patents are trying to maintain a reasonable view towards settlements.
Q: Let's talk about the Southwest Technology case, since you're the principal in that one. How did you choose the targets for this lawsuit on the anti-spam patent?
A: I can't talk too much about that.
Q: Have you had any success licensing patents without lawsuits?
A: In 25 years of being in this business, I've found that when you go to [a potential licensee], all they'll do is say to you, “Your patent is invalid, we don't infringe it anyway, and it was procured by inequitable conduct.” No one seems to play fair with the little guy.
Q: Well, maybe they're afraid of saying that because the penalties for infringement are pretty serious.
A: I would understand that.
Q: Why not make a spam filter product and put in the marketplace instead of enforcing patents on the companies that do that?
A: I haven't ruled out any idea like that. I've thought many times about starting a company and getting various kinds of technologies running. If I did, I don't know that spam filter would be the one... Maybe some of these other ideas I've had...
Q: Some critics of the patent-enforcement business say it's unfair to make nothing and just enforce patents.
A: If the rules said you have to make and market a product to get a patent, then that would be that. But the rules don't say that. A lot of these people seem to think the rules should say that.
Say you make a software company, and bankruptcy ensues. Your investors are trying to get their money back out of the assets of the company, and ultimately, the patent portfolio. You're not making [products based on] the patents anymore. It would be unreasonable for people to say, the investors shouldn't be able to get money from these patents.
I come up with these ideas. I spend time developing these ideas and writing patent applications on these ideas. And I have on many occasions tried to sell these patent applications to other people, because I think they're valuable.
There are different kinds of property. There is the property you get when you make the product, and the kind you get when you are the first to come up with the idea, and you give that to the world. I don't mean to sound preachy, but that's what the law says.
Q: One thing that surprises some people who follow your litigation is that you have inventions in such a wide array of technologies. How did that come about?
A: I have inventions that are just all over the place. When I left Fish I had about 30 patents, and now I have about 40. I also had around 50 pending applications, and now it's about 110.
The one in Texas [BarTex Research LLC v. FedEx Corp.] is about package tracking with bar codes. And there's spam filters, fingerprint readers. I really do have inventions in a lot of different fields. I have some inventions in graphics processing that maybe a year from now, we'll see...
Q: What are your favorite patents?
I came up with this notion of, using the power from an audio jack to power your cell phone. There's actually electricity that comes out of that audio jack. A lot of planes don't have things to charge your cell phone. But you could use that to charge something that didn't have a lot of power. That's one of my favorite patents. It's never done anything.
Q: Why not? Is there no product on the market that infringes that?
A: Someone once told me there was, but I couldn't find it. If there is such a product, it's got very minor sales.
Q: How do you come up with your inventions?
A: I've come into a whole bunch of ideas in different ways. One of the ones I thought was the most interesting was [related to] this whole notion of product counterfeiting. Even big companies like Target sometimes fall victim to scams. they buy things, like toner cartridges that are marked H-P [Hewlett-Packard], but they're fakes. The counterfeiters are so good.
One series of patent applications that I'm most fond of is, I have this one that uses crytpography to unambiguously determine whether something like that is authorized or not authorized.
As time goes on, these people who manufacture fake versions of the equipment are going to get more sophisticated. The problem is going to get bigger. I'm kind of hoping that someone will see some value in this in the future. Otherwise Target and Wal-Mart will keep getting ripped off by their suppliers.
Q: Tell me about another favorite.
A: Another invention, and I built a little prototype of this one, I came up with when I was thinking that, whether a piece of bread toasts right or not depends on so many things. How hot or cold is the toaster, and what about the piece of bread that goes in there?
I thought, “How can this possibly be, that in this really sophisticated world, a toaster can't tell how to make toast exactly right?” I ended up playing with one of those laser temperature sensors and making a toaster that would sense the temperature of the bread. By watching the temperature of the bread, you can get the toast to be the same every time. It had value to me, because I was always annoyed [at uneven toast].
Q: Is your toast perfect now?
I had it working, but the toaster I put it into didn't look too good. It works, but my wife won't let it in the house. I ran wires all over the place. I had to cut a hole in the top of the toaster. It doesn't look like a pretty toaster that could sit in the kitchen.
Q: Are you getting a patent for the perfect toaster invention?
A: There's an application pending on it. I imagine I'll eventually get a patent on it. But who's to say? Who knows what's been done before?
Interviews are condensed and edited for clarity, style, and grammar.
- Southwest Technology Innovations, LLC v. St. Bernard Software, Inc. et al. 09-cv-1487, S.D. California, filed 7/9/2009. Complaint [PDF]
- Innovative Biometric Technology, LLC v. Lenovo, Inc and Fujitsu America, Inc. 09-cv-81046, S.D. Florida, filed 7/17/2009. Complaint [PDF]
Image: flickr / Maurits Burgers
Harris's audio jack patent is 6,552,512. Very broad claims and only one piece of prior art cited - by the examiner! A five-minute search on Google Patents turned up a bunch of prior art. If Harris really wants to profit off of his patents, he should do a patent search, let the PTO reexamine it, and come out with claims that could survive challenge. Until then, all he's going to get is nuisance-value settlement, if he even gets that.
Posted by: Patent Lawyer | July 24, 2009 at 10:22 AM