Pat Lit Weekly: FedEx Sends Scott Harris Patent Packing

This week, a Scott Harris patent bites the bar-code dust, for now. And a close look at how it made its way from application to the courtroom shows how a lawyer-inventor was able to claim that FedEx infringed his intellectual property with every package it shipped.

Scott Harris is a former big-firm patent attorney who is also, according to his patents and related lawsuits, responsible for a wide array of technological innovations: from anti-spam software to toasters to "enhancing touch and feel on the Internet."

Over the years, Harris's patents have been used to sue a wide range of companies, including Dell, FedEx, Motorola, and Google. The Harris patent that had progressed furthest towards trial, No. 6,666,377, is controlled by BarTex Research LLC, a patent-holding company that filed an infringement suit against FedEx in the Eastern District of Texas two weeks after it was formed there. In the company's complaint, BarTex lawyers at the Chicago patent boutique Niro, Scavone, Haller & Niro claim that the existence of the '377 patent, which covers bar code-scanning technology, means FedEx should make the holding company a royalty payment on every package it ships.

But BarTex suffered a setback in that lawsuit last month when E.D. Texas Judge Leonard Davis finalized a claim construction order that could wind up invalidating the '377 patent. BarTex's attorneys have stipulated as much if Davis' claim construction is allowed to stand—something they hope to prevent. On March 16, they filed papers indicating they will appeal Davis's Markman order to the Court of Appeals for the Federal Circuit. (Read Judge Davis' order finalizing the claim construction [PDF].)