The Prior Art

Patent Litigation Weekly: Scott Harris Not So Inventive, Foes Say

Last week, The Prior Art interviewed former Fish & Richardson partner Scott Harris in connection with a pair of infringement suits filed based on patents issued in his name. Harris says those patents cover important inventions he came up with related to e-books and spam filters.

This week, his opponents are talking—and they say there’s not much to this patent lawyer’s "inventions."

Illinois Computer Research, or ICR, is a patent-holding company that owns Harris's "touch and feel" patent, which covers the displaying of books online. ICR sued Oprah's Book Club and Sony Electronics in December 2008, saying they infringed the patent, numbered 7,111,252. But ICR—owned by Florida lawyer James Beauregard Parker—has come up empty in the suit against Sony.

"The way they were reading the claims read directly on the prior art in our view," says Rich Gresalfi, the Kenyon & Kenyon partner who headed up Sony's legal team. "We asked them to go away, and they didn’t. We said, this case is over the top, and we're going to file an early summary judgment motion."  Once that motion was filed, ICR's lawyers at Niro Scavone dropped the case. (ICR's suit against the second defendant, Oprah Winfrey's Harpo Productions, is still pending.)

Realm of the Lawyer-Inventor: Oprah's Book Club sued for patent infringement

Did patent holding companies throw a year-end party in honor of my vacation? I flatter myself. But there must have been some kind of December discount I didn't know about. In any case, reviewing what happened over the last few weeks I feel a bit overwhelmed. But let's start with an old favorite.

Oprah Winfrey's book club has been sued for patent infringement. Not joking. The inventor is patent attorney Scott C. Harris, who claims to have invented a method of "Enhancing Touch and Feel on the Internet," described in his 7,111,252 patent, which was used to sue Google over its Book Search feature. Shortly after that lawsuit was filed, Harris was fired from Fish & Richardson, the top law firm where he was a partner—Google is a firm client. See my L'Affaire Harris timeline for more. The '252 patent describes a way of displaying three-dimensional objects online. It is being used to sue companies that, like Google, display books electronically.

Illinois Computer Research is the shell company that files lawsuits over the '252 patent. It is owned by a Florida lawyer, James Beauregard Parker, whose connection to Harris and his lawyers at Niro Scavone remains unclear.