The Prior Art

Patent Litigation Weekly: Juniper’s Novel Defense Tactic Attracts Unlikely Allies

Peter Shipley is a Bay Area hacker and patent-holder who sues technology companies under the corporate name Enhanced Security Research, LLC. In 2007, ESR sued Juniper Networks in district court in California for patent infringement. Juniper struck back in February with a novel false-marking lawsuit, which The Prior Art reported on in June.

Juniper's argument, readers may recall, is that every time a browser loads Shipley's web page, an “offense” is committed because his mention of two patents he holds, Nos. 6,119,236 and 6,304,975, constitutes false marking. False marking occurs when a product is marked with the number of a patent that doesn't really cover it.

Shipley's attorneys at Townsend and Townsend and Crew and Robins, Kaplan, Miller & Ciresi argue that their client is simply posting his patent numbers as part of an online resume, not as a way of trying to sell or market a product. For that reason, they say, he can’t be accused of false marking.

Juniper’s line of attack against Shipley has now attracted an ally: the Public Patent Foundation, which has asked for permission to file an amicus brief on Juniper’s behalf.

PubPat's bid to jump into the case coincides with its ambitious plans for a false-marking litigation campaign, assisted by David Garrod, public interest lawyer by day and patent enforcer by night. (Garrod owns a patent and has sent East Texas love letters to a large chunk of the Internet, and two smaller companies. Garrod and PubPat founder Dan Ravicher are co-authors on the brief.)

The Week in Patent Litigation (March 9-13)

In this edition, a lawyer-inventor wants a royalty on cell phone 911 calls; a RIM subsidiary fires off a lawsuit at Motorola; a small Chicago trading firm takes on two big banks; and a fight over a piglet-saving vaccine.

Going After Big Banks

Edge Capture LLC et al. v. Barclays Bank PLC et al., N.D. Illinois 09-cv-01521.

Holding company Edge Capture and partner Edge Specialists LLC sued two international banks--Barclays and UBS--as well as a Chicago-based trading technology company, Wolverine Trading, for patent infringement.

Edge Capture owns two patents issued in 2007, 7,251,629 and 7,177,833, while Edge Specialists LLC is an "independent software vendor" owner by inventor Thomas M. O'Donnell, who has extensive experience in financial markets. 

In its suit, O'Donnell's company emphasizes its "extensive United States patent protection" for its trading tools. The plaintiffs are represented by a legal team at Robins, Kaplan, Miller & Ciresi, led by powerhouse patent litigator Ron Schutz, who has won big awards for St. Clair IP Consultants and Grantley Patent Holdings, among others.

ClearChannel will pay out $90 million in E.D. Tex patent loss

In April, ClearChannel lost $66 million when an E.D. Texas jury found it guilty of infringing a patent held by holding company Grantley Patent Holdings. Now, the judge in the case has tacked on $16.5 million and interest payments, for a total of almost $90 million.

There have been five big plaintiffs' victories in East Texas already this year; the smallest one was $21 million. My colleague Nate Raymond at The American Lawyer has a good roundup of those decisions here.

The trial was with Judge Clark in the Lufkin division. Grantley Patent Holdings was represented by Minneapolis-based Robins, Kaplan, Miller & Ciresi LLP, led by partner Ron Schutz (pictured). ClearChannel was represented by Andrews Kurth. Notably, ClearChannel doesn't appear to have hired any Eastern District counsel. (Grantley had help from Beaumont-based Germer Getz.) This appears to be the only patent case Grantley has filed, so far.

Via Patently-O.

Schutz tells me that the inventors are the plaintiffs in interest; Billy Shane Fox and a business partner own Grantley Patent Holdings, and they control the company that supports their MaxaGrid product. The company is in decline now with two employees, but once had a contract with Clear Channel, which used many of its products for scheduling radio advertisements.

During closing arguments, Clear Channel's counsel, had the hometown advantage, noting that he was born & raised in nearby Marshall, according to Schutz; but that didn't overcome Schutz, who had his own story to tell about being born on a farm in Minnesota and how he was the first person in his family to get a college degree.

On the way out, "A guy comes up to me and says, well, Mr. Schutz, I think you out humbled them," says the lawyer. Schutz is featured in this week's National Law Journal "Winning" supplement: Mom's Advice Wins.

Grantley Patent Holding Ltd. v. Clear Channel Communications, Inc. 06-cv-00259-RC, E.D. Texas.