The Prior Art

Patent Litigation Weekly: Ex-Fish Lawyer Turns "Troll," Taps Former Firm for Suits

For Fish & Richardson, the Scott Harris saga is a dark chapter in firm history. Harris, readers of this column will recall, is the former Fish principal fired by the firm when it was revealed that his patents were being asserted against some big companies. In the ensuing litigation, Fish accused Harris of committing a “stunning betrayal”: hatching plans to sue technology companies—some of them Fish clients—while he was still employed by the firm.

Compare the strong response to Harris’s transgressions with the firm's reaction to the activities of Choongsoo Park, a former associate in Fish’s Washington, D.C. office who departed last year.

While still a Fish employee, Park acquired rights to several patents that he claims cover CDMA2000, a widely used for standard for cell phones, and 802.11, the protocol used for wireless Internet connections. He also created a holding company, SPH America, to assert those patents.

After Park's departure, his former colleagues quickly took him on as a client, helping him enforce his patents by representing SPH America in two district court lawsuits, as well as high-stakes litigation before the International Trade Commission. (Documents from the SPH America ITC complaint available at Oblon, Spivak's ITC Blog.)

For Fish & Richardson, the Scott Harris saga is a dark chapter in firm history. Harris, readers of this column will recall, is the former Fish principal fired by the firm when it was revealed that his patents were being asserted against some big companies. In the ensuing litigation, Fish accused Harris of committing a “stunning betrayal”: hatching plans to sue technology companies—some of them Fish clients—while he was still employed by the firm.

Compare the strong response to Harris’s transgressions with the firm's reaction to the activities of Choongsoo Park, a former associate in Fish’s Washington, D.C. office who departed last year.

While still a Fish employee, Park acquired rights to several patents that he claims cover CDMA2000, a widely used for standard for cell phones, and 802.11, the protocol used for wireless Internet connections. He also created a holding company, SPH America, to assert those patents.

After Park's departure, his former colleagues quickly took him on as a client, helping him enforce his patents by representing SPH America in two district court lawsuits, as well as high-stakes litigation before the International Trade Commission. (Documents from the SPH America ITC complaint available at Oblon, Spivak's ITC Blog.)

The Week in Patent Litigation (March 16-20)

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. 

Patent-holders' next target: medical device makers?

I reported a few weeks ago that following two big verdicts against Boston Scientific, patent-holding company Acacia Research Corporation filed a lawsuit in the medical-device area. Acacia subsidiary Cardio Access LLC filed a patent infringement lawsuit in East Texas against Boston Scientific, Medtronic, and Johnson & Johnson. Those three companies have fought patent battles in U.S. courts with regularity over cardiac stent technology.

(For more on that read "Keeping Arteries Cleared and the Courts Clogged," NYT Oct. 2007.)

Yesterday, Cardio Access dropped that lawsuit and re-filed in the same district, adding a fourth defendant, California-based Edwards Lifescience Corp. Same technology at issue, U.S. Patent No. 5,254,097, which relates to certain kinds of catheters and cannulae used in heart surgery. 

Cardio Access is represented by Texas-based Nelson Bumgardner Casto PC. Johnson & Johnson was represented by Sidley Austin in the first Cardio Access lawsuit; other defendants have not yet named counsel. I put calls in to both Acacia and Nelson Bumgardner but haven't heard back yet.

Acacia, based in Newport Beach, Calif., mostly acquires patents in the high-tech area, but it has bought in to a few medical areas, purchasing patents related to purifying plasmid DNA products (pdf), heated surgical blades (pdf), and recently some patents alleged they say to read on latharoscopic surgery (pdf). According to another press release, the company appears to have acquired what sounds like the Cardio Access technology (pdf) in January—one month before Boston Scientific started its $750 million losing streak.

For Acacia, that has to look like good timing. But it's worth noting that even after the big losses, BoSci's stock price has held steady. Acacia, meanwhile, has had its stock price tumble by nearly 75 percent since November, when it lost its first jury trial to a team led by Weil, Gotshal litigator Matt Powers.