The Prior Art

Patent Litigation Weekly: Stanford Researcher Loses at PTO, Still Fights On

In the April/May issue of IP Law & Business, we reported on the plight of Bob Shafer, a Stanford University scientist embroiled in a dispute with Luxembourg-based Advanced Biological Laboratories, S.A. (ABL). ABL claimed it owned two patents that were being infringed by the world-renowned HIV-drug resistance database Shafer created, HIVdb.

To recap quickly: After ABL sent Stanford claim charts and a letter asserting its patent rights, Stanford sued to invalidate the patents. That case settled, with Stanford agreeing to post a notice on the database stating that users of HIVdb might infringe ABL's patents.

ABL subsequently sued Stanford, saying the university had violated the settlement terms; the company also sued Shafer for defamation, based largely on comments he posted on his website, harmfulpatents.org. Shafer, tapping his own savings, hired attorneys at Day Casebeer to file reexams on the two ABL patents. (Day Casebeer has since been purchased by Howrey LLP.)

ABL's counterclaims against both Stanford and Shafer individually have now been settled. And it certainly appears that Chalom Sayada, the French doctor who is ABL’s CEO, has concerns about how the litigation makes him look to HIV researchers. The joint settlement statement reads, in part:

Verdict: H-P must pay $184 million to Cornell University

I'm going to continue to do short posts when I see big verdicts or settlements in IP lawsuits, with the hope that over time the verdicts & settlements category grows into a useful database of the larger verdicts.

Last Friday, Cornell University won $184 million from a hometown jury (Northern District of New York). The patent in question was invented by Cornell Professor Hwa C. Torng, described in U.S. Patent No. 4807115, "Instruction issuing mechanism for processors with multiple functional units," issued 1989. Press reports from Newsday and the Syracuse Post-Standard say Cornell originally asked for $900 million in damages; IPlaw360 says that number is a mistake, and the damages request was $575 million.

The jury also ruled that infringement was not willful. They calculated damages based on a 0.8% royalty for $23 billion in sales. Cornell says they will appeal. H-P also argued they were protected by patent exhaustion and implied licenses, but the jury rejected those defenses.

 

A University Challenges Google

Saturday’s Boston Globe reports that Northeastern University is the latest plaintiff to sue Google for patent infringement. The University joined a small tech company, Jarg, which is owned by an associate professor, Kenneth P. Baclawski.

The idea of targeting Google with a lawsuit apparently came from a Boston-area law firm—Jarg president Michael Belanger refused to say which firm. Belanger also told the Globe that it took him 2 ½ years to find a firm that would take the case on a contingency basis.

The lawsuit was filed in the Eastern District of Texas, a popular venue with patent plaintiffs.

Northeastern University et al v. Google, Inc., 07-cv-00486-TJW.

Companies that make no products, but sue others for patent infringement, are often derided as “patent trolls” by their critics, who say this “license or lawsuit” approach amounts to a patent holdup, a tax on true innovation. But like beauty, trolldom is in the eye of the beholder, or the defendant, as the case may be. Often, the folks who call “troll” are connected to big companies, especially big tech companies, that are getting deluged by patent infringement lawsuits.

The phrase itself is controversial. While I have used it several times during my short time here on the IP beat, I’ve kept it in quotes (literally or figuratively), following the style of WSJ's Law Blog and letting others do the dirty work of directly applying this "popular pejorative phrase." 

Universities occupy a problematic middle ground in this debate. They typically don’t have products or services in the areas their patents cover, but still insist on getting paid by those who use their patented technologies, and few question their right to do so. Many critics who would lambaste a patent-holding company for suing in pro-plaintiff East Texas don’t have any problem with the University of California or MIT bringing a lawsuit in San Francisco or Boston.