A Tangled Web of Patent Rights

Patent Attorney and Inventor Scott Harris is at the center of an interesting web of events. Harris is the inventor of dozens of patents and has successfully licensed those patents with the help of the plaintiff’s firm Niro Scavone. Until last month, Harris was also a principal at Fish & Richardson. Illinois Computer Research (ICR), a recent assignee of a Harris patent, is suing both Google (for patent infringement) and Fish & Richardson (for tortious interference, etc.). 

For its part, Fish & Richardson allegedly claims title to the Harris patent – which was apparently invented while Harris was working at Fish.

In the lawsuit, ICR has asserted that Google infringes its US Patent No. 7,111,252. The patent at issue here apparently covers features for improving the look and feel of the internet — Google’s Book Search is the accused product. According to Information Week, this is at least the fifth patent lawsuit filed against Google in 2007. (Meanwhile Google stock …).

Two other Harris patents have also recently been asserted: See BarTex v. FedEx and Memory Control v. Honda, LG, Motorola, et al. Harris patents have also been asserted against Dell, GM, Panasonic, Kodak, cars.com, and move.com.  Joe Mullin of the Daily Journal reports that Harris denies any involvement in the ownership or management of any of these companies. The owner instead is James Beauregard Parker — a member of the Florida Bar since 2005.

• Read the Amended Complaint
• Troll Tracker on Scott Harris I
• Troll Tracker on Scott Harris II

Short Article Request: In the wake if this case, I would like to post a short (600 word) article on determining an employee’s inventorship rights. This article might think about the default rule absent an employee agreement; may an agreement to assign implied; how does patent law differ from copyright work for hire.

Comments

[mrbellie]

"For its part, Fish & Richardson allegedly claims title to the Harris patent – which was apparently invented while Harris was working at Fish."

Interesting. I would not think the law firm would have rights to
the invention unless Mr. Harris was paid to invent similar technology. If he invents as a hobby and those inventions
are not in the same line of work as he is being paid, why
would F&R claim ownership (other than the obvious
reason of using larger resources to harass him into submission)?
If he invented a better mouse trap, and the firm is neither in the
mouse trap business nor paying him to invent a better mouse trap
I would be curious as to why they would claim ownership.

This seems intuitavely wrong to me. Does his employement
contract say anything and everything he invents, even if
not work related, belongs to the company?

[mrbellie]

Claim 1 from the asserted patent.

A method, comprising: in a server of a network, storing a plurality of images representing pages of a book, said images stored with a resolution effective to enable said book to be read; responsive to a request over the network, sending one of said images to a remote node; and determining if the request for pages exceeds a certain threshold, and sending said information only if said threshold is not exceeded.

Hmmm. You store images of book pages and send them to someone
who requests them; unless of course the request exceeds
a threshold , in which case you don't send them.

I have a hard time believing this passes the nonobviousness
test. This is, in my opinion, patent trash!!

[metoo]

He was a partner at F&R, so they could have a valid claim to the "fruits" of his outside labor.

[metoo]

On the other hand, the Amended Complaint does not paint a pretty picture of F&R

[anon]

There are several cases that support the notion that part of a patent attorney's job includes invention. (The law says that patent attorneys usually do not need to be listed as inventors).

[Andrew Dhuey]

If this case goes through discovery, I predict the depos and battles over production will be heated, protracted and downright miserable for all involved. The bad blood is dripping from the pages of the complaint.

[Malcolm Mooney]

"A method, comprising: in a server of a network, storing a plurality of images representing pages of a book, said images stored with a resolution effective to enable said book to be read; responsive to a request over the network, sending one of said images to a remote node; and determining if the request for pages exceeds a certain threshold, and sending said information only if said threshold is not exceeded."

LOL. What a pile of total crapola.

[Anon II]

Anon @ 2:25 -- That may be true, but it's out of context. Harris is the *sole* inventor on the patent being enforced against google. This is different from coming up with a few dependent claims that other inventors didn't think of.

[anonymous]

Forget the ownership issue. How about being an inventor of a patent used to sue your firm's client!!!

[anonymous]

"Does his employment contract say anything and everything he invents, even if not work related, belongs to the company?"

It may. And, if it did, you can bet that it would not be mentioned in the plaintiff's brief. Wait for the answer, and we'll know a lot more.

[Michael L. Slonecker]

See: California Labor Code, Sections 2870-2872 for an interesting twist on the question posited by Dennis.

[Steve Sereboff]

Is Scott Harris better off now or should he have remained a F&R partner?

[metoo]

He was NOT an employee of F&R - he was a partner. That distinction is a big one, particularly if F&R's partnership agreement deals with moonlighting, inventions by partners, etc. (I doubt it says anything about partner inventions, but it almost certainly has a provision dealing with moonlighting). And the California Labor Code section would not apply to Harris, since he was not an employee of the firm.

[metoo]

I don't think he had a choice, Steve.

[mrbellie]

metoo

I don't work at a law firm so allow me to ask a question that
you may find naive.

Is a partner not also an employee of the firm?

[ip-esq]

Cal has its own statute, California Labor Code, Sections 2870-2872.

Few cases have interpreted what the statute means. See, 185 Cal. App.3d 438

Seems to me a pretty common sense statute. It prevents overreaching from a Company and limits employee rights to truly independent inventions.

Of course, depending on how much money is at stake, those lines can be very gray.

[Malcolm Mooney]

Hilarious stuff at the "Troll Tracker" link. How cool does Scott Harris think he is? Apparently the papers filed on Scott's behalf note that Scott has been inventing since he was 12 years old ... probably busy improving the "look and feel" of his sandbox. A regular Baby Einstein.

And I wonder why Harris removed all the content from his "I'm A Patent Troll" website?

Too funny.

[Malcolm Mooney]

"Fish & Richardson allegedly claims title to the Harris patent – which was apparently invented while Harris was working at Fish."

The issues would include, I suppose, whether Harris used the firm's resources to prosecute his patents. The conflicts issues loom large in any event. If I'm Fish, I'm looking at the document management software to find every patent application Harris ever opened while working at the firm.

If you're a patent attorney at a law firm and you're trying to invent (or trying to pretend to invent) and file patent applications in any area where the firm's IP clients are filing then you're either very silly or you're pulling a cunning stunt for your personal benefit. Am I missing anything?

[hithere]

F&R isn't a partnership, it's essentially a limited liability company. "Prinicipals" of this entity are indeed employees of the firm and sign an employment agreement that include covenants on non-firm activities.

[rally monkey]

Read the appeal brief in this patent's Image File Wrapper on Public PAIR. Scott Haris appears to have a flare for the dramatic/agressive in his legal writing, so maybe the complaint isn't especially contentious, or at least, out of the ordinary. If this guy made partner, maybe there is still hope for me...

Oh, and I will rarely say this as a casual observer ...but, this patent looks like crap.

[Vladivostok]

Niro Scavone also may have a grudge against F&R after being defeated in several contentious patent litigations. The venom in the complaint probably comes more from that animosity than from Harris.

This case highlights some of the issues of having burgeoning patent prosecution and litigation practices, as they may conflict in various interesting ways. I'm sure F&R's litigators weren't happy that Harris chose Niro as his litigation counsel.

[Vladivostok]

I find all of the e-mail related allegations in the complaint puzzling - wouldn't his work e-mail be the property of F&R? Why would it be improper for them to look at it? Same question goes for the files in his office, or any other work-related files he may have kept.

[test]

Interesting ethics issues. I should ask my Professional Responsibility lecturer about it, oh wait, he's John Steele, named in the complaint.

[house-tradamus]

Bigtime partner at Fish but he hacks his own scribing -- look at the antecedent basis problem for his claim 1. Said information? Said where? He needs to sue himself for malpractice.

[test]

Anon @ 3:31 got the big issue. This is a lawyer who was prosecuting patents, on the side of his normal work, to assert against his Firms' clients. This violates so many ethical rules the mind boggles. Instead of fixing the problem, he created a sham company to transfer the patents to.

The allegations against Fish are ridiculous. They committed tortious interference because they made a (non-frivolous) legal argument (that they owned the patent) in a discussion with the lawyer?! The witness intimidation claims are also ridiculous, if there is any "intimidation," it is intimidating a lawyer who is breaching lots of ethical rules into stop breaching rules, not into not testifying.

[Mac]

LG is also an F&R client, so that's three (Google, LG, and apparently Dell) known F&R clients that are being sued on Harris' patents. I don't think the ethical conflict issues are as clear cut as they look, but the general sense that Harris did something wrong here will not serve him well if someone decides to file an ethics action against him in CA.

[Malcolm Mooney]

From the amended complaint:

"The co-inventor of one of Harris' patents is the wife of the former managing partner of Fish."

LOL! Is this normal behavior on the part of IP law firms? If so, it's a well-kept secret. Or was.

[anonymous]

"If you're a patent attorney at a law firm and you're trying to invent (or trying to pretend to invent) and file patent applications in any area where the firm's IP clients are filing then you're either very silly or you're pulling a cunning stunt for your personal benefit. Am I missing anything?"

No, which is why it would not be outrageous to require an attorney to agree to assign all inventions to a firm. This agreement would help address issues where the attorney invented in the same area as the client's business ("business" conflict, but not true ethical conflict) or where the attorney essentially invented an improvement to a client's invention.

[Alan McDonald]

F&R and Niro got into a heated set of lawsuits over the Solaia patent regarding control systems. The firms filed suits against each other, not to mention the suits filed by Solaia against F&R clients (including my former employer).

These guys hate each other big time.

[Jeff]

Fun stuff. Could there be a reality TV show somewhere in here?

Anyway, it's more entertaining than the new PTO continuation rules.

[Stephan Kinsella]

A classic article on ownership is Paul C. van Slyke & Mark M. Friedman,
Employer’s Rights to Inventions and Patents of Its officers, Directors and Employees, 18 AIPLA Q.J. 127 (1990). Not sure if it's online.

[Alun Palmer]

This article references it:-

http://courses.unt.edu/chandler/amie/3%20J.%20Intell.%20Prop.%20L.%20187.htm

But there's no link.

[Bad Patent]

It's not a good sign when you can't get past the title of the patent without shaking your head and laughing.

"ENHANCING TOUCH AND FEEL ON THE INTERNET"

What, exactly, does the internet feel like? Is it fuzzy like a kitten? And how does one touch the internet? Am I touching it right now? How do I know when I've touched it? Will I get sued for harassment if I touch it inappropriately?

[Malcolm Mooney]

"Am I touching it right now? How do I know when I've touched it?"

If you have to ask, you haven't touched it. Push harder, baby!

[CaveMan]

If they have to ask, you have a much more serious problem Mooney...