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.)

Sony’s brief sheds some light on Harris’s ’252 patent. First, it points out that an early version of Barnes & Noble’s main book-selling website met key claims of the ’252 patent as far back as 1997—a full three years before Harris first filed his “touch and feel” book display ideas with the U.S. Patent and Trademark Office. Harris even mentioned www.BarnesAndNoble.com in his patent application, but failed to tell patent examiners that the site offered a text-excerpt feature—a fact that Sony intended to highlight in its inequitable conduct defense. (A defense that argues a patent applicant misled the patent office.)

The brief also sheds light on the argument Harris used to get a patent on the display of e-books in the first place. The examiner rejected Harris’s main claim based on an earlier patent (referred to below as the “Rhodes” patent) that describes a method of displaying a page from a book online. Because that patent didn’t describe a system of displaying more than one page, Harris argued, he deserved to get a patent of his own. The Sony brief quotes Harris, from the ’252 patent prosecution file:

“Rhodes teaches nothing about the claimed feature of “‘storing a plurality of images representing pages of the book… Rhodes teaches only a single book page, here the cover, being stored for each book.”
(Sony Motion for Summary Judgment, p. 11) [PDF]

Ah, some plurality with our e-pages! That’s what we’ve been missing. Of course.

• Southwest Technology Innovations v. St. Bernard Software et al.

Meanwhile, in the same January post that looked at the Oprah Book Club lawsuit, TPA also wrote about Harris’s 6,952,719 patent (describing an anti-spam filter), which earlier this month was asserted against five large computer security companies, as well as one tiny Southern California company, Workgroup Solutions.

Workgroup, now called Excelerate Software, does advertise a product called SpamGate, but hasn’t sold it since last year (the company continues to support a few existing clients). Excelerate is mainly in the power-management business, not the anti-spam business. TPA spoke to Jack Bailey, the San Diego–area computer consultant who created the SpamGate program now accused of infringing Harris patent.