The JMRI Project and software patents

The Right to Create blog has a letter from the attorney, Victoria K. Hall, who is representing Robert Jacobsen, the man who was sent the bill for $203.000 for allegedly infringing patents with his open source model train software. He has struck first, filing a lawsuit himself, Jacobsen v. Katzer et al, charging that the patent was fraudulently obtained and hence is invalid and unenforceable. The complaint also says the patent is invalid on the grounds of obviousness and for failure to meet the written description requirement of 35 U.S.C. Sec. 112.

So, on one side we find an Open Source developer, and, on the other, a guy wielding questionable software patents. Of course, as in all litigation, it's important to keep in mind that nothing is proven by a complaint. It's just the opening salvo, and we haven't yet heard the defendants' side.

Hall is asking the community to look for prior art. Let me tell you a little bit about the case, from the materials in the complaint Jacobsen has filed. It may help you to more effectively find prior art. It will surely motivate you.

The lawsuit

The case is 5:2006cv01905, filed in the US District Court for the Northern District of California, San Francisco Division, for those of you with Pacer accounts. The plaintiff lives there and works at the Lawrence Berkeley National Laboratory of the University of California and he also teaches physics there. He's also a model train hobbyist who has written, with others, open source code called JMRI, or Java Model Railroad Interface, which allows you to control how model trains run on a track. He's the primary developer of the software through the JMRI Project.

Ms. Hall, although located in Maryland, is admitted to practice in California as well as in Maryland state courts and is a patent attorney admitted to practice before the USPTO. Interestingly, she worked in the chemical engineering and software industries for nine years before she went to law school.

The suit is an action for declaratory judgment that Katzer's patent, US Patent No. 6,530,329, called the '329 patent, is "invalid, unenforceable, void and/or not infringed by Plaintiff Jacobsen". What's a declaratory judgment?

Here's US Code Title 28, Ch 151, § 2201, the Declaratory Judgment Act. And here is a definition from Cornell's Legal Information Institute. If someone is threatening to sue you, but hasn't yet, in certain limited circumstances, you can take the initiative rather than waiting for the axe to fall, go to court and in essence say: "This person or this company is threatening to sue me and I need our respective rights with respect to this dispute settled, so this cloud over my or my company's head doesn't ruin my business."

The court doesn't have to hear a request for a declaratory judgment. It has discretion. It's an enabling statute, and your case has to fit into the confines of the Declaratory Judgment Act, namely you have to have an actual "controversy" in the constitutional sense. That means it isn't a hypothetical problem and it isn't moot, meaning, first, that you really have a realistic and reasonable apprehension of actually being sued, and second, that the court can settle your problem with a declaratory judgment. If the judge accepts the dispute, he can issue a declaratory judgment, in which he "declares" what each party's rights are, the idea being that if, for example, he declares that you aren't infringing your adversary's patent, then you can't be sued.

Mr. Jacobsen's complaint is also a complaint for "violation of federal antitrust laws, the Lanham Act, and California Unfair Competition Act and for libel." The Complaint asks for a decree that the defendants Katzer and his company "have attempted to monopolize the market for multi-train control systems software in the United States" in violation of Section 2 of the Sherman Act.

The defendants

The named defendants are Matthew Katzer, KAMIND Associates, Inc. d/b/a KAM Industries, and Kevin Russell. Katzer is a model train hobbyist who has written software code for controlling model trains and is an expert in the field. He has several patents, and the complaint states that Jacobsen believes there are more pending. KAM is Katzer's business, selling products embodying Katzer's patents.

Here's the surprising twist. The third defendant, Kevin Russell, is their lawyer. He works for a firm in Oregon, Chernoff, Vilhauer, McClung & Stenzel. He's now accused of libel, and the court is asked to find against the defendants, jointly and severally, to the tune of $50,000 plus punitive damages.

Russell filed a a request under the U.S. Freedom of Information Act, with the Lawrence Berkeley National Laboratory, not only accusing Jacobsen of patent infringement, but claiming that the Lab "had sponsored the allegedly infringing JMRI Project's activities." The DOE turned down the request in December of 2005, but not before Jacobsen was embarrassed and had to explain the whole "harassment story," as he describes it, to his boss and the DOE FOIA liaison. The complaint also says it interfered with his work, resulting in a loss of income. The FOIA request, Jacobsen says, caused him embarrassment, particularly because he's "a scientist whose work involves the creation of intellectual property." The complaint continues, saying that Russell knew that the Lab, which has a contract with the U.S. Department of Energy, which has nothing to do with the JMRI Project. The defendants made the allegation, says the complaint, "to effect Defendants' goal to embarrass Plaintiff Jacobsen and force him to shut down the JMRI Project and to pay royalties to Defendant KAM."

The patent

According to Jacobson, the basis for claiming that the patent is not valid is the defendant's history of applying for patents on what others invent without telling the patent office about the prior art. Another charge is that Katzer didn't tell the patent office that some of KAM's products "were in public use, published, offered for sale or sold more than 1 year before Defendant Katzer filed the '461 application," which would disqualify them for patent protection. The patent in question, '329, claims the benefit of earlier patent applications' filing dates, '461 being the earliest filed in the chain that '329 issues from.

The complaint lists prior art dating back to the 1986 that it says Katzer ought to have told the USPTO about, since the complaint alleges he knew about them. For example, in late March of 2002, the story continues, the JMRI Project software's client-server capabilities were described in a posting to a public mailing list, which Katzer is on. Then in April 14, 2002, the first version of JMRI with the new capabilities was released for public download and announced on several mailing lists and on the JMRI website. "Three days later, Defendant Katzer filed a patent application tailored to claim the capabilities of the JMRI Project software." Again, the Complaint says, Katzer didn't tell the patent examiner about the JMRI Project.

Jacobsen says he received a letter from KAM in March of 2005, offering to license for $19 per program installed on a computer, saying that JMRI was infringing claim 1 of the '329 patent. Jacobsen says he wrote a letter back asking exactly how he was infringing, and his answer was a letter in August, saying that he was infringing claim 1 and that they were now investigating to see if any other patents were infringed by JMRI. Oh, and the price to license was now $29. The letter also demanded $203,000 for the 7,000 copies already distributed. In October came a bill with finance charges, so the total had risen to more than $206,000. He's gotten bills roughly every month since.

Jacobsen is about to release a new version of his software, and that's why he's asking the Court to bring resolution to the matter, because he believes the defendants will sue him when he releases the new version. He's also asking for redress.

The request

Aside from the declaratory judgments, the antitrust decree, and the libel damages, the Plaintiff is asking for the following:

• An injunction ordering Defendant Katzer to identify all patents and patents applications filed in the United States and throughout the world, to produce to their respective patent offices all material references discovered through this litigation, and to request re-examination (or the nearest equivalent proceeding outside the U.S.) of any patents issuing from the patent applications.

• An award of treble damages for the loss of income and other property on the antitrust claim.
• A decree that Defendants Katzer and KAM have engaged in unlawful, unfair and/or fraudulent business practices in violation of the California Unfair Competition Act, California Business and Professions Code, and an order enjoining them from any future such conduct.

• An order finding that Katzer cybersquatted on the trademarked name, www.decoderpro.com in violation of the Lanham Act and requiring him to turn the domain name over to Plaintiff Jacobsen.

• An order enjoining Defendant Katzer and Defendant KAM, and all persons and entities under their direction or control, from engaging in or carrying out any further anti-competitive or bad faith conduct

• An order referring the matter to the U.S. Attorney's Office for investigation into antitrust violations, perjury, mail fraud, and cancellation proceedings against any patents involved in this litigation, and any related patents.

• An order awarding costs and attorney's fees as permitted by law, including 35 U.S.C. Section 285.

What you can do

Ms. Hall in her letter asks that no one harass the defendants "through calls, letters, faxes, emails, etc. It does NOT advance the case in Mr. Jacobsen’s favor." What does help is to find prior art. Groklaw just published a basic tutorial on prior art, Prior Art and Its Uses - a Primer, by a patent attorney, Theodore C. McCullough. It might help you.

Here is what Ms. Hall is asking for:

Here's her contact information, if you do find prior art. Snail mail is the best, she says. I can't help but point out that had the Peer to Patent Project mentioned in McCullough's article been in place a few years ago, these patents might well have been blocked before they issued, and all this woe could have been prevented. If nothing else, this incident can help us to understand what patents project like that are designed to address.

So, there you have the information and the tools to get started searching for prior art. Happy hunting.