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These days, it seems like software patents are falling down right and left. Hundreds of them have been invalidated by US federal judges since the Supreme Court’s 2014 Alice Corp v. CLS Bank. decision, and more patent-holders are getting sanctioned for their behavior in court. The economics of the patent-trolling business are changing in fundamental ways, and lawsuits are down.
It’s tempting to think the whole mess is going to dry up and blow away—but the lawsuits coming from companies like Bartonfalls LLC show that some patent lawyers are going to keep on partying like it’s 2009. Bartonfalls is a shell company formed in the patent hotspot of East Texas, and it sued 14 big media companies on October 11 over US Patent No. 7,917,922.
Bartonfalls is unusual in a couple ways. The company got a high-profile shout-out from a lawyer at The New York Times. The newspaper’s associate general counsel, David McCraw, became a newsroom celebrity for a day when he wrote a sharply worded letter to Republican presidential candidate Donald Trump, who threatened to sue the newspaper when it published a story about two women claiming they were sexually assaulted by Trump. McCraw’s response letter explained that the paper was protected by the First Amendment and that if Trump believed “the law of this country forces us and those who would dare to criticize him to stand silent or be punished, we welcome the opportunity to have a court set him straight.”
McCraw’s letter went viral, becoming the most-read and most-e-mailed story for a few days. Earlier this week, he published a first-person account entitled “I Hardly Expected My Letter to Donald Trump to Go Viral.”
Which leads us back to patent trolls. “I wrote the letter in about 45 minutes on Thursday morning, between a meeting on the company’s emergency operations plan and a conference call about a new patent suit we have in Texas,” wrote McCraw. In a parenthetical aside, he wrote, “Is somebody really claiming to have invented a method for switching from watching one video to watching another?”
If you’re reading this, you likely already know the answer to McCraw’s question is “yes.”
TV patent, meet Internet video
On October 11, Bartonfalls filed patent lawsuits against Ziff Davis (the owners of PC Magazine), Viacom, Advance Publications (over the website for GQ; GQ and Ars are both owned by Condé Nast, which is in turn owned by Advance Publications), Scripps Networks (HGTV), Bloomberg, Allrecipes.com, NBC Universal, Turner Broadcasting, the New York Times Company, Forbes, ABC, Discovery, CBS, and Consumers Union (Consumer Reports).
Five of the nearly identical complaints are linked above. Each claims that websites owned by these large publishers violate the ‘922 patent because when a viewer is done watching an online video, their video players cue up another video and automatically start playing it when the first video ends. Love this feature or hate it, it’s an extremely common way of serving up online video. If Bartonfalls convinces courts it “owns” this feature, the number of video-makers it could sue is endless. The biggest online video company of all, YouTube, has an autoplay feature.
The ‘922 patent, filed in 1997, doesn’t talk about Web video or the Internet at all. Rather, it talks about switching between different video inputs when changing television programs: in other words, a TV setup where Channel 2 was connected to a cable subscription, Channel 3 would flip back to broadcast, and Channel 4 might lead to a viewer’s pre-recorded programs. The only independent claim describes “a method of automatically changing from a first TV program to an alternate TV program.” After a very long back-and-forth with the patent office, Michigan-based inventors Barry Schwab and John Posa got their patent in 2011.
Posa, a patent lawyer in the Ann Arbor office of the Dinsmore law firm, didn’t recall much about his invention when reached by Ars. He’d never heard of Bartonfalls, and he didn’t know about the lawsuits filed on October 11.
“We transferred some rights in this patent, and apparently [Bartonfalls] is the party that acquired these rights,” said Posa. “I’m also a patent attorney, so I have a lot of things going on,” he added, saying he owns more than 30 patents.
“They have the right to go forward”
Posa said he has known Schwab for more than 20 years. “He was a client of mine a long time ago,” explained Posa. “He had some ideas, I had some ideas. We sort of hooked up and shared some ideas and jointly own some IP.”
“Sometimes litigants feel they have an interpretation that should be honored,” Posa said when asked how his television patent could be used to sue so many different Internet video players. “They have the right to go forward with that interpretation.”
Schwab didn’t respond to phone calls asking about his patent. Public records indicate that Schwab is involved in a large number of lawsuits. A company called Hawk Technology LLC, which says in court papers that it was formed “to commercialize the inventions of its founder, Barry Schwab,” has filed more than 100 patent lawsuits against big companies, non-profits, and even local governments.
Another company armed with a Schwab patent, Multi-Format Inc., used it to sue Apple, Amazon, and Motorola. Those cases all settled.
The attorney representing Bartonfalls LLC, Jean-Marc Zimmerman, also didn’t respond to interview requests. Zimmerman has represented many patent-holding companies over the years. Several years ago, he was sanctioned for his representation of a company called Eon-Net, and the US Court of Appeals for the Federal Circuit upheld those sanctions in 2011.
Corporate documents show that Bartonfalls was formed as a Texas LLC in August. Its business office is a virtual office in Plano, a city that’s just inside the borders for the Eastern District of Texas, the venue that it filed its lawsuits in. The only listed manager of Bartonfalls is a paralegal at a small Texas law firm, Stoddard and Welsh.
Today, it’s far more rare to see a “non-practicing entity” like Bartonfalls take on a group of large companies with a broad Web patent. That’s because patent defendants have some new case law that favors them. In addition to the Alice Corp. precedent, there’s Octane Fitness, which made it easier to get sanctions against patent plaintiffs who bring questionable cases. At least one defendant says they’ll be fighting this one.
“We are in the process of hiring counsel and will vigorously fight this claim,” said McCraw in an e-mailed statement to Ars. “We plan to work with the other companies that were sued to challenge the patents.”
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