Infamous Niro JPEG Patent Smacked Down Again

from the and-again-and-again-and-again dept

Lawyer Raymond Niro, for whom the term "patent troll" was apparently first coined, has been known to use the fact that he represents a company called Global Patent Holdings (GPH) to his advantage. GPH owns patent 5,253,341, but looking at it there won't do much good. You see, Niro and others claimed that the patent covered pretty much anyone running a web server, leading to quite a few legal battles, including one against a guy, Greg Aharonian, who called it a "bad patent." For claiming that, he got sued for patent infringement. In fighting the patent, it was re-examined, and all 16 of its claims were rejected... but a 17th claim was added and allowed to stand.

Since then the patent has been asserted against a wide range of organizations, including some resort in Florida and the Green Bay Packers. Niro appears to claim that any site using a JPEG image violates the patent. Not only that, but in cases where the patent has been asserted, Niro has been known to go for something of a sympathy play, by noting that the inventors (or the widow of one inventor) named on the patent are "old and feeble" (yes, they called them feeble) and made almost no money in 2006 (even though the filing was in 2008 -- some noted that their 2007 income was conveniently left out).

With so many cases involving this patent underway, the USPTO agreed to re-examine the one claim (claim 17). And, with that re-exam going on, a judge on one of the cases put the case on hold until the re-exam is done. While GPH protested, claiming that the patent had already been re-examined (and that the re-exam process took too long), the judge pointed out that there's only one claim left (so it should be faster) and that this particular claim had never been re-examined, since it was added during the last re-exam.

Last summer, the USPTO gave an initial (non-final) rejection of the patent, in rather strong language. Not surprisingly, GPH/Niro have pushed back, but in early June the USPTO appears to have smacked down the patent all over again in this rather lengthy ruling, which you can see below:

90008972 The smackdown here is rather complete. On top of reaffirming the 19 reasons for rejecting the remaining claim, the examiner added more reasons to reject it for being obvious and anticipated by other inventions. Also, it appears that GPH/Niro tried to do something similar to last time, in that they also submitted some new claims to be added (claims 18 - 21), but the examiner smacked those down as well, as attempts to "broaden the scope" of the patent. On top of that, the rejects scolds GPH/Niro for mischaracterizing what the patent office has said and even using a "biased" expert witness with "flip-flopping declarations."

This is, still, a non-final rejections, but it doesn't look like GPH/Niro has been able to make up any ground at all on this particular fight, and, in fact, seems to be getting pushed further and further back with each try. This particular patent expires in March of 2011 anyway, so unless Niro is able to pull a proverbial rabbit out of the hat to convince the USPTO that this patent is vaild, it's not looking very good.

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Admitted Patent Troll Finds The Phrase 'Shell Entity' Offensive

from the oh-really? dept

You may recall last year that we wrote about a patent lawsuit where the judge banned the use of the word "patent troll." That seemed reasonable enough, since it's clearly a negatively loaded phrase. However, it looks like some patent attorneys are trying to go even further with that concept. Ray Niro, in defending Scott Harris (who, you may recall, licensed his own patents to be used in lawsuits against his own firms' clients), is demanding that the phrase "shell entities" not be used either, claiming that they, too, are used negatively. That's because, like so many patent holders these days, Harris used shell companies to hold the patents and to sue companies. Of course, "shell entities" is a descriptive term, not one that is clearly designed as an insult like "patent troll."

Besides, this seems quite rich, coming in defense of Harris, who used to own the website ImAPatentTroll.com. And, indeed, the lawyers on the other side of the case wasted no time in pointing this out:

Additionally, the Motion to Strike asserts that the term 'shell entity' is synonymous, in this context, with the term "patent troll." Significantly, Mr. Harris, even while at Fish & Richardson, sponsored a website, imapatenttroll.com, in which he proudly and openly referred to himself as a "patent troll." Truth is an absolute defense.

Separately, it is also rather amusing to see patent system defenders get upset about the phrase "patent trolls" when they're so quick to refer to any sort of patent reform as "patent deform", companies in favor of patent reform "The Piracy Coalition," while, of course, insisting that any individual in favor of patent reform a "shill."

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Patent Office Agrees To Review Infamous JPEG Patent

from the well,-that's-good dept

Last month, we noted that there was some effort being made to get the Patent Office to do a re-exam of a patent that attorney Ray Niro had been using to go after any site that had a JPEG image. While the patent itself had been re-examed before, one claim had been left intact, which Niro has said covers anyone using JPEG compression. It appears that the effort to get the USPTO to look into the patent once again has succeeded, though it's a long and rather involved process that won't come to fruition for quite a long time. The request includes a long list of prior art on that one particular claim, which the Patent Office admits it did not look at earlier and that raise substantial questions about the patentability of the remaining claim in the patent. This is rather good news.

On a side note, we first came across the story of this patent thanks to the then-anonymous Patent Troll Tracker blog. A few weeks back, the author of that blog revealed himself (after being told anonymously that the news was about to leak in an unflattering manner) as a lawyer working on IP issues at Cisco. It's too bad that he felt the need to reveal himself, but it's even worse that he has since taken down the blog entirely. It had a lot of excellent background information, which is all gone now, and the lack of updates is a real loss. It was the only source that was providing insight into some of the shadier activities of certain patent holders and patent attorneys. It's a world that needed more light shined upon, not less. It's a true shame that it's been lost to the world, much to the detriment of those trying to show how the patent system is being regularly abused.

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JPG Patent Holder Goes For The Sympathy Vote

from the oh-boo-hoo dept

Back during the RIM-NTP patent battle, one of the sleazier moves pulled by NTP was to have the widow of the patent holder write a letter to Congress about what a "gross injustice" was being done to her in the case. It was purely an attempt to influence the case for sympathetic rather than legal reasons. There are plenty of folks out there who have bogus patents -- and there's no reason to grant them rewards just because they've had some personal hardships. However, it looks like Global Patent Holdings (GPH) is taking this strategy to a new level. GPH, if you don't recall, holds the extremely questionable JPEG patent that has basically been used to bully people that patent attorney Ray Niro doesn't like. The Troll Tracker notes some interesting language used in a recent filing against a resort in Boca Raton.

In the filing, the lawyers play up the fact that the inventors named on the patent made very little money in 2006 and have some health problems (actually, it discusses one inventor and the other inventor's widow). In fact, it gets worse than that. In another filing, GPH points out that the inventors are old and "feeble". Again, it's not clear what the personal, health and financial problems of the inventors has to do with the validity of the patent or the claims of infringement. It seems to be purely an attempt to gain sympathy. Also, as someone in the comments on the Troll Tracker site notes, why focus on 2006, rather than 2007? The suggestion is that given how aggressively GPH has pushed to license the patent since last year, perhaps their income was substantially higher in 2007. Elsewhere, though, GPH notes that it owns the patents entirely, meaning that who the inventors are is somewhat meaningless -- but why let that stop the company from pushing for sympathy.

Either way, the filing then goes even further in pushing for the sympathy vote, noting that the resort in question is owned by a private equity firm in New York that was somehow loosely involved in the subprime loan crisis. Again, this obviously has nothing to do with whether or not the company is infringing on a patent by putting a JPEG image on its site -- but is being used to make the company look like a big bad evil giant. So, now the case is positioned as big multi-billion dollar subprime-mess-contributing NY-based private equity firm against poor, weak, sick inventors.

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Will Infamous JPEG Patent Get A Re-Exam?

from the about-time dept

We've already talked about how Ray Niro, a well-known patent attorney, has been filing lawsuits over a patent he claims covers any website with a JPEG image. He's been known to particularly target his critics. It appears that all of the attention this patent has generated, has resulted in at least one party filing with the Patent Office to request a re-exam of the patent. While the patent has already gone through a re-exam in the past, and only this one claim survived, it would be nice to get it completely rejected.

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