Guy Claims Patent On Photographing People In Races And Then Selling Them Their Photos; Sues Photography Company

from the how-is-that-patentable? dept

The folks over at EFF have yet another story of patents gone wrong. This time it's from a guy named Peter Wolf, who owns a company called Photocrazy, that takes photos of sporting events like running and bike races, and then offers to sell people their photos by matching up their bib numbers. This kind of thing has been around forever, but because Peter Wolf paid a lawyer and said some magic words, he got some patents (specifically: 6,985,875; 7,047,214; and 7,870,035). Here's the primary claim in the 875 patent:
1. A process providing event photographs of a sporting event for inspection, selection and distribution via a computer network, comprising the steps of:

taking photographs of at least one participant of a sporting event along at least one point of a course or field thereof;

associating identifying data with each photograph taken, wherein the identifying data is selected from at least one of: a number corresponding to a number worn by a participant, a participant's name, a code acquired from a component worn by a participant, and a date and time, including hour and minute the photograph was taken;

informing the sporting participants of the identifying data;

transferring the photographs to a computer network server;

cataloging each of the photographs in a web-site server according to the identifying data;

accessing the server at a location other than the sporting event and searching for a photograph of a particular sporting event participant utilizing the identifying data; and

displaying the photograph of the sporting event participant for inspection and ordering.
Or, as EFF's Vera Ranieri summarizes:
In plain English: Take photos of a race, tag and sort by bib number and date, and search for photos based on that tag via the Internet. That’s it.
This, of course, is the problem with many patents these days. You could take nearly any half-competent programmer, explain to him what you wanted to do, and they could build you a system like this without any trouble at all. Because there's nothing tricky here at all. It's just putting together a few basic obvious ideas that were really only limited in the past by the underlying technology not being ready. But now that it is... one guy has patents to block anyone else from implementing such an obvious idea. These patents aren't promoting the progress, they're hindering it. It seems likely that under the Alice v. CLS ruling, this patent is not valid.

Wolf is suing a small (mostly part time!) photography company called Capstone for doing some of this. While it's already likely that the patents are invalid, with Capstone, because of how it works, and because of the Limelight v. Akamai ruling, it's likely that Capstone itself isn't even infringing (that ruling said that if separate parties do separate parts of the claim, you can't say that the original party "induced infringement" because there is no direct infringement). But, still, as we've discussed many times, patent lawsuits are crazy expensive. And Capstone is a tiny company:

Capstone doesn’t have a widely-distributed podcast that it can use to drum up the backing of thousands of fans and supporters. Its owner’s own attempt to crowdfund the defense raised only about $5,000. And although Capstone’s business has been profitable, the owner tells us that because of the patent lawsuit and the costs his company is facing, his business faces the very real prospect of shutting down.

Recent reforms have been helpful to reduce costs for some defendants. For example, the Inter Partes Review (“IPR”) program now being implemented at the Patent Office promises to be a much cheaper way to determine validity.  One problem though, is that it is still too expensive for businesses like Capstone. An IPR costs $23,000 in filing fees alone, and requires paying lawyers and often experts as well. 

Ranieri notes that the US Patent Office is accepting comments about dealing with post-grant challenges, and now might be a good time to highlight that it's impossibly expensive for small businesses being sued over questionable patents:
EFF previously advocated for reduced fees for IPR filings by small businesses and others without the ability to fund patent challenges. Unfortunately, the PTO ignored our request. However, the PTO is currently accepting comments regarding the post-grant challenges such as the IPR process. We encourage the public, especially small business owners, to let the PTO know by September 16 that the costs are still too high for many, and absent a lower cost, patent trolls will continue to assert dubious patents against companies they know can’t afford to do anything but settle.

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  1. icon
    Peter Wolf (profile), 23 Aug 2014 @ 8:46pm

    The other side of the story

    I have been for the past 15 years and continue to actively make my living by taking event photographs just like Capstone Photography. I developed some techniques in 1999 that streamlined the event photography process over the methods used since the 1970’s. These techniques were patented and the USPTO issued those patents to me in 2006.

    These patents have stood up against all efforts to show prior art or invalidate them. Many event photography companies including the largest in the industry have licensed with us.

    We made attempts to contact Michael Skelps, the President of Capstone Photography several years ago. He never returned our calls and continued to infringe on our patents. Capstone Photography contracted with events in our county here in CA and took business away from us. It caused us hardship while Capstone Photography boasted in being the largest event photography company in the country.

    Capstone Photography may assert their process is obvious or different and outside the scope of our patents but our attorneys have determined that Capstone Photography infringes on my patents and Capstone’s Attorney has so far not demonstrated to us how their processes are different and outside the scope of the patents.

    I was issued additional patents in 2010 and once again Capstone Photography blatantly infringed on those patents and caused us hardship. The details are described in our claims against Capstone Photography.

    I find it interesting that many photographers like Mr. Skelps vigorously defend the copyright laws that protect their pictures from being used for commercial gain by anyone else. However, Mr. Skelps does not seem to recognize patent laws that protect intellectual property like the patents he is blatantly infringing on.

    We are reasonable in our licensing expectations and settle for fees that have virtually no effect on our licensees doing business as usual. Generally the infringers have to overcome an emotional or pride issue of accepting that someone invented and patented “their” idea. Usually the amount of attorney fees reaches a pain threshold that forces the infringer to settle. Frequently the infringer will then face maximum, even treble damages and the plaintiff’s attorney fees.

    The problem comes in when someone tries to avoid licensing with us and we have to file a lawsuit. According to the latest AIPLA survey, litigating a patent case with damages under $1 million by a 1-3 person firm averages $255,000 just to get through the end of discovery, and $623,000 dollars to take the case through trial. (2013 AIPLA Econ. Survey, p. I-133). Mr. Skelps from Capstone Photography has retained a major law firm ( ) in Los Angeles with at least 20 attorneys.

    Generally infringers are unaware that the inventor has spent hundreds of thousands of dollars and many man-hours developing the patented idea. Marketing research, software and hardware development plus the cost of patent applications and executing the patent through the USPTO are all very costly.

    I am very sorry to see Mr. Skelps head down the path he has chosen.

    I immigrated to the United States after narrowly escaping from Communist East Germany in 1960. I am a law abiding citizen trying to build a business and raise a family. I expect others to obey the laws of this land as well. Mr. Skelps has caused me hardship by infringing on my patents. I would also expect a bit more respect from forums members. It is far too easy to ridicule and make disparaging remarks about a person before you get to know them and understand them.

    FYI: r/dp/B0029J3Z2A

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