The end of the line for the Juxtacomm patent?

It looks like the U.S. Patent Office has issued a final, please-get-out-of-my-face rejection of essentially all of the claims of the infamous '662 patent, which the Canadian patent trolls software firm Teilhard Technologies has been using to shake down litigate against software vendors, including IBM, Oracle, Informatica and many others.

See my earlier posting about the USPTO's ruling on the '662 patent to find out how access the decision from the USPTO web site, or just follow these links to my copies:

• Reexamination - final rejection of claims
• Reexamination - reject of finality petition denied

According to Pacer, the current round of litigation is winding down, with dismissals already issued or pending for many of the defendants. At last.

Latest Juxtacomm case stayed

In the continuing saga of the Juxtacomm patent tale, the case against Lanier Parking Systems has been stayed, pending the outcome of the reexamination of the patent. From Pacer:


Case 3:11-cv-00299-JRS   Document 74    Filed 07/21/11

Civil Action No. 3:11BCVB299

United States District Court
Eastern District of Virginia
Richmond Division
JUXTACOMM-TEXAS SOFTWARE, LLC, Plaintiff,
 v.
LANIER PARKING SYSTEMS OF VIRGINIA, INC. et al., Defendants.

ORDER

THIS MATTER is before the Court on a Motion to Stay Case Pending Reexamination filed by Defendant Lanier Parking Systems of Virginia, Inc. (ECF No. 39). Defendants Dominion Tower Financial Associates LLC, First Tower Associates LLC, First States Investors 3500 LLC, James Center Property LLC, and Hines Riverfront Plaza, LP have joined the motion (ECF Nos. 55, 57, 65, 71), which Plaintiff JuxtaComm-Texas Software, LLC, opposes. The Court held a hearing on this matter on July 20, 2011.

Courts deciding motions to stay patent litigation pending reexamination consider the following factors:

(1) whether discovery is complete and a trial date is scheduled;
(2) whether a stay would simplify the matters at issue; and
(3) whether a stay would unduly prejudice or clearly disadvantage the non-moving party.

 NTP, Inc. v. T-Mobile, USA, Inc., No. 3:07–CV–548, 2007 WL 3254796, at *2 (E.D.Va. Nov. 2, 2007).

Each of these considerations favors granting a stay. First, the status of the reexamination is advanced when juxtaposed with the stage of litigation—that is, while the reexamination has reached the Final Office Action stage, this litigation is in its infancy. Furthermore, JuxtaComm served the Defendants after receiving a Final Office Action that rejected virtually all the claims at issue in this litigation. Next, it appears likely that final resolution of the reexamination would simplify matters in this case by indicating whether JuxtaComm has grounds to proceed in this patent infringement matter. Finally, any harms that JuxtaComm experiences as a result of a stay would be recoverable through monetary damages.

For these reasons, which will be discussed in greater detail in the forthcoming Memorandum Opinion, the Court finds that the Defendants’ request is not a dilatory litigation tactic but a reasonable request designed to prevent this litigation from proceeding under a “cloud of invalidity.” Accordingly, the Court GRANTS the motion to stay and DIRECTS the Plaintiff to file reexamination status reports every 120 days.
Let the Clerk send a copy of this Order to all counsel of record.

It is SO ORDERED.

ENTERED this 21st day of July 2011.
/s/
James R. Spencer
Chief United States District Judge

The Juxtacomm patent may soon be invalidated

I learned yesterday (via Vincent McBurney's blog) that the infamous "ETL patent" (technically, patent 6,195,662 - System for transforming and exchanging data between distributed heterogeneous computer systems) is being re-examined by the U.S. Patent Office. The examiner intends to withdraw essentially all of the claims.

It's a bit tricky to get information about this from the USPTO web site, and it's not possible to link to much of its content. If you want to look, here are the necessary steps:

• Go to the Public PAIR start page, type in the captcha, and click "continue".
• In the "search for application" panel, make sure the top radio button is selected ("Application number"), enter 90/011267 in the box, and click "search".
  
• Click on the "Image File Wrapper" tab. You'll then see a list of documents associated with the application. You may want to look at Reexam proceeding - Advisory Action, dated 06-07-2011, 9 pages. It states the intent to withdraw claims 1-11 and 14-19.

The patent is held by Teilhard Technologies, a privately-held Canadian firm, also known as Juxtacomm. They successfully used this patent to reach settlements with a large number of companies (Microsoft, Oracle, IBM, Informatica, and many more) worth millions of dollars.

In 2009, while working for IBM, I was deposed in the matter and got to see, up close and personal, how this kind of legal action works. I can't discuss my involvement in any detail, but I will say that it was my impression that there was adequate prior art to have prevented this patent from issuing. This was a stupendous waste of resources; the defendants in the case seem to have paid out nearly $100 million in settlements, to say nothing of the money spent on legal fees. The supposed purpose of the patent system - to encourage innovation - was not served in any way by this affair. 

I don't know how to fix our patent system, but this case is a clear demonstration that it's broken.

Update:  This American Life has done a show on patent trolls.