You may have read about the JMRI Project being threatened over a patent allegedly being infringed. It's the case of the model train Open Source developer who got a bill for $203,000 for allegedly infringing KAM Industries' patent. I did an article for LWN summarizing
the complaint filed by Robert Jacobsen, the hobbyist model train software developer who is seeking a declaratory judgment that he is not infringing.
I'm republishing the article here, because his attorney is asking the community for
prior art and some of you might be able to help.
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.
So, on one side we find an Open Source developer, and, on the other, a guy
questionable software patents. Of course, as in all litigation, it's
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 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
open source code called JMRI, or Java Model Railroad Interface,
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
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 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
He works for a firm in Oregon, Chernoff, Vilhauer, McClung & Stenzel. He's
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
but claiming that the Lab "had sponsored the allegedly infringing JMRI
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
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
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, 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."
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
asking for redress.
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
- 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:
The key date is prior art existing
before June 24, 1998, and more importantly, prior art existing before
June 24, 1997. The prior art that we are looking for is:
patent or printed publication that described the invention. Source can
be from anywhere in the world.
- Evidence of public use, offer for
sale, or sale in the United States. (If it’s from outside the U.S.,
please make a note and send it so we can follow up.)
- Evidence of
another person inventing the same thing in the U.S. – the invention must
not have been suppressed, concealed or abandoned.
- If the evidence
is not the exact invention, then any information (in addition to the
evidence) suggesting that the evidence could be combined with something
else to successfully make the invention.
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.