After a year of threats, first suit is filed over hated “scanner patents”

MPHJ sued a Plano company over its office scanner setup—which MPHJ has never seen.

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[Wheels Of Confusion]

MPHJ argues it's impossible to scan-to-e-mail without infringing the company's patents.

Isn't that prima facie evidence that their claim is overly broad?

 

[AaronLeeR]

Wow, so you can get sued because someone "thinks" you're infringing. I hope these clowns get taken to the cleaners.

 

[Ryoshi]

How the hell can they bring suit if they themselves admit they are only guessing that the company is infringing?

Clearly the correct response would have been a scan-to-email of someone's middle finger on the scanner bed.

 

[MrSmith317]

How can a company using someone else's product be infringing on a patent? The patent is for the technology correct? So if HP packaged a scan-to-email software with their AIO product then it would be HP that was liable, not whatever company bought that device. These people are even bad at trolling. Hopefully this brings such a storm of patent reform that this whole patent vs copyright problem is solved. And companies like MPHJ burn in their own personal hell.

 

[DarkSkyForever]

AaronLeeR[/url]":318a0k8p]Wow, so you can get sued because someone "thinks" you're infringing. I hope these clowns get taken to the cleaners.

You can sue someone for any reason - it doesn't mean that it'll get anywhere in court though.

 

[mbmcavoy]

MPHJ argues it's impossible to scan-to-e-mail without infringing the company's patents.

This is one thing - While I have doubts about this particular set of patents and the tactics used by MPHJ...

The complaint acknowledges that the plaintiffs don't actually know that much about Research Now's office setup. They say they have looked at publicly available information about the company "as well as the information technology needs and infrastructures of companies generally of its nature and size." With that research, MPHJ has "reasonably concluded" that Research Now infringes the patents. Where those claims are "not yet supported by direct evidence," they'll have better evidentiary support "after a reasonable opportunity for discovery."

This almost makes it sound like they aren't even 100% sure that Research Now actually uses scan-to-email at all!

 

[BrianB_NY]

MrSmith317[/url]":13nvt4ix]How can a company using someone else's product be infringing on a patent? The patent is for the technology correct?

There are patents that protect business processes. For example, if you have some new specialized method that you use to create some other product, that is a business process.

Anyway, if the state and federal governments want to know who owns MPHJ, can they not just ask the NSA to sift through the database of the entire internet?

 

[jay_max]

This is so speculative on MPHJ's part, it should be thrown out of court and the company should be sanctioned under Rule 11 for filing a frivolous action.

A simple defense to this would be, yes the copier/scanner has scan-to-email function, but we actually use the scan-to-folder function instead.

 

[CrookedKnight]

If you file a lawsuit against a company based on "the information technology needs and infrastructures of companies generally of its nature and size" but admit your claims are "not yet supported by direct evidence," the judge should be allowed to literally kick you in the ass.

 

[BWinmill]

DSF1942[/url]":21vx55xs]
You can sue someone for any reason - it doesn't mean that it'll get anywhere in court though.

Unfortunately it comes down to deciding whether it would be cheaper to settle or challenge. While it would be nice to fight these extortionists simply on the principle of the matter or to get justice, a small business can easily bankrupt themselves doing so.

 

[norton_I]

MrSmith317[/url]":z2ep2fn5]How can a company using someone else's product be infringing on a patent? The patent is for the technology correct? So if HP packaged a scan-to-email software with their AIO product then it would be HP that was liable, not whatever company bought that device.

That is usually the way it is handled, but it is not the law. Using patented technology makes you potentially in violation of the patent as much as selling it does. As I understand it, it is usually more profitable to go after the manufacturers because you can show they did or should have known that their product was in violation of the patents, while a random customer would not. Also, suing individual customers or even pursing settlements is expensive with relatively small payout compared to suing a large manufacturer if you think you have even an outside shot. However, if you don't think you are going to win in court because your claim is absurd, you might be able to extort 100s or 1000s of dollars at a time out of small companies that cannot afford the legal defense.

 

[taswyn]

You know, if the type of exposure required with the SEC were required for filing patent lawsuits (or, hmm, any lawsuit?) then a certain amount of this would dry up fairly quickly. And it wouldn't be a burden for small businesses/individuals. And most above board larger businesses already have this information in a state where it's easy to generate.

Ultimately, though, I think allowing RICO/anti trust legal theory to intersect patent law (i.e. if your patent generated monopoloy rights create an actual monopoly in an area where no one else can create any other solution at all to enter that market, the patent is immediately ruled invalid) is the only answer that could actually solve the human problem created by our patent system: patents are being seen, used, and traded as the end [and the end to competition] in and of themselves, rather than a protection for actual creativity that still allows other creative competition to flourish (just not duplication).

 

[Lwio]

I hope these guys get burned.

 

[gamoniac]

Bah, those patent laws (recently covered by Ars) better be passed sooner than later.

 

[infalliable]

This seems like an incredibly weak case on the part of MPHJ. This is just asking to be thrown out. They're just betting on the other party not having the balls to see it through.

It's pretty hard to take seriously when you flat out admit you don't know how their office is set up, or if they have a scanner with this funciton, but just are guessing they have one b/c most businesses do. It just stinks of nuisance litigation.

Also, liability should never fall on a user of technology doing exactly what the piece of technology is intended for. If I am expected to know if every item I buy is completely free of patent liability, our economy will grind to a complete and utter halt. It is physically impossible given the number of items in my house/business, the shear number of patents, the difficulty in accurately interpreting those patents, and in many cases the difficulty in actually knowing how the item functions behind the scenes.

 

[DrCoras]

So this is like the state bringing charges against you for drug possession due to a certain percentage of Americans being drug users, and then requesting to search your house to find the proof they need?

Or am I way off base and misunderstanding this.

 

[mebeSajid]

infalliable[/url]":fi3e8u15]
Also, liability should never fall on a user of technology doing exactly what the piece of technology is intended for. If I am expected to know if every item I buy is completely free of patent liability, our economy will grind to a complete and utter halt. It is physically impossible given the number of items in my house/business, the shear number of patents, the difficulty in accurately interpreting those patents, and in many cases the difficulty in actually knowing how the item functions behind the scenes.

Perhaps, but the Patent Act clearly allows a patentee to sue users of an infringing invention. In most cases, that doesn't really matter, because a warranty against infringement claims is usually an implied warranty under state contract law, meaning that the manufacturer has to indemnify any customer sued for patent infringement.

However, in the case of scan to email the manufacturers themselves are not liable for patent infringement for simply making or selling the copier/scanner, since the patents require that the scanner be hooked up to a network. This is the sort of patent that can only be infringed by use.

 

[Nevarre]

DrCoras[/url]":23szduua]So this is like the state bringing charges against you for drug possession due to a certain percentage of Americans being drug users, and then requesting to search your house to find the proof they need?

Or am I way off base and misunderstanding this.

Substitute Drug Possession for an activity without the slightest hint of controversy and then yes. It's more like patenting the cooking of pasta and threatening everyone with a stove since most households cook pasta.

 

[Pueo]

MrSmith317[/url]":cyddvxnx]So if HP packaged a scan-to-email software with their AIO product then it would be HP that was liable, not whatever company bought that device. These people are even bad at trolling.

They don't need a strong case, they just need the legal costs for Research Now to fight the case to be greater than the settlement sums. The only way this turns bad for MPHJ is if the case is dismissed or the legal battle leads to a Prenda style meltdown. Even if there appears to be an imminent Prenda, Research Now might still settle just to be done with the case.

 

[mebeSajid]

DrCoras[/url]":37bu0jsc]So this is like the state bringing charges against you for drug possession due to a certain percentage of Americans being drug users, and then requesting to search your house to find the proof they need?

Or am I way off base and misunderstanding this.

Not at all like this, because the burdens of pleading in a criminal case (or even burdens in getting a search warrant) are much higher than this.

Also, you guys should actually read the complaint - it's not quite as reckless as the article makes it out to be. There's quite a bit of communication between the troll and the defendant before a suit is filed. That said, I hope the patents in this case get invalidated, because they're absurd.

 

[davnel]

IANAL so I probably should know this but don't.
Is discovery an automatic two way process or does it have to be filed for in each direction. IE, if the case gets to the Rule 16 hearing, and all of the proper motions are filed, can the defendant request full disclosure of MPHJ's structure and personnel? Perhaps someone like EFF should get involved on the defendant's side to probe MPHJ's assets and maybe put a stop to them.

 

[DrCoras]

Nevarre[/url]":1offwvhy]

DrCoras[/url]":1offwvhy]So this is like the state bringing charges against you for drug possession due to a certain percentage of Americans being drug users, and then requesting to search your house to find the proof they need?

Or am I way off base and misunderstanding this.

Substitute Drug Possession for an activity without the slightest hint of controversy and then yes. It's more like patenting the cooking of pasta and threatening everyone with a stove since most households cook pasta.

Ahhhh, makes much more sense in that context. Thank you!

 

[CarlsTechnica]

Looks like MPHJ is just a front for these twats:

https://maps.google.com/maps?q=166+s+be ... 23,,0,-8.3

Landon Northcutt | TX Criminal DWI Attorney | Personal Injury Lawyermore info‎
166 S Belknap St
Stephenville, TX 76401
(254) 968-2613
landonnorthcutt.com‎

Their website invites you to call for a free consultation.

 

[kaidenshi]

Dachannien[/url]":3eu9rcn5]One possible defense litigation strategy (note: I am not a lawyer, and this is not legal advice, but mere hypothetical supposition, and so any feedback from those more in-the-know is welcome):

0. Stop using any devices that might infringe, at least in infringing ways. (This should actually be done as soon as you can figure out what the nature of the infringement is, even if a lawsuit hasn't been filed yet.)

1. Cop to infringement. Much of the expense in a lawsuit is discovery related to your activities as well as determination of the proper meaning of the asserted claims. If you admit infringement up front, all of this cost is eliminated.

2. Focus on the damages portion of the trial. The actual value of your infringement is minimal - you're scanning documents to e-mail, and unless you do this on such a routine basis that it's a big part of your business model, the plaintiff will be hard-pressed to show that the actual damages are worth more than some small fraction of what you paid for the infringing machine. The reason that Samsung gets dinged for hundreds of millions is because they sell millions of phones, but all you're doing is using one device on an occasional basis. Also, there are no statutory damages in a patent lawsuit, unlike copyright.

3. Pay up the minimal damages.

4. Laugh hysterically. The US generally requires that each side pays its own court costs in patent cases, and the fact that you were not a willful infringer (because you stopped infringing once you knew what the infringement was) should help cement the fact that there were no extraordinary circumstances justifying you paying both sides. Your defense was of minimal expense, but just to avoid court sanctions, the plaintiff will have to expend significant amounts of time and effort doing their due diligence to file the case.

So, tuck tail and run? Get ready for the line of patent trolls waiting to sue you now that you've shown you have no teeth. I say we need more companies like Newegg, combined with Congressional members who actually get why this is such a bad thing, to stop it before it gets so bad there's no turning back.

 

[Astramancer]

kaidenshi[/url]":1wbe65ku]

Dachannien[/url]":1wbe65ku]snip

So, tuck tail and run? Get ready for the line of patent trolls waiting to sue you now that you've shown you have no teeth. I say we need more companies like Newegg, combined with Congressional members who actually get why this is such a bad thing, to stop it before it gets so bad there's no turning back.

I think it's more like leaving a sandwich made from month-old turkey in the fridge at work. Sure, the guy who steals it deprives you of your lunch, but he didn't do himself any favors, either.

 

[cvarner]

Wouldn't it be cool if someone with deep pockets, like Newegg or Google, called up Research Now and said "Hey, want to borrow our legal team?" Just for the sheer unadulterated joy of helping to pound these new Prendassholes into dust?

 

[Deleted member 399649]

I'm a big fan of responding to queries of this nature by asking them what size concrete shoes they wear, and what is their favorite place to swim with the fishes.

 

[Boskone]

kaidenshi[/url]":zmwgkmwd]

Dachannien[/url]":zmwgkmwd]One possible defense litigation strategy (note: I am not a lawyer, and this is not legal advice, but mere hypothetical supposition, and so any feedback from those more in-the-know is welcome):

0. Stop using any devices that might infringe, at least in infringing ways. (This should actually be done as soon as you can figure out what the nature of the infringement is, even if a lawsuit hasn't been filed yet.)

1. Cop to infringement. Much of the expense in a lawsuit is discovery related to your activities as well as determination of the proper meaning of the asserted claims. If you admit infringement up front, all of this cost is eliminated.

2. Focus on the damages portion of the trial. The actual value of your infringement is minimal - you're scanning documents to e-mail, and unless you do this on such a routine basis that it's a big part of your business model, the plaintiff will be hard-pressed to show that the actual damages are worth more than some small fraction of what you paid for the infringing machine. The reason that Samsung gets dinged for hundreds of millions is because they sell millions of phones, but all you're doing is using one device on an occasional basis. Also, there are no statutory damages in a patent lawsuit, unlike copyright.

3. Pay up the minimal damages.

4. Laugh hysterically. The US generally requires that each side pays its own court costs in patent cases, and the fact that you were not a willful infringer (because you stopped infringing once you knew what the infringement was) should help cement the fact that there were no extraordinary circumstances justifying you paying both sides. Your defense was of minimal expense, but just to avoid court sanctions, the plaintiff will have to expend significant amounts of time and effort doing their due diligence to file the case.

So, tuck tail and run? Get ready for the line of patent trolls waiting to sue you now that you've shown you have no teeth. I say we need more companies like Newegg, combined with Congressional members who actually get why this is such a bad thing, to stop it before it gets so bad there's no turning back.

I think the idea was not to tuck and run, but to inflict a pyrhhic victory on the patent-holder.

The problem is that the holder is almost sure to get fees and damages, so they'd still come out ahead.

It might actually be cheaper to buy a relevant patent and go nuclear.

I wonder if a patent "clearing house" would technically be legal? Put some nicely broad patents in, and "sell" them with a contractual option to buy back. Then when something like this happens, Research Now could "buy" some patent covering scanners themselves and offer to counter-sue. Once the suit is over the clearinghouse "excersizes it's option", buys the patent back, and loads up for the next troll.

Sure, it'd be totally against the spirit of the patent system...but so are trolls, so it seems to me like any anti-clearinghouse legislation would also impede trolls.

 

[LEONJERSEY]

At a subcommittee hearing, Sen. McCaskill asked for whistle-blowers to come forward and reveal more about shadowy patent holders like MPHJ.

So it's ok to whistle-blow when it suits them?

 

[EmeraldArcana]

cvarner[/url]":24vh7020]Wouldn't it be cool if someone with deep pockets, like Newegg or Google, called up Research Now and said "Hey, want to borrow our legal team?" Just for the sheer unadulterated joy of helping to pound these new Prendassholes into dust?

EFF often helps with these kinds of things.

 

[Seraphiel]

The complaint acknowledges that the plaintiffs don't actually know that much about Research Now's office setup. They say they have looked at publicly available information about the company "as well as the information technology needs and infrastructures of companies generally of its nature and size." With that research, MPHJ has "reasonably concluded" that Research Now infringes the patents.

Sounds to me like a textbook definition of bad faith.

Oh, and the part about inevitably finding evidence after discovery starts? Adorable.

The only solution for this is for the judge to fucking nuke these assholes from orbit, disbar all the attorneys involved, and order the plaintiffs burned at the stake.

 

[Pewmaymen]

The problem I see with what MPHJ and their related companies are doing is that it isn't actually going to help them or their families in the mid to long term. Once this can of worms is opened, there is no easy road back. Having post-purchase levies placed on everything you use randomly because a patent holding entity doesn't want to go up against the manufacturer means that every single thing that you own outside of some very basic core items will become unattainable. Think of things like cars (lots and lots of cross licensing on new stuff that makes them safer and more efficient), electronics (computers, phones, televisions, etc), appliances, etc and imagine not being able to use those items because instead of costing $15,000 for a "cheap" car, it costs $100,000!

To the people that are saying that "until you connect the scanner/printer up like it says in the included documentation and turn it on, it isn't infringing", that is ridiculous. If you buy a multi-function device that can scan and send it as an email as a CORE part of the functionality of the product and something that is one of the key features of the product when you buy it, how can you be held liable for actually using the freaking product the way the manufacturer intended? This isn't like you took the product and modified it to do something the manufacturer never intended and in the process violated a patent that someone else has. If you don't connect that printer to the network, how are you supposed to actually USE it to print?

 

[Dachannien]

Boskone[/url]":mybxpo6q]
I think the idea was not to tuck and run, but to inflict a pyrhhic victory on the patent-holder.

The problem is that the holder is almost sure to get fees and damages, so they'd still come out ahead.

This was indeed the idea. If the EFF or some other group doesn't come to your rescue, you know you can't afford to try to invalidate the patent. The plaintiff knows that, too, which is part of why they're picking on little guys rather than the likes of HP or Ricoh (both of which have already filed inter partes review requests against some of these MPHJ patents). The strategy I described above is the only alternative I can think of for the little guy to get through this process other than just paying up, and it at least has the benefit of being costly for the plaintiff (whereas rolling over at the first sight of a demand letter gives them pure profit).

 

[gordwait]

Hmm, what if:

* Patent troll secretly sets up a fake company, say "FallGuy".
* Patent troll sues "FallGuy" with a weak patent
* "FallGuy" fails miserably in court and looses said lawsuit setting a precedent for hundreds of similar cases
* Profit!

Naw, too clever.

Imma gonna patent the above business model!

 

[EatABanana]

Ryoshi[/url]":2g7yv1cp]How the hell can they bring suit if they themselves admit they are only guessing that the company is infringing?

Clearly the correct response would have been a scan-to-email of someone's middle finger on the scanner bed.

Research Now is the first one taken to court so it does make you wonder if they did have a colorful response for MPHJ.

 

[Pewmaymen]

Oh, and I love the fact that the scan to email devices they are targeting cost less to purchase than the per-user "licensing fee" they want to charge victims. We are talking about devices that range in price from under $100 to several thousand dollars (and more for the really high end copy/scan/printer units that do color and are speed beasts). Also, what about companies that lease these items, which a lot of places do? If you are a company and you use a leasing company to provide the hardware, software and consumables, are you still liable for these fees since you aren't the owner of the device?

 

[mattclary]

MrSmith317[/url]":32wf5554]How can a company using someone else's product be infringing on a patent? The patent is for the technology correct? So if HP packaged a scan-to-email software with their AIO product then it would be HP that was liable, not whatever company bought that device. These people are even bad at trolling. Hopefully this brings such a storm of patent reform that this whole patent vs copyright problem is solved. And companies like MPHJ burn in their own personal hell.

THIS!!! I don't get how this is acceptable.

 

[Tazmjm69]

Ryoshi[/url]":2yse37n2]How the hell can they bring suit if they themselves admit they are only guessing that the company is infringing?

Clearly the correct response would have been a scan-to-email of someone's middle finger on the scanner bed.

Thank you for the middle finger comment, I was having a bad day and that made me laugh. But I hope they get what they deserve, they're picking on small companies because they know the chances of them fighting back are slim. If you use their logic, then I guess just about every person in the United States that owns a scanner is on their "to sue" list. Ridiculous