Under Attack by PanIP's Patent Lawyers?

Matthew Catalano, of the Dickson Supply Company, asks: "I work for a small plumbing, heating, irrigation, and BBQ supply house. Over the past four we have built up quite a website that houses tons of information and offers many products for sale via an online store. Recently a company known as PanIP has decided to sue us on 2 counts of patent infringement. To the best of my understanding, as you can see from their website, they claim that they invented the use of text and images as a method of business on the Internet. They also claim that they invented the use of a form to enter customer information. Obviously this is ridiculous and most likely won't hold up in court! However, this is not the problem. PanIP has also sued 10 other small companies. PanIP chose small companies because they hope that none of them can afford the legal fees that would ultimately remove their patents. Most defendants, including us, want to opt to bail out for a smaller licensing fee of $30,000. PanIP will continue this vicious cycle on small companies of which many of you may become victim of. Eventually they will have so many cases under their belt that they will be able to attack larger companies." Yet again, the USPTO is used as a weapon in the free market. When will someone get a clue and put a stop to this type of digital extortion?

"I am hoping to release this story to the press so that the US Patent office finally wakes up, but the media is unpredictable and unreliable in terms of which stories they encapsulate. If there is anyone out there who has any ideas about stopping PanIP or can help us out in any way it would be appreciated. Otherwise, just pass this along to everyone you know and hopefully something will come of it.

There is also a page we have constructed that reveals some more details."

Sue em back!

[kiick]

Get together with the other companies that they have sued and sue them back for restraint of trade or something like that. With the legal fees split 10-12 ways, it should be easier to defend yourselves.

No point...

[InnovativeCX]

From the looks of their web site, it appears as if the sole purpose of the company is to patent 'inventions' without actually accopmlishing anything. I would feel sorry for anyone losing a court battle to a company such as this.

3 words:

[PepsiProgrammer]

Software patents suck

Patenting a form of user input for a website, is about as stupid as patenting a a method to swing on playground equipment, but as we can see, they both held up at the patent office, the fact that such stupid patents as 'playground swinging methods' have been accepted by the patent office, obviously shows that the whole system needs to be overhauled

[e-mail]

[aaarrrgggh]

Any company using a yahoo account as contact information [panip.com] for a corporation is going to have a tough time proving that they invented e-commerce!

Re:Time to make this illegal...

[SocialWorm]

And it is high time that the USPTO is made legally responsible for damages caused by patents that are succesfully revoked.

What do you suggest doing to the USPTO? If you throw the people who inspect patents in jail, or fine them, you'll end up with fewer people reviewing patents, making the problem worse, not better. Fining the office as a whole wouldn't help either - the USPTO would either end up with a reduced budget, hence leading once again to forementioned problem, or their budget would expand appropraitely, increasing the federal budget in turn and raising taxes and/or the public debt.

Banding together...

[neema]

For everyone suggesting that they band together, I believe they have taken the first few steps. The link from the question (labeled "more details") leads you to a site with a bunch of defendants. Namely, listed here [homeip.net].

Furthermore, I took a look at the patents (admittedly, only the abstracts), and while not as depicted as explained [homeip.net], still very vague and very obviously a stragety, not an actual protection of IP. First [uspto.gov] and second [164.195.100.11].

Looking at the abstract for the former of the above listed, I have a few qualms (besides with the whole thing entirely). The claim that they can have an infinite number of variations in the abstract (actually, on a quick search, they go into further details in the summary of the invention), it doesn't seem to me that what you're implementing can possibly be infinite. Note, I certainly ANAL (yet), but it just seems out of place.

Moving on to the second patent and it's respective abstract... it seems to me that such a patent had to be filed before September 11, 2001 (when the patent was made, hell throw that in your closing speech) as it seems the way it's described in both the abstract and summary of invention is very much alike to many implementations set forth by other companies, not just internet, but stores as well.

Good luck with that all. Open up a donation bin. I, for one, will throw in.

PanIP's Patent not Applicable

[Bob9113]

From the abstract of Patent No. 5,576,951:
Organizational hierarchies of data sources are arranged so that an infinite number of sales presentation configurations can be created.

This patent has nothing to do with your barbecue and plumbing site. Since your server has a finite life span, it is only capable of producing a finite number of sales presentations. Frankly, I think that a system capable of producing an infinite number of anything is quite impressive and worthy of patent protection.

Re:Loser pays

[www.sorehands.com]

In Federal court there is "Rule 11" which provides damages to a defendant in a frivilous action. But to reach this determination is difficulat.

There is similar rules in many states.

Give me a break!

[OYAHHH]

Dude,

Get yourself a decent lawyer. Per the complaint (and the specific patent information) you have posted on your website those guys don't stand a chance!

For example, in their Patent material they talk about customers dialing into the described system. Do all of your customers dial up to get to your website? Well, I looked at your website and I don't use a dialup system.

Also, all of the patent information is related to the travel industry. You are in the plumbing business. A good lawyer will find holes in their "argument(s)" big enough to drive an 18 wheeler through.

Per what I saw their patent is very specific in nature. They goofed up by not making it as general as possible. All you gotta do is review the patent for the business steps (logic) they propose and find where your business differs.

IANAL, but my understanding of patents are that they relatively easily gotton around. I believe you merely need to show how you have created the same thing but in a different manner.

Otherwise, for example, how could say Ford and GM compete with essentially the same "gadgets" in their automobiles. They do it by merely doing the same thing in a different manner.

Do a little research on the web on patents (www.findlaw.com is a good place to start) to prime yourself. And then go out and spend a couple of thousand on a lawyer. Stop wasting time, you're probably gonna have to do it regardless. It will be well worth your time.

BTW, I'm no fan of lawyers, but when you need one then it's best to just buckle up and get one rather than wasting time. It can save you a lot of pain and agony in the end.

Re:Prior Art

[leviramsey]

Come to think of it, that sounds like a good way to fight these frivolous patents: DDoS their servers...

Don't use their weapons...

[software_non_olet]

... from the way they have build their website, they are preapared to fight lawsuits (or at least they threaten to do so). That's their strong position presumably.

Their weakness: public opinion and everyday reasoning and they don't seem to have any international patent.

If you cannot bring together enough money and support to fight them in court, consider as options

a) move

host your site outside the US and inform as many politicians as possible about the fact that you have to move your site away from the States because of unfair patent-laws and practices.

b) get support from IBM

spend 30,000 on an IBM E-commerce server. Make sure your contract with IBM says, that E-commerce is free from patents and royalties of third parties and that IBM will take care of any legal fights. Perhaps IBM will rent you an E-commerce system for 1 $ a year, if they are presented with this case? Even if you use the IBM machine only as portal or proxy to your existing site, to avoid extensive restructuring of your data and software...

c) enjoy

Laughter will kill them. Try funny, public responses. Like the response of the Marx Brothers when they were threatened by a big "--- Brothers" company. Imagine what some good writers and designers can do with this case for your image (and against theirs) with just some couple of bucks. It's a chance to play David against Goliath. And then don't forget to inform us slashdotters too, we are all in favour of a good laugh.

Re:What is this crap?

[Artagel]

Depends how much of the material comes from the 1984 patent application. The applicants kept adding material, combining applications, etc, but appears to have gotten most of their raw material by 1993. The USPTO fought these people off for a long time -- 12 years.

The patent is probably not as broad as you were thinking. The term "means" is a very dangerous one for a patentee. See Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc. [georgetown.edu]

Solution to frivolous lawsuits

[shucknet]

There is one SUREFIRE solution to frivolous and ridiculous lawsuits such as these.

It is simply to require the plaintiff to pay the defense's legal fees if the defense wins or the case is dismissed before it even makes it to court. The problem is that right now, if someone brings a lawsuit against another party, there is very little risk involved for the plaintiff. Law firms will take on crazy suits at no cost to the plaintiff on the off-chance that they will actually win and get a large enough settlement to make a profit overall or hope that the defendant will offer a settlement (even though they know they would win in court) less than their legal costs in order to "save" money. The latter is the scam that PanIP is trying to pull. This solution would stop them in their tracks.

If the losing plaintiffs were responsible for the incurred defensive legal fees, lawyers would not be so eager to take just any potential lawsuit. Claims would actually be researched and thought out before they were introduced into our legal system to waste our time, tax dollars, and business income.

If you think this is a good idea and are tired of wasting your money because of the lawsuit lottery, then write your congressman and encourage him to support an initiative such as this which would make plaintiffs responsible for the legal fees they incur.

Lawrence B. Lockwood....

[Chris Parrinello]

I did some searchs on the filer of the patents included on PanIP's website and found this interesting federal court decision [emory.edu] .

Basically Mr. Lockwood tried to sue American Airlines over their SABRE system using the '359 patent and the district court found that SABRE did not violate the patents due to prior art (like the fact that SABRE has been around since 1962). The linked decision is an appeal that Mr. Lockwood made to the federal appeals court that was rejected. Worth a good read to see how it would apply here.

Lawyers are your only choice

[Qrlx]

Welcome to America, Dickson Supply Company [dicksonsupply.com]. You are doing business, and now you are being sued. It goes with the territory. I'm sure this is not the first time you have been sued, so dust off the rolodex and call your local legal professional.

Your website looks pretty slick, did you build that yourself or was it outsourced? Maybe you should "pass on the savings" by suing your web designer for delivering as their own product a website rife with illegal, unlicensed IP. Seems like those "Powered by LivePerson" guys all over your website are the ones liable, not you.

Is your site being hosted locally, or is the whole thing outsourced? If the e-commerce portion of your site depends on some third-party vendor to process credit cards, then you should sue them for providing services that they were not licensed to provide. My guess is NaBanco has more lawyers than PayIP.

In either case your lawyers should be able to convince a judge that you are not the culpable party.

I've been trying to find a bright side to settling. Lets say you do decide to license their invention for $30,000. Just make sure that your license agreement is perpetual, and that the licensor (PayIP) will assume all liability for any future claims should PayIP's patents be found to infringe on someone else's patent. Only problem is, that won't be worth much once they go out of business. Maybe you should get their patent put into escrow as a shield against them going out of business. Again, it's a worthless patent so why bother.

You have to fight this one. With lawyers. It's really not that uncommon to be the victim of a frivolous lawsuit, but you should still stand up. $30,000 gets you enough lawyer time for this case to be dropped.

Unless, of course, you are selling airline tickets at video-disc terminals, then you might want to pay their licensing fees.

I wonder if the PayIP has approached Orbitz or Travelocity or PriceLine.com with these patents...could be a gold mine!

What I suggest...

[bani]

1) Patent examiners get paid some (low) base rate for examining a patent.

2) Patent examiners get paid a bonus for each case of prior art they find which invalidates the patent

3) Patent examiners get paid a bonus if they reject a clearly frivolous/and or obvious patent.

4) Patent applicants are fined for filing clearly fraudulent patents.

5) Repeat offenders of 4) are sentenced to prison terms.

Re:Time to make this illegal...

[SocialWorm]

Then why not throw out the patent system outright? Either there's enough political power to do so or there isn't (and there isn't). No need trying to take the expensive, less effective, wayward route; that's one of the reasons our government is as screwed up as it is.

let them speak on /.

[Lwood_at_COG]

I sent the following letter to an address on their page:

Dear Sir
I'm extremely offended to see the types of things your company is doing, as described on Slashdot.org, here:

http://slashdot.org/article.pl?sid=02/05/13/1914 22 1&mode=thread&tid=155

Your strongarm tactics against small businesses are a disgrace. Why don't you come play ball against corporations that can afford to defend themselves against your ridiculous patent claims?

I suggest you respond to the story on Slashdot.org and present your side of it.

Your actions are a true insult to the spirit of mutually beneficial commerce and free enterprise.

Disgusted,
John E. Francis

EFF ---- Contribution ----

[LordKariya]

Go make your annual contribution to the EFF. Don't wait.

Re:Clever buggers

[suwain_2]

Do you think they really mean to have libc.so.1 up on their site? It sounds to me like whoever setup their webserver had no idea what they're doing; there's no reason why you'd need (want) to download libraries for Linux from a Patent Crap and Sue People comapny. Netcraft reports "The site www.panip.com is running Rapidsite/Apa/1.3.20 (Unix) FrontPage/4.0.4.3 mod_ssl/2.8.4 OpenSSL/0.9.6 on IRIX". (It's hosted at Verio.)

Leaving off the www gives "The site panip.com is running Web Servinator v0.3 (v.terbo) on FreeBSD." Their netblock is "E.D.G.E. Inc", in San Diego.

Note that I REALLY recommend that people NOT hack/DoS/otherwise mess with their site; that's only going to make things harder for the people they're suing. ("Your Honor, not only are these people violating our patent, but they're also deliberately causing massive DDoS attacks against our servers." Sure, that's a load of crap, but so's the lawsuit; the last thing they need is to try to defend themselves against two frivilous lawsuits, and the DoS thing would almost have some merit.

So my point is twofold:

• Their webhosting seems rather crappy
• You might think you're doing a favor by showing off your l33t hacking skills, but really, you're making things harder for the poor guy.

This is why we need "loser pays"

[DunbarTheInept]

This is why the US desperately needs a "loser pays" system similar to that used in English courts. If you choose to sue someone and lose, you end up having to pay *their* legal fees as well as your own. Thus if you are a small business getting sued by an asinine large business with a suit that doesn't stand a chance in court, you don't have to cave in just because the court costs are large. If the evil know-nothings suing you lose, they have the responsibility of paying for wasting your time and the court's time. That would kill the evil business strategy of "patent something everyone already knows how to do and then scare people into paying you license fees to do what they already knew how to do on their own."

Of course, the system has to have some careful safeguards in place, such as a small maximum reasonable amount of court fees to be responsible for (so that, for example, Joe Schmo doesn't have to take on the risk of paying for Microsoft's expensive lawyers if they sue him - he only takes on the risk of possibly paying for more reasonably priced run-of-the-mill lawyers no more expensive than his own.)

Personally, the safeguard I would like to see is that you end up only being financially responsible for the opponents' lawywers up to the amount you paid for your OWN lawyers. So if your laywer cost $3,000, and your opponent's lawyer cost $500,000, you at most could end up paying $6,000 if you lose ($3,000 for your own, and $3,000 worth of the opponent's lawyer's fee) If you think the case is so incredibly frivolous that you can defend yourself, you don't incur any risk of paying for the opponent's lawyers at all.

Software patents are not the root of all evil.

[digitalunity]

First off, we need people in the USPTO office to actually read the patent submissions and maybe pay them enough to keep technically minded people working there. The turnover has got to be rediculous.

And secondly, if we did the above, PanIP would not have been granted the patent. Nor would the guy who patented a method of swinging. Or many other stupid patents. Patents were designed to allow ingenious people protect their inventions and ideas. The method for inputting customer information on a computer is extremely obvious, and thusly doesn't qualify for a patent under current legislation. Or their 'invention' of the process of doing business by using the combination of images and text. Again, very obvious. I agree that 'processes', even in software, can and should be patented. I DO NOT agree that the end results should be able to be patented.

Some people disagree with Amazons '1 Click Purchase' patent. I don't. The text of their patent describes how it works, not just that a single click can purchase something. PS:Great business idea. There's no easier way to sell than with INSTANT GRATIFICATION.

I even agree with our legislation.
A software patent should something not obvious, and should explicitly and exactly outline a process. If we had Patent examiners who gave two shits about their job, things like these wouldn't happen. But, we'd probably have to pay them better. Mr. Bush probably gave all of their money to the army :(

A Few Suggestions...

[slewazimuth]

1. Send cease and disist letters on behalf of PanIP to Microsoft, Sun, Adobe, Ebay, etc. drawing their legal department's attention to the PanIp web page. 2. Contact your congressman, state senator etc. Give them something to champion. 3. Send info to the big networks and cable news services. (You might also want to include them in step 1) 4. Contact the small business lobby groups and if your not already a member join and then have them sue both PanIP and the Patent Office. PanIP for conspiracy to commit fraud and the Patent Office for gross negligence. (There is plenty of documentation in the public domain about who invented the web, SGML, HTML, HTML forms, etc. to prove that the patent office didn't exercise proper due diligance when granting the patent or that PanIP knowingly witheld information showing that PanIP did in fact not invent what they claimed to have invented.) 5. Find out who the principals of PanIP are and send out inflamtory demands on their behalf to the hacking community. 6. Find out where PanIP's offices are and then you and your friends can "injure" yourself on their premises. There are a lot of injury lawyers who will take your case for a cut of the insurance money. Then use the insurance claim to fund your countersuit. 7. Contact the FBI etc. because as far as you and your collegues have discovered, they are a front for the Al Quaida terrorism network. (Well, dont you feel terrorized!) Bottom line is not to be intimidated. I have been on both sides of lawsuits and the onus is still on the plaintiff. Make them prove they invented the technology and that their patent was not obtained fraudulently "to the strictest proof thereof"! Don't worry about cost. Get creative and start up a legal fund. I'm sure there will be enough industry interest to drum up support. ALWAYS COUNTERSUE!

Re:Well you asked...

[blue trane]

what interests me is why it was posted. you might be better off trying to explain why it's uncalled for, instead of resorting to name-calling...

You won't eliminate terrorism, imho, by saying that any impulse towards terrorism is wrong and should not be talked about.

Find out why people first consider terrorism, and deal with the problem at that point; then you won't have to spend so much money on enforcement and prisons. You also will benefit because you won't have to stress out so much about your own personal safety or that of your family.

(I realize the post you took umbrage at was most likely a joke/troll...but even if it wasn't, or if it influenced someone who misunderstood it, you still need to deal with the first causes of terrorism if you want to be completely free of it...imho, of course.)

Re:This is why we need "loser pays"

[TheAwfulTruth]

This would have a MASSIVE chilling effect on small time consumers from suing large companies. That's why there isn't a law for automatic payment of fees by the loser. A judge has to decide if the lawsuit was harrassing or frivolous before imposing such fees. If it were not so, the fear of being 5 million in debt for paying Ford's lawyer fees because you sued over their poor SUV design that killed your mother and lost would allow them to completly frighten off all possible litigation for wrong doing!

What's this about a CRT only?

[moshek]

Apparently, the "authors" of this "invention" were not very forward-thinking as the usage of an LCD screen (instead of a CRT) will put a user outside the scope of this patent. Snipped directly from the Patent: "The satellite facilities are sales and information terminals, each equipped with a CRT (Cathode Ray Tube) for receiving and displaying requested customer information from the computer's data sources at the data processing center. Customers interactively display the audio-visual presentations by selecting various choices and entering the choices on a telephone keypad which directs the computer to select from its data sources the requested information and transmit it to the customer's CRT in their home" Hmm...

State AG: Press Charges for extortion/fraud

[cryptophiliac]

Speak to your state's attorney general's office, I bet they'd be willing to go after the company for fraud and extortion, along with a whole slew of other things. If it's criminal, the AG foots the bill as they're the ones pressing charges. Once the criminal case is won, you're almost garanteed the ability to sue the f'ing sh*t out of them.

Re:State AG: Press Charges for extortion/fraud

[WEFUNK]

The fact that at least one of the patents has been invalidated by the courts probably helps the case for fraud/extortion. On that basis it seems pretty clear that they know what they're doing is blatently wrong.

Additional Information on Lawrence B. Lockwood

[stupidnickname]

Okay, you guys need to start using the internet's many spectacularly powerful databases and stop going to google for the solutions to all of life's problems. I've done some quick searches in Lexis/Nexis, and have found a few things: (1) There are no mentions of "PanIP" in any business publications indexed in Lexis/Nexis. (2) However, that should not lead us to believe that this is a troll or a scam, as Mr. Lawrence B. Lockwood certainly exists, and has been very involved in intellectual property litigation in the last decade. One case in which he was involved (In re Lockwood) eventually went to the United States Supreme Court. (3) The "CHI" Research group, mentioned on the PanIP website as a firm's technology consultant, has produced at least one article telling intellectual property lawyers to use "citations" of their patent as evidence of its validity -- which explains that whole weird thing on the PanIP website where they boast at how often their patents have been cited. (4) Intellectual Property lawyers have been using In re Lockwood as a hallmark case where an appellant demanded a jury trial.

I'll post clips of some of the relevant articles here, and in follow-up posts, since some of them are long and /.'s gonna truncate this message:

Copyright 1995 Prentice Hall Law & Business The Computer Lawyer March, 1995 SECTION: CURRENT DEVELOPMENTS; Litigation; Vol. 12, No. 3; Pg. 27 LENGTH: 484 words HEADLINE: Federal Circuit Grants Jury Trial Right For Patent Validity BODY: The designer of a patented airline ticketing machine had a right to a jury trial on the issue of patent validity, the Federal Circuit ruled on January 11. The court reasoned that the patentee's declaratory judgment action was essentially an inverted patent infringement claim, and that it was therefore legal rather than equitable in nature. In re Lockwood, 1995 WL 11271 (Fed. Cir. Jan. 11, 1995). Lawrence B. Lockwood filed a complaint against American Airlines alleging that American's computerized reservation system infringed Lockwood's two patents relating to self-service terminals and automatic ticket dispensing systems. Lockwood sought both damages and injunctive relief, and demanded a jury trial. American raised a number of defenses, including the alleged invalidity of the two patents at issue; in addition, American counterclaimed for a declaration that its activities were noninfringing and, alternatively, that Lockwood's patents were invalid or unenforceable. American moved for summary judgment that its computerized reservation system did not infringe the claims at issue in either of Lockwood's patents. The district court granted American's motion for summary judgment of noninfringement, after which it dismissed the infringement complaint. Finally, on American's motion, the district court struck Lockwood's demand that the issue of validity be tried to a jury, reasoning that the remaining claims were equitable in nature. Following the district court's decision to strike, Lockwood petitioned the Federal Circuit for a writ of mandamus directing the district court to reinstate his jury demand. The court issued the writ, reasoning that because Lockwood's underlying claim for infringement and damages was the basis of the action at the district court and the claim for infringement damages and any asserted defenses still existed in the case, Lockwood remained entitled to a jury trial on the factual questions relating to validity. American Airlines filed a petition for rehearing, making two arguments. First, it argued that, because the district court dismissed Lockwood's claim for patent infringement damages, the only claim remaining was American's claim for a declaration of patent invalidity. Second, American argued that its declaratory judgment action was entirely equitable in nature, and Lockwood therefore enjoyed no Seventh Amendment right to a jury trial. Judge Paul Michel wrote the opinion for a panel including Judges Marion T. Bennett and Alan D. Lourie. The court agreed with American's first argument, but disagreed with its second. The court concluded that a declaratory judgment action is simply an inverted patent infringement action, and is more comparable to a lawsuit for patent infringement than to an equitable action. Therefore, the court ruled that Lockwood was entitled under the Seventh Amendment to trial by jury. LOAD-DATE: April 03, 1995

Here Lockwood loses his Federal Court of Appeals Case.

Copyright 1997 Andrews Publications, Inc. Intellectual Property Litigation Reporter March 26, 1997 SECTION: Pg. 5 LENGTH: 631 words CASE: Lockwood v. American Airlines HEADLINE: FED. CIR.: AA RESERVATION SYSTEM DOES NOT INFRINGE LOCKWOOD'S PATENTS BODY: American Airlines' SABREvision reservations system does not infringe three patents held by inventor Lawrence B. Lockwood, the U.S. Court of Appeals for the Federal Circuit has affirmed. In addition, two of Lockwood's three patents are invalid for obviousness and anticipation, the court said. Lockwood v. American Airlines Inc., No. 96-1168 (Fed. Cir., March 4, 1997). (See P. 38 for the opinion.) The Federal Circuit panel unanimously affirmed the final judgment of the U.S. District Court for the Southern District of California which granted summary judgment to American Airlines, dismissing all of Lockwood's patent infringement claims. Lockwood holds three patents for computerized, interactive, self-service sales terminals designed to present audio-visual sales presentations to customers and then to enable them to book and pay for reservations on airlines and cruises and at resort hotels. The patents are U.S. Patent Nos. Re. 32,115, 4,567,359 and 5,309,355 (the 115, 359 and 355 patents, respectively). Lockwood had filed a patent infringement suit against American Airlines in 1991 alleging that its computerized SABREvision reservations system, used by airlines and travel agents to book flights and hotel rooms, infringed his patents. In 1995, U.S. District Judge William B. Enright determined that there were no genuine issues of material fact in dispute and he granted summary judgment to American Airlines, finding that its system did not literally infringe the three patents and did not infringe under the doctrine of equivalents. He held that the SABREvision system lacked the limitations of four claims of the 115 patent, that it lacked two claims of the 359 patent and that it lacked the limitation of the only independent claim of the 355 patent. Judge Enright also held that the 359 patent is invalid because it would have been obvious in light of American Airlines' original SABRE system in combination with a self-service terminal disclosed in an earlier-issued patent, U.S. Patent No. 4,359,631 (the 631 patent). In addition, the 355 patent is invalid because its claims were anticipated in Lockwood's earlier 359 patent, he ruled. Lockwood appealed, contending that Judge Enright erred in his construction of the claims of all three patents and that there were issues of material fact in dispute that should have precluded the grant of summary judgment. Ruling first on the issue of validity, the Federal Circuit said that Judge Enright found correctly that American Airlines' original SABRE system had been known or used by the public since 1962 and therefore qualified as prior art. In addition, the circuit court said that American Airlines met its burden in showing that its SABRE system, in combination with the 631 patent, would have yielded the invention disclosed in the 359 patent. The appellate panel also agreed with Judge Enright's conclusion that the 355 patent was anticipated by the 359 patent. The 359 patent was issued in 1986 while the 355 patent was the fifth in a chain of continuation applications stemming from the 359 patent application. The validity of the 355 patent turned on whether it was entitled to the filing date on the second application. Judge Enright correctly concluded that it was not because two of the three intervening applications failed to maintain the continuity of descriptive disclosure required by the Patent Act, the panel said. The circuit court rejected all of Lockwood's contentions regarding the trial court's construction of the patent claims. It found that Lockwood's own interpretations of the claims are incorrect, that he raised no issues of material fact in dispute and that he made no showing of infringement either literally or under the doctrine of equivalents. LOAD-DATE: May 2, 1997

Here's the introduction to the longer law review article by CHI Research, which includes names and corporate addresses for that consulting firm.

Copyright 1996 Omega Communications, Inc. Intellectual Property Today March, 1996 SECTION: FEATURES; "A Case for Patent Citation Analysis in Litigation"; Pg. 10 LENGTH: 2280 words BYLINE: BY ANTHONY BREITZMAN AND FRANCIS NARIN, CHI RESEARCH, INC., 10 WHITE HORSE PIKE, HADDON HEIGHTS, NJ 08035 BODY: The authors wish to acknowledge the suggestions and enthusiasm of Lawrence B. Lockwood in the development of these ideas, and the U.S. National Science Foundation for research grant support in developing these patent citation techniques. INTRODUCTION Over the last decade the use of patent citation analysis has been steadily expanding in the competitive intelligence community, where the occurrence of highly cited patents is used to identify and analyze inventions likely to be of technological importance. In this brief paper we will take these ideas further, and show why there is reason to believe that the basic concept of patent citation analysis can also be used quite effectively in a very novel application of citation analysis to patent litigation. The argument is based on the fact that most patents that have been given "Pioneer" status by the federal courts are very highly cited by later patents. We will make the argument that very highly cited patents, patents of "Pioneering Class" citation frequency, may be entitled to a broad interpretation of their claims, as are Pioneer patents. The basic idea behind patent citation analysis is that when a U.S. patent is highly cited, cited on the front pages of 20 or more subsequently issued patents, that highly cited patent is much more likely to represent an important invention than is a patent that is not cited, or cited only a few times. For example, the average citation frequency for all U.S. patents is about five cites per patent, and only 3 percent of patents are cited more than 20 times in 20 years. From a technological viewpoint, the notion of importance for a highly cited patent has been validated in a series of published studies. For example, it was shown in a paper published in the early 1980's that patents associated with IR100 awards that "honors the 100 most significant new technological products -- and the innovators responsible for them -- developed during the yearar" are more than twice as highly cited as other patents issued in the same years and in the same technologies. LOAD-DATE: September 22, 1997

And here are citations for two law review articles discussing the importance of In re Lockwood I'll snip out the relevant portions.

Copyright (c) 1997 Duquesne University Duquesne University Law Review Winter, 1997 35 Duq. L. Rev. 699 LENGTH: 16873 words COMMENT: Defining The Role Of The Jury In Patent Litigation: The Court Takes Inventory Deborah M. Altman

(snip) In the In re Lockwood decision, n71 Lawrence B. Lockwood ("Lockwood") brought a patent infringement action against American Airlines, Inc.("American") and moved for a jury trial. n72 American raised several defenses to the complaint, including the alleged invalidity of the patents at issue, and counterclaimed for a declaratory judgment of noninfringement or a judgment that the patents at issue were invalid. n73 American moved for and the court granted summary judgment on the infringement claim, and the court then proceeded to consider American's prayer for declaratory judgment of invalidity. n74 American moved to strike Lockwood's motion for a jury trial, arguing that because the court had dispensed with the infringement claim, its prayer for declaratory relief was the only claim remaining. n75 The trial court granted American's motion to strike on the issue of validity, concluding that since the remaining claims were equitable in nature, Lockwood was not entitled to a trial by jury. n76 Lockwood petitioned the Court of Appeals for the Federal Circuit for a writ of mandamus directing the district court to reinstate [*709] his jury demand. n77 The Federal Circuit granted Lockwood's petition, reasoning that since Lockwood's underlying infringement claim was the basis of his action, his claim for infringement damages still existed and thus Lockwood was entitled to a jury trial on the factual issues relating to patent validity. n78 American subsequently petitioned the Federal Circuit for rehearing, which the court granted. n79 On rehearing, the Federal Circuit held that the infringement claim no longer existed and that the statements in its previous order were erroneous. n80 The court continued to disagree, however, with the trial court's reasoning that since American's claim for declaratory judgment was equitable in nature, Lockwood was not entitled to a trial by jury under the Seventh Amendment. n81 The court concluded that given the grave importance of Lockwood's Seventh Amendment right to a jury trial, "the right to grant mandamus to require a jury trial where it has been improperly denied is [well] settled." n82 The court then evaluated Lockwood's right to a jury trial on the factual questions relating to patent validity as they arose in a paradigmatic patent infringement suit. n83 [*710] In reviewing Seventh Amendment jurisprudence, the court recognized that the Seventh Amendment embraces adjudication of legal rights created by statute even where those rights have no precursor at common law. n84 The court found that the statutory test n85 requires a two-pronged analysis: (1) the court must compare the statutory action to 18th century actions brought in the courts of England prior to the merger of law and equity; and (2) the court must then examine whether the nature of the remedy sought is legal or equitable. n86 If a claim involves an adjudication of legal rights or requires the invocation of legal remedies, the court "must honor a jury demand to the extent that disputed issues of fact concerning those rights and remedies require a trial." n87 The court noted that the only claim remaining in Lockwood's case was American's prayer for a declaratory judgment of patent invalidity. n88 The Supreme Court has established that for purposes of the Seventh Amendment, declaratory judgment actions are only as equitable or legal in nature as the controversies upon which they are founded. n89 The Federal Circuit concluded that the underlying controversy for American's declaratory judgment action of patent invalidity was no more than a suit for patent infringement brought by Lockwood, in which the affirmative defense of invalidity had been pled by American. n90 Such an inversion, the court noted, "cannot operate to frustrate Lockwood's Seventh Amendment [*711] rights." n91 The court then reasoned that since this inverted patent infringement suit could have been raised either at law or at equity in 18th century England, Lockwood was entitled to have the factual questions relating to the validity of his patents tried before a jury. n92 Accordingly, the court granted Lockwood's petition for writ of mandamus directing the district court to reinstate his jury demand. n93 Notably, the dissenting judges offered some compelling arguments against the court's grant of mandamus. They argued against the Lockwood order respecting the right to trial by jury on the issue of patent invalidity, or the underlying facts, for three reasons. n94 First, the judges reasoned, the validity of a patent involves public, not private, rights and Seventh Amendment jury trials are not available for a determination of public rights. n95 Second, the declaratory judgment of patent invalidity sought by American in this case could not be the inverse of an infringement action for damages for several reasons. n96 Initially, since the infringement action had been dismissed, it no longer existed. The court erroneously granted a jury trial based on the presence of a "legal right" issue without a claim for damages. n97 Moreover, [*712] the declaratory judgment of invalidity sought by American is not the "flipside" of an infringement action nor necessarily an affirmative defense, because an affirmative defense is limited to particular patent claims asserted in a complaint while a counterclaim may challenge all claims of the patent(s) at issue. n98 Even further, the "case or controversy" required for a declaratory judgment action is the threat of a suit for infringement by the patentee against the declaratory plaintiff and thus infringement in such a case is not an issue. n99 The third reason proffered by the dissent against the court's grant of mandamus was that they considered the issue of patent validity to be a question of law necessitating resolution of underlying facts by the judge to ensure correct legal determination and uniformity of decisions. n100 According to Judge Nies, the author of the Lockwood dissent, a judge is more appropriate than a jury to make the determination of patent validity. n101 Judge Nies also noted that current jury cases are tried in accordance with confusing precedent such that evidence respecting patent validity "is thrown into the black box of the jury room." n102 Although on June 5, 1995 the United States Supreme Court granted American's petition for certiorari, n103 on September 1, 1995, after the patentee, Lockwood, withdrew his jury demand, [*713] the Court vacated the Federal Circuit's decision and remanded the case to the district court with instructions to proceed. n104

And one more:

Copyright (c) 2000 Whittier Law Review Whittier Law Review Spring, 2000 21 Whittier L. Rev. 645 LENGTH: 28154 words NOTE AND COMMENT: A Jury of One's (Technically Competent) Peers? Davin M. Stockwell *

(snip) In In re Lockwood, n284 Lawrence B. Lockwood owned two patents that related to "interactive, audiovisual systems and apparatus useful in computerized reservation systems." n285 The first patent "discloses a fully automated, self-service terminal for dispensing voice and video information, goods and printed documents, and for accepting orders and payments directly from customers by coins or credit cards, without the need for a live salesperson." n286 The second patent involves a networked collection of the terminals that the first patent embodied. n287 Lockwood asserted that American Airlines infringed his patents with its manually operated SABREvision system, which permitted travel agents to use "a computer terminal [to] access schedule, cost and availability information stored in the central Sabre computer." n288 The SABRE system allowed the travel agents to gather information from customers in person or over the telephone. n289 To enforce his patent rights, Lockwood filed a patent infringement suit, seeking both damages and an injunction, and a demand for a [*674] jury trial. n290 In response to Lockwood's complaint, American Airlines filed a counterclaim against him for a declaratory judgment and, at the close of discovery, moved for summary judgment on the infringement claim. n291 The district court granted the motion, dismissing Lockwood's infringement complaint. n292 The court further struck Lockwood's demand for a jury trial because "the remaining claims are equitable in nature . . . ." n293 After the district court stuck his demand for a jury trial, Lockwood filed a petition with the Federal Circuit to reinstate his demand. n294 The Federal Circuit began its analysis by recognizing the importance of the right to a trial by jury and proceeded to explore the extent of the role served by a jury in patent litigation. n295 The court then applied the "historical test," n296 examining the evolution of declaratory judgment actions. n297 The Federal Circuit then found that American Airlines' counterclaim "is more comparable to a lawsuit for patent infringement than to any historical equitable action," holding that Lockwood was entitled to a jury trial. n298 Thus, the Federal Circuit not only supported, but also expanded, the right to trial by jury in patent litigation. Like the Federal Circuit's decision in Markman, n299 a dissenting opinion also accompanied this judgment. n300 Judge Nies dissented from the majority opinion because he found that patent rights are public rights, n301 and, thus, not subject to the Seventh Amendment guarantee. n302 Judge Nies also rejected the application of the "historical test" n303 by the majority, reasoning that the majority had modified the test by changing [*675] the conjunction between the two halves of the two-part test from an "and" to an "or." n304 Judge Nies also recognized the growing conflict between the circuit courts regarding the application of traditional jury practice in patent litigation and ultimately concluded that juries should not be employed in patent cases. n305 After the Federal Circuit rendered its judgment, American Airlines appealed to the Supreme Court. n306 Granting certiorari in the case, the Supreme Court vacated the judgment of the Federal Circuit and remanded the case. n307 The Court again reaffirmed its trend to restrict the right to trial by jury in patent litigation. n308 Currently, the case remains pending reconsideration by the Federal Circuit in accordance with the decision of the Supreme Court. n309 Therefore, the Supreme Court in both Markman n310 and Lockwood n311 not only confirmed a reluctance by the judiciary to maintain the current role of the jury in patent cases, but also revealed a willingness to narrow further its scope. n312