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Patent Fight Pending 

When a company sues a notorious critic for infringement, is it just business or intimidation?

Wednesday, Dec 6 2000
It was a sunny morning in July and Greg Aharonian, the author and publisher of the country's leading Internet patent newsletter, was eating a bowl of Cheerios in his Financial District apartment when an unexpected visitor knocked at his door. To his surprise, the casually dressed stranger had come to deliver a lawsuit alleging that Aharonian had infringed a patent owned by a Chicago company called TechSearch.

Aharonian was well aware of the company and its patent. He makes a living challenging the American patent system, and in fact, a few months before the lawsuit arrived at his doorstep, Aharonian had sent out an issue of his e-mail newsletter with a scathing critique of the very patent he was now accused of infringing. In his typical gloves-off style, Aharonian had called the TechSearch patent "idiotic" and "crappy." According to him, the patent was so ridiculously broad that virtually anyone using the Internet would at some time be guilty of violating it.

Though his friends often joked that he might one day get slapped with a libel lawsuit for his acerbic rants, Aharonian says he never thought he would be sued for infringement.

"At least libel would be legitimate, but [the TechSearch] charge is totally bogus," insists Aharonian, who is both respected and excoriated in the patent world. "I run a Web site that has nothing to do with their patent. It pisses me off big time."

Aharonian says the suit was filed to silence his scorching criticisms of the TechSearch patent -- an attempt to violate his freedom of speech. "It's subtle First Amendment busting," Aharonian says. "I'm not a traditional target because my Web site doesn't make any money. They're trying to harass me and it's maddening because it costs tens of thousands of dollars to fight this off, for a patent that most people would agree doesn't mean anything."

Some experts in the field agree that the TechSearch lawsuit -- thought to be one of the first patent lawsuits potentially aimed at silencing a critic -- is unusual and problematic.

"Aharonian has been caustic, and caustic toward me, but I think this is an outrageous lawsuit," says Lawrence Lessig, a Stanford University law professor who specializes in intellectual property and First Amendment issues. "Patent lawsuits typically don't think about the First Amendment, but the clear motivation here is to silence Aharonian the critic. It's exactly the worst way patents can be used."

But TechSearch maintains that the case is purely about infringement, and that Aharonian and three other defendants (an Illinois Acura dealership, the Green Bay Packers football team, and an adult Web site) have violated its "Remote Query Communication System" patent on their commercial Web sites. The patent, which involves the popular pro-cess of compressing and decompressing computer data from a remote server, is now being re-examined by the U.S. Patent and Trademark Office. But TechSearch points to four previous suits in which the alleged patent violators have settled and agreed to pay a licensing fee.

Bespectacled and slightly pudgy, Aharonian is a stereotypical middle-aged techie. Though unremarkable in appearance, his hypercritical tendencies have made him notorious in his field -- he has even been dubbed the "Matt Drudge of patents" by his detractors. That's because Aharonian, who works from his cluttered 20th-floor apartment, makes a living out of lambasting the U.S. Patent and Trademark Office for issuing what he calls overly broad and sometimes ludicrous patents (such as one awarded in 1996 for the invention of 3-D pie charts).

In Aharonian's opinion, the government gives out patents too easily and does a poor job of weeding out bad ones. Especially in the burgeoning field of software and Internet patents, he says, the government does not do a thorough job of digging for "prior art" -- that is, documentation that the invention already exists. Instead, the patent office issues patents for things that are neither "new" nor "non-obvious" -- two of the major criteria for awarding a patent. In his estimation, about two-thirds of the software patents granted each year -- or about 20,000 -- are invalid.

And so, for more than seven years, Aharonian has penned sometimes scathing rants on the patent system in his e-mail newsletter, which goes out to about 3,000 subscribers all over the world. And he is only too happy to condemn the patent office to anyone who will listen. In September, for example, he told USA Today that the patent system is becoming "extortion. Patent quality in this country is a joke. It's getting worse."

Among several law firms, Aharonian is known as a "patent buster" for his work as a consultant. He helps patent attorneys fend off infringement suits against their clients by spending his days scouring the engineering libraries of local universities to dig up prior art.

UC Berkeley patent law professor Mark Lemley says Aharonian, though harsh, is generally considered a valid critic. Lemley adds that the patent office is severely underfunded and understaffed, lacking the resources to do more thorough research.

But Aharonian's critique of the system doesn't stop with the patent process. Bad patents can create serious repercussions, he argues -- and the TechSearch lawsuit is a prime example.

Aharonian explains that a patent is always assumed to be valid, and even if it is overly broad or not unique, the patent holder still has the power to sue a vast universe of unknowing violators. He says that if 2 percent of the weak software patents turn into lawsuits each year, that translates into about 400 questionable cases a year. Ironically, it was for that reason Aharonian so viciously criticized the TechSearch patent in his newsletter months ago.

In a recent newsletter, Aharonian wrote that the TechSearch patent is "so pathetic that if the PTO [Patent and Trademark Office] had any pride it would reexamine on its own. Sadly, I am hearing companies settle with TechSearch because the license fee is so cheap ... that it isn't even worth having an invalidity opinion prepared -- a form of extortion the PTO must feel good about because one of the PTO's "customers' is happily making money."

The patent in dispute is TechSearch's Remote Query Communication System (Patent No. 5,253,341). In 1997, TechSearch began working to acquire the patent, which had been issued jointly to a retired Mobil Oil employee and a New Jersey entrepreneur in 1993 after the two men claimed to invent the process of using a computer to compress and decompress data from a remote server. Theoretically, the TechSearch patent could be used to protect the popular process of downloading and opening a graphic file such as a GIF (a compressed file) from the Internet (a remote server). Under this definition, anyone looking at a graphically enhanced Web page is violating the TechSearch patent.

"In the broadest sense, anything involving compression and decompression on the Internet would violate the patent," explains Ray Niro Sr., TechSearch's attorney. "It's probably right [that anyone opening a GIF could be violating the patent], but we have only sued and sought to license those that use the Internet for commercial purposes. We and our client are not attempting to enforce the patent against individual users. If someone wants to send an e-mail to a friend with a photo attachment, even if it's technically a violation, we don't seek to enforce it."

In the past year, Niro has helped TechSearch file four lawsuits against about 15 companies for infringing its patent. The Chicago company, whose business is helping inventors uphold their patents, has been fairly successful in these suits. All previous defendants, including United Airlines and Walgreens, have settled their cases and agreed to pay a licensing fee that ranges from $30,000 to $80,000; in the last year, more than 50 companies have paid for a TechSearch license to avoid litigation. TechSearch says a significant portion of the fee goes to the inventors or their families.

Berkeley professor Lemley says validating the TechSearch patent could have great implications on the Internet. "If the patent is as broad as they say it is, and it's valid, then it's going to come as a tremendous shock to a bunch of people," Lemley says. "They [TechSearch] would have the power to shut down the Internet, and basically everyone who uses the Web would have to take a license from them.

"It's hard to say whether the patent is valid because the question is: Did anyone do it before them? And I don't know. Under different circumstances, the person to ask would be Greg Aharonian."

Aharonian, however, refuses to fork over $35,000 for a license, and he stalwartly refuses to settle. He has hired a top-notch patent attorney from Washington, D.C., and continues to insist that he has not violated the patent. Aharonian also says he has a stack of prior art that will invalidate the patent, though he refuses to show it to the TechSearch attorneys. Two other parties -- to which Aharonian has no ties -- have asked the government to re-examine the patent. Aharonian's case has been put on hold until the government offers a decision.

Ultimately, Aharonian says that TechSearch is using the patent infringement lawsuit as a way to discourage him from criticizing the company. He argues that the TechSearch lawsuit -- which accuses Aharonian of "shamelessly, and oftentimes profanely, attack[ing] the United States Government, specifically the Patent and Trademark Office" -- focuses primarily on his brash writing style instead of the legal issues.

"The complaint is very bare bones, and there's nothing about why Greg is infringing," says UC Berkeley's Lemley. "It does seem like TechSearch sued Aharonian for political reasons because he was helping to prove that the patent was invalid, but I don't think there's anything to prevent them from doing it. It's troubling."

First Amendment arguments, however, carry little weight in a patent suit. "He could say that they sued him to keep him from speaking out, but patent suits don't have First Amendment defenses," Lemley says.

TechSearch's Niro, however, says the case is strictly about intellectual property. "Aharonian has it in his mind that we are trying to silence him, but First Amendment rights have nothing to do with this lawsuit. This is America -- he can say what he wants to say. What he can't do is violate this patent."

Though Aharonian continues to fight the suit and bust patents, he insinuates that in some ways TechSearch may already have won. "I've started to think twice about the things I write now," he says. "I'm facing $40,000 lawyer's bills. That's a lot of money. Now, in the newsletter, it's pretty much, "Someone sued somebody else, and here's the patent number.' Before, I would write, "Somebody sued somebody and one side is an asshole.'"

About The Author

Bernice Yeung


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