Patent dispute over model train control system illustrates many patent reform issues
Here's a "horror story" about a model train patent which involves many of the themes currently mentioned in the patent reform discussion. The story includes an "open source" person and a patent holder, and even the lawyer of the patent holder. Specifically, the patent in question is US 6,530,329 (titled "Model train control system"), issued March 11, 2003, which has as the first claim:
A method of operating a digitally controlled model railroad comprising the steps of: (a) transmitting a first command from a first program to an interface; (b) transmitting a second command from a second program to said interface; and (c) sending third and fourth commands from said interface representative of said first and second commands, respectively, to a digital command station.
Robert Jacobsen, a hobbyist model train software developer received threatening letters from the patent holder, and turned around and filed a declaratory judgment [DJ] that he is not infringing the claims of the patent. This is a case wherein the "accused infringer" took legal action first, in the form of a DJ action.
There's more. The case, captioned Jacobsen v. Katzer et al, and filed in ND Cal (where else would this be filed? the docket is 5:2006cv01905) names as a co-defendant Kevin Russell, the lawyer of patentee Matthew Katzer. The lawyer works for a firm in Oregon: Chernoff, Vilhauer, McClung & Stenzel. He's now 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. The action against the lawyer arose out of a freedom of information [FOIA] request filed by the lawyer with Lawrence Berkeley National Laboratory (LBNL), the employer of train hobbyist Jacobsen. There was a suggestion that LBNL "had sponsored the allegedly infringing JMRI Project's activities." Jacobsen has written, with others, open source code called JMRI, or Java Model Railroad Interface, which allows one to control how model trains run on a track. He's the primary developer of the software through the JMRI Project.
Furthermore, this case involves the use of a continuation application filed with claims drafted to ensnare a product put in public AFTER the parent application. This general issue was addressed in the USPTO's proposed rulemaking on continuing applications, published in January 2006. Groklaw wrote:
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.
Well, going back to the Unocal case, Unocal didn't tell the USPTO it was changing claims to conform to decisions made by California's emissions folks. The issue at the USPTO isn't "why" claims are changed. The issue is whether or not the written description of the parent case supports the later claims. To be sure, the FTC had separate concerns with what Unocal did, but those don't apply to the model train case.
The attorney for train hobbyist Jacobsen is seeking prior art existing before June 24, 1997, specifically
* A 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.
The '329 patent does list several prior art patents. It also mentions:
A suitable standard for the digital command control system is the NMRA DCC Standards, issued March 1997, and is incorporated herein by reference. While providing the ability to individually control different devices of the railroad set, the DCC system still fails to provide the capability for multiple operators to control the railroad devices, especially if the operators are remotely located from the railroad set and each other.
DigiToys Systems of Lawrenceville, Ga. has developed a software program for controlling a model railroad set from a remote location. The software includes an interface which allows the operator to select desired changes to devices of the railroad set that include a digital decoder, such as increasing the speed of a train or switching a switch.
The protocol used by the software is based on Cobra from Open Management Group where the software issues a command to a communication interface and awaits confirmation that the command was executed by the digital command station. When the software receives confirmation that the command executed, the software program sends the next command through the communication interface to the digital command station.
The "summary of invention" of the '329 states:
The present invention overcomes the aforementioned drawbacks of the prior art, in a first aspect, by providing a system for operating a digitally controlled model railroad, that includes transmitting a first command from a first client program to a resident external controlling interface through a first communications transport. A second command is transmitted from a second client program to the resident external controlling interface through a second communications transport. The first command and the second command are received by the resident external controlling interface which queues the first and second commands. The resident external controlling interface sends third and fourth commands representative of the first and second commands, respectively, to a digital command station for execution on the digitally controller model railroad.
Relevant to earlier statements of Mike at Techdirt about software patents, Groklaw termed this a software patents matter. As one can see from the claim, this is a method patent, arguably involving an algorithm, but hardly involving software per se.
A method of operating a digitally controlled model railroad comprising the steps of: (a) transmitting a first command from a first program to an interface; (b) transmitting a second command from a second program to said interface; and (c) sending third and fourth commands from said interface representative of said first and second commands, respectively, to a digital command station.
Robert Jacobsen, a hobbyist model train software developer received threatening letters from the patent holder, and turned around and filed a declaratory judgment [DJ] that he is not infringing the claims of the patent. This is a case wherein the "accused infringer" took legal action first, in the form of a DJ action.
There's more. The case, captioned Jacobsen v. Katzer et al, and filed in ND Cal (where else would this be filed? the docket is 5:2006cv01905) names as a co-defendant Kevin Russell, the lawyer of patentee Matthew Katzer. The lawyer works for a firm in Oregon: Chernoff, Vilhauer, McClung & Stenzel. He's now 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. The action against the lawyer arose out of a freedom of information [FOIA] request filed by the lawyer with Lawrence Berkeley National Laboratory (LBNL), the employer of train hobbyist Jacobsen. There was a suggestion that LBNL "had sponsored the allegedly infringing JMRI Project's activities." Jacobsen has written, with others, open source code called JMRI, or Java Model Railroad Interface, which allows one to control how model trains run on a track. He's the primary developer of the software through the JMRI Project.
Furthermore, this case involves the use of a continuation application filed with claims drafted to ensnare a product put in public AFTER the parent application. This general issue was addressed in the USPTO's proposed rulemaking on continuing applications, published in January 2006. Groklaw wrote:
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.
Well, going back to the Unocal case, Unocal didn't tell the USPTO it was changing claims to conform to decisions made by California's emissions folks. The issue at the USPTO isn't "why" claims are changed. The issue is whether or not the written description of the parent case supports the later claims. To be sure, the FTC had separate concerns with what Unocal did, but those don't apply to the model train case.
The attorney for train hobbyist Jacobsen is seeking prior art existing before June 24, 1997, specifically
* A 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.
The '329 patent does list several prior art patents. It also mentions:
A suitable standard for the digital command control system is the NMRA DCC Standards, issued March 1997, and is incorporated herein by reference. While providing the ability to individually control different devices of the railroad set, the DCC system still fails to provide the capability for multiple operators to control the railroad devices, especially if the operators are remotely located from the railroad set and each other.
DigiToys Systems of Lawrenceville, Ga. has developed a software program for controlling a model railroad set from a remote location. The software includes an interface which allows the operator to select desired changes to devices of the railroad set that include a digital decoder, such as increasing the speed of a train or switching a switch.
The protocol used by the software is based on Cobra from Open Management Group where the software issues a command to a communication interface and awaits confirmation that the command was executed by the digital command station. When the software receives confirmation that the command executed, the software program sends the next command through the communication interface to the digital command station.
The "summary of invention" of the '329 states:
The present invention overcomes the aforementioned drawbacks of the prior art, in a first aspect, by providing a system for operating a digitally controlled model railroad, that includes transmitting a first command from a first client program to a resident external controlling interface through a first communications transport. A second command is transmitted from a second client program to the resident external controlling interface through a second communications transport. The first command and the second command are received by the resident external controlling interface which queues the first and second commands. The resident external controlling interface sends third and fourth commands representative of the first and second commands, respectively, to a digital command station for execution on the digitally controller model railroad.
Relevant to earlier statements of Mike at Techdirt about software patents, Groklaw termed this a software patents matter. As one can see from the claim, this is a method patent, arguably involving an algorithm, but hardly involving software per se.
posted by Lawrence B. Ebert at 5:02 AM
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