Fighting a Patent Claim - California

[michael_b]

CASE: A patent was issued for searching for photos online taken by a photographer at an event, for sale or display. The patent includes a bib number search (a number worn by a runner or bike rider during competition) or a search by name of people, such as in a wedding party.

I have been served, indicating I have violated this patent, and intend to fight it. According to the USPO, a patent can not be obvious. If I were to show a person a photo of a runner, biker, softball player or football player with a visible bib number of jersey number, how would they respond when asked how they would find that person's photo? (By the number - OBVIOUSLY). If I present them with photo of a wedding party, cheerleader camp or school prom and ask how they would locate that person's images in a database, what would they respond? (OBVIOUSLY - by name).

There have been numerous suits brought by this person, and all but one have caved in and paid for the license to use the search. One company fought and the documents were sealed and the case ended without going to court, so no way to tell the outcome.

I plan to use the non-obvious claim along with prior-art, which I had been on a web-site before the patent was issued.

Q: During discovery, can I find out the results of the previous (sealed) case? I have a feeling it was dropped by the Plaintiff due to possibly losing. If it was settled, can i find out the fee they pay for licensing? Also the fee paid by those who caved in and have a non-disclosure agreement?

This person is actively going after small individuals after the big case came to an end. My second guess is, he is trying to use his patent to limit competition.

Any input would be great.

[divgradcurl]

I plan to use the non-obvious claim along with prior-art, which I had been on a web-site before the patent was issued.

One point, the issue date of the patent isn't relevant for the purposes of obviousness or anticipation -- only the filing date (or priority date, if the patent claims priority to an earlier patent or application) is important.

Q: During discovery, can I find out the results of the previous (sealed) case? I have a feeling it was dropped by the Plaintiff due to possibly losing. If it was settled, can i find out the fee they pay for licensing? Also the fee paid by those who caved in and have a non-disclosure agreement?

All of these things are discoverable. You will probably need to have a protective order in place in order to view them, but that's pretty standard in a patent case. If you are represented, likely you will not be able to view or know the substance of the documents -- only your attorney will be able to view them.

This person is actively going after small individuals after the big case came to an end. My second guess is, he is trying to use his patent to limit competition.

That's certainly a possibility.