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Lawsuit Says Fish & Richardson Tried to Claim Its Partner's Patent
A complaint filed against patent powerhouse raises issue of when lawyer's personal patents could become property of the firm
The Recorder
October 12, 2007
It's common for engineers who invent a new technology while working for a tech company to forfeit the patent rights to their employers. But a new federal suit involving Fish & Richardson could test whether law firms are entitled to those same ownership rights when one of their partners also happens to be an inventor.
The suit by patent holding company Illinois Computer Research says Fish & Richardson used improper tactics to make ICR's patent claims against Google go away. ICR sued Google last month and added Fish as a co-defendant last week.
But Fish says the problem lies with a partner who started his own business without firm authorization. San Diego attorney Scott Harris had worked for Fish & Richardson for 14 years until last month, according to ICR's suit. In May, Fish & Richardson forced Harris to sell several of his patents after Dell Inc. -- a prospective client for Fish -- complained about them. ICR says it bought the patents from Harris and expected him to help the company enforce them.
On Sept. 10, ICR sued Google -- a Fish client -- for allegedly infringing on one of the patents. But under pressure from Google, Fish & Richardson then claimed that the patents belonged to the law firm, according to ICR's amended complaint filed Oct. 5.
"Google ... complained to Fish and sought its help in having the infringement claim withdrawn," the complaint alleges. "Fish demanded that Mr. Harris 'get these patents back' from ICR."
The firm, represented by Jenner & Block, said in a statement this week that "Scott Harris was involved in outside business ventures while he was a principal of Fish & Richardson that were not authorized by the firm and appear to have violated his agreement with the firm."
The statement further called the lawsuit, which was filed in the Northern District of Illinois, "baseless," and said "Fish & Richardson, as always, will continue to act in our clients' best interests, which is our highest professional responsibility."
Google did not respond to e-mails seeking comment on the dispute, which was first reported by the Daily Journal.
It may be tough for a law firm to assert patent ownership if the employee has been straight with his bosses about his inventions from the beginning, said employment law expert Steven Tindall, a partner at Rukin Hyland Doria & Tindall.
Under California law, employees can often keep their patents if they developed their invention on their own time, and when it has nothing to do with the employer's business, Tindall said. But when an employee develops a patented technology on company time -- and when it dovetails with their employer's business -- the employer is entitled to the patent, he said.
"Where you get fighting over this is in the gray area between those two extremes," Tindall said.
Employers often have their employees sign an agreement to at least let their bosses know early on when they are developing any kind of technology inside or outside work, Tindall said.
Harris never signed an agreement stating he'd give his patents to the firm, said Raymond Niro, a partner with Chicago's Niro, Scavone Haller & Niro, which represents ICR.
"At all times, Fish was aware of Mr. Harris's personal inventorship activities," the complaint says.
The suit against Google contends that its book search feature infringes on a patent Harris received in 2000 that describes a method for flipping through the pages of a book online.
Harris has retained an employment attorney, Lynne Lasry, of Sandler, Lasry, Laube, Byer & Valdez in San Diego, but she declined to comment on the case.
