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After last November’s Florida election fiasco, anyone who comes up with better voting machine technology might expect to make a quick fortune. Not so fast, cautions David J. Healey, a partner at Houston’s Goldstein & Healey. He says that anyone whose technology becomes an industry standard can face a patent and antitrust litigation minefield. Many of Healey’s clients are members of committees that set standards in the computer and electronics industries. He says that industry standards frequently come up in patent and antitrust litigation. He recommends that inventors with patents covering even part of an industry standard tell such committees about their patents in a timely fashion. This is particularly true if inventors are themselves part of a standards-setting committee. REVELATION AS PROTECTION Inventor Joe Blow may develop the “killer application” for election technology, then try to get named to the election standards-setting committee so he can maneuver the standards to favor his own technology. But if he doesn’t tell the committee about his invention, and that it could cover the standard being developed, he probably will not be able to enforce his patent. That is because, if his technology is adopted as the standard, his invention would be artificially boosted in value, which is ethically unacceptable. To avoid this problem, some standards-setting groups try to work around existing patents, says Professor Mark Lemley of the Center for Law and Technology at the University of California at Berkeley School of Law (Boalt Hall). “Some organizations will say they are not willing to adopt a standard if it has intellectual property rights attached to it,” he says. “The concern is that people will propose a standard in which they have a patent or a patent application and then, when the standard comes out, they will say, ‘You have to pay us.’” In 1993, the U.S. Court of Appeals for the Federal Circuit affirmed a trial court judge who had said that an inventor could not enforce his patent because he kept quiet about them “while an entire industry implemented the proposed standard” that could potentially infringe on it. Stambler v. Diebold Inc., 11 U.S.P.Q.2d 1709, 1714-15 (E.D.N.Y. 1988), aff’d, 11 U.S.P.Q.2d 1715 (Fed. Cir. 1993). Influencing a standards-setting group to adopt one’s standard and then suing for infringement got harsh treatment from the Federal Circuit in a recent case involving memory chips. The court, in an opinion by the late Judge Giles Rich, found that Wang Laboratories Inc., by lobbying the standards-setting group JEDEC Solid State Technology Association, managed to have its memory chips “designated a standard” in 1983. Wang v. Mitsubishi, 103 f.3d 1571 (1997). As a result, the court found, Mitsubishi Electronics American Inc. possessed “an irrevocable royalty-free license” to the technology and couldn’t be sued for infringement. In March 2000, however, in a patent infringement case involving computer modems, a federal judge in California found that a patent owner had adequately informed a standards-setting body of its patented technology. As a result, the court dismissed the defendant’s claim that the patent owner had committed “patent abuse.” Townshend v. Rockwell International Corp., 2000 U.S. Dist. Lexis 5070. In the case of voting technology, some sets of standards already exist. In 1984, the predecessor agency to the National Institute of Standards and Technology produced a report that led, in 1990, to a set of standards for various voting technologies. And the National Association of State Election Directors publishes on the Internet, at www.nased.org/ ita.pdf, the election systems it has certified. But new standards will have to be developed for future voting technologies that will probably be heavily computer- and Internet-involved. In February 2000, the Internet Voting Technology Alliance, headed by Ed Gerk, head of San Rafael, Calif.’s Safevote Inc., met for the first time in Washington, D.C. Safevote worked with California’s secretary of state to conduct tests of Internet voting in the 2000 presidential election. Healey’s advice to anyone involved with the new election-standards group is simple: “Keep in mind that courts, one way or another, will not put up with misconduct in the standards-setting process. So if you’re part of the process, you really need to play fair.”

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