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Fig. 1 – “Prior Art” is a “Battle of Experts” – Expert witnesses in Leader v. Facebook. FOR LEADER: Dr. Giovanni Vigna, University of California, Berkley; and Dr. James Herbsleb, Carnegie Mellon University. FOR FACEBOOK: Dr. Michael Kearns, University of Pennsylvania; and Dr. Saul Greenberg, University of Calgary.
After a three-day “battle of experts” and mounds of evidence in Leader v. Facebook, a jury determined that Facebook infringes 11 of 11 Leader patent claims. In other words, Leader’s expert witnesses proved that Facebook “literally infringes” U.S. Patent No. 7,139,761 owned by Leader Technologies. According to Leader this means that the engine running Facebook is their invention.
Another big part of the lawsuit that hasn’t garnered much attention until now is the subject of “prior art.” Bottom line, if an alleged infringer can prove that a patent should not have been issued because of the existence of a prior invention that the Patent Office didn’t know about, that patent can be invalidated.
1. Leader knocked down ALL of Facebook’s prior art attacks
Facebook put forward nearly 100 pieces of alleged prior art during the litigation. Leader’s experts succeeded in knocking down all 100 and proving that no prior art predated its invention. This means Leader proved that no published prior art to its invention exists.
Here’s where this law gets tricky, and I can certainly sympathize with the jury now in trying to keep all this straight (they clearly didn’t and Facebook’s attorneys made darn sure they would stay confused). The “on sale bar” accusation is a part of the prior art analysis. Essentially, if one offers one’s invention for sale too early, the concept is that one puts one’s own invention into play and it becomes prior art to itself!!! Score one for me! Soooo, this means that to prove “on sale bar” you have to have exactly the same kind of expert testimony as you have for prior art. Facebook provided no expert witness at all for “on sale bar.” See my Mr. Cricket illustration on the right.
This also means that from the time of Leader’s invention was first made public (June 24, 2004), future patent filers of related technology MUST disclose Leader’s technology to the Patent Office as a reference once they become aware of it. If they don’t, their patent can be invalidated. The rationale here is that patent examiners cannot be expected to search the planet for prospective prior art on each application they evaluate. Instead, it is the patentee’s duty to do that; while the examiner often/usually finds additional references as well (as he did in the Andreessen patents below).
2. How is prior art identified?
How does an inventor determine if prior art exists? Patent lawyers use a handful of databases to search the planet for prospective prior art. They enter a selection of search words and then review each result for relevance. In addition, inventors comb through their personal research files and disclose anything relevant to the claimed invention.
During the course of the patent “prosecution” (the process of working on a patent application) both the Patent Office examiner and the patentee submit dozens of lists of references considered; these references are listed on any final issued patent. This process helps ensure that prior art that would otherwise invalidate a patent application cannot be found.
3. Here’s where Fenwick & West—former attorneys for Leader and current attorneys for Facebook for both stock sales and patent filings—made their crucial mistake:
There are at least two “social networking” patents I could find that list Leader Technologies’ U.S. Patent No. 7,139,761 as prospective prior art references considered. BOTH of them list Fenwick & West LLP as the attorney (“the Andreessen Patents“), and both were filed long before Facebook’s patents.
- Patent No. 7,756,945 Marc L. Andreessen. Filed Aug. 2, 2005; awarded Jul. 13, 2010.
- Patent No 7,603,352 Steven Vassallo, Marc L. Andreessen. Filed Aug. 26, 2005; awarded Oct. 13, 2009.
4. Patenting for Muppets
When a patent application is filed, a patent examiner is assigned to the case. This person determines if the application describes something that “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof…” subject to the conditions and requirements of the law. See this link for more on the patent application process.
Part of the examination process is for the Patent Examiner to evaluate all relevant references of prior work in the field to help ensure that the claimed invention is truly “novel.” All these references get listed on patents awarded. Inadvertent omissions can invalidate a patent. Willful omissions are considered fraud against the Patent Office and certainly invalidate the patent.
In addition, “all business with the United States Patent and Trademark Office (USPTO or Office) should be transacted in writing. Other patent correspondence, including design, plant, and provisional application filings, as well as correspondence filed in a nonprovisional application after the application filing date (known as “follow-on” correspondence).” See this link for more.
5. Translation: There is a public record of ALL written correspondence between the USPTO and the applicant. (AHA! This is how I found the proverbial “smoking gun”).
5a. U.S. Patent No. 7,756,945 Andreessen et al
Filed August 2, 2005; Lists Yasin M. Barqadle as the examiner; Lists Marc Andreessen et al.
On April 2,2008, Fenwick & West is named as attorneys for the patent.
On April 3, 2009, Examiner Barqadle filed a PTO-892 form entitled “Notice of References Cited” that lists four existing patents that are required to be listed as prior art. One of those is U.S. Patent No. 7,139,761 McKibben et al (Leader Technologies’ CEO). In other words, the Patent Examiner put Fenwick & West on public notice of the Leader social networking prior art.
Fig. 2 – Selected documents from the “patent wrapper” for U.S. Patent No. 7,756,945 Andreessen et al, filed Aug. 2, 2005, issued Jul. 2010. Highlighted here is page 8 of this set showing the Examiner’s “Notice of References Cited” (form PTO-892) on Apr. 3, 2009 identifying U.S. Patent No. 7,139,761 McKibben et al, filed Dec. 10, 2003, issued Nov. 21, 2006, and assigned to Leader Technologies, Inc., as prior art. These documents are publicly accessible from http://portal.uspto.gov/external/portal/pair.
On July 13, 2010, this patent is awarded. On the FIRST PAGE of the patent document, U.S. Patent No. 7,139,761 McKibben et al. is cited as a reference (prior art). See Fig. 2, p. 10. GOTCHA!
5b. U.S. Patent No. 7,603,352 Vassallo & Andreessen
Filed August 26, 2005; Lists Aleksandr Kerzhner as the examiner; Lists Steven Vassallo (& Marc Andreessen).
On April 2, 2008, Fenwick & West is named as attorneys for the patent.
On July 24, 2009, Fenwick & West filed an “INFORMATION DISCLOSURE STATEMENT BY APPLICANT” which lists 17 items of prior art. One of those is U.S. Patent No. 7,139,761 McKibben et al (Leader Technologies’ CEO). In other words, Fenwick & West acknowledges Leader’s invention as social networking prior art.
Fig. 3 – Selected documents from the “patent wrapper” for U.S. Patent No. 7,603,352 Vassallo and Andreessen, filed Aug. 26, 2005, issued Oct. 13, 2009. Highlighted here is page 7 of this set showing the Applicant’s “INFORMATION DISCLOSURE STATEMENT BY APPLICANT” on Jul. 24, 2009 identifying U.S. Patent No. 7,139,761 McKibben et al, filed Dec. 10, 2003, issued Nov. 21, 2006, and assigned to Leader Technologies, Inc., as prior art. These documents are publicly accessible from http://portal.uspto.gov/external/portal/pair.
On October 13, 2009 this patent is awarded. On the FIRST PAGE of the published patent, U.S. Patent No. e,139,761 is cited as a reference (prior art). See Fig. 3, p. 11. DOUBLE GOTCHA !!
Fenwick & West clearly knew of Leaders’ patent and recognized it as prior art in two other earlier dated patent applications—the Andreessen Patents. But, but they don’t acknowledge it again later in ANY of the nearly 100 patents they have filed for Facebook since then.
6. “Christopher P. King” . . . or is it “Christopher-Charles King”? Mr. King appears to have hyphenated his first name just for Mark Zuckerberg! Isn’t that precious?
I couldn’t believe my luck in finding a common Fenwick & West attorney listed in the USPTO records in both the Andreessen Patents and the Facebook patents: Christopher King. Mr. King actually signed all the Andreessen filings as “Christopher P. King, Reg. No. 60,985.”
But (and this is a big but), he actually changed his first name to “Christopher-Charles King, Reg. No. 60,985.” His name at the Fenwick & West website is “Christopher P. King” as it is also at the State Bar of California. Why the name change? Will we discover that this name change occurred about the time Fenwick & West withdrew from the Andreessen Patents just eight weeks ago, on Feb. 1, 2012? Could this change be intended to thwart search attempts to link him to both Andreessen and Facebook? TRIPLE GOTCHA !!!
Fig. 4 – Selected documents from the “patent wrapper” for U.S. Patent No. 7,669,123 Zuckerberg et al, filed Aug. 11, 2006, issued Feb. 23, 2010. Highlighted here is page 2 of this set showing the Applicant’s “Attorney/Agent Information” identifying “Facebook/Fenwick” and “Reg #: 60985, Name: King, Christopher-Charles, Phone: 650-335-7633 [Fenwick & West phone number]“. These documents are publicly accessible from http://portal.uspto.gov/external/portal/pair.
Facebook DID NOT disclose U.S. Patent No. 7,139,761 as a reference in ANY of its patents, including the one above. See Fig. 4, pp. 14-16.
7. Here’s how Mr. King was listed at Fenwick & West LLP on Mar. 24, 2012
Fig. 5 – Christopher P. King (not Christopher-Charles King as he now lists himself at the US Patent Office) professional bio at the Fenwick & West LLP corporate website on Mar. 24, 22012. Source: http://www.fenwick.com/professionals/Pages/christopherking.aspx
8. Here’s how Mr. King represented himself to the U.S. Patent Office for the earlier Andreessen Patents
Fig. 6 – Selected documents from the “patent wrapper” for U.S. Patent No. 7,756,945 Andreessen et al, filed Aug. 2, 2005, issued Jul. 13, 2010. Highlighted here is page 9 of this set showing a Feb. 8, 2010 “Argument/Remarks Made in an Amendment” submitted by Christopher P. King, Reg. No.: 60,985 on behalf of Andreessen. NOTE: This USPTO filing occurred just 15 days before Facebook added their “on sale bar” claim in Leader v. Facebook. Hmmmmm. More coincidences!!! IT IS NOW APPARENT THAT MR. KING IS REPRESENTING HIMSELF TO THE USPTO USING TWO DIFFERENT NAMES. Under “Christoher P.” he believes Leader’s patent to be a relevant social networking reference (at did the Patent Examiner) for Andreessen, but under “Christopher-Charles” he does not for Zuckerberg. How convenient. These documents are publicly accessible from http://portal.uspto.gov/external/portal/pair.
9. Mark Zuckerberg promised in an oath to the American public that he would tell the truth about his patenting activity and claims
Fig. 7 – Selected documents from the “patent wrapper” for U.S. Patent No. 7,669,123 Zuckerberg et al, filed Aug. 11, 2006, issued Feb. 23, 2010. Highlighted here is page 7 of this set showing the Applicant’s “Oath or Declaration Filed” identifying filed on Nov. 02, 2006 where Mark Zuckerberg and fellow patentees swear under oath to tell the truth to the U.S. Patent Office. These documents are publicly accessible from http://portal.uspto.gov/external/portal/pair.
“I hereby declare that all statements made herein of my own knowledge are true . . . and that willful false satement and the like so made are punishable by fine and imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that such willful false statement may jeapordize the validity of the application or any patent issued thereon.”
Oath and Declaration to the US Patent Office
Sep. 28, 2006
10. Court records prove Facebook concealed its beliefs from the USPTO from Feb. 19, 2010
If all the evidence above were not enough. The trial court record in Leader v. Facebook reveals yet another smoking gun. The judge’s Jun. 24, 2004 Order said on page 2 (PDF below, p. 3):
“Facebook contends that it learned during the February 19, 2010 deposition of Jeffrey Lamb, one of the inventors of the ’761 patent, that the priority date of the ’761 patent is actually December 10, 2003, not December 10, 2002″ (emphasis added).
11. Here’s Judge Leonard Stark’s Order allowing Facebook to amend its complaint to add on sale bar
Fig. 8 – Judge Leonard P. Stark’s Order on Jun. 24, 2010 granting Facebook’s motion to amend their counterclaim to include an on sale bar accusation in Leader Technologies, Inc. v. Facebook, Inc., 08-cv-862-JJF-LPS (D.Del. 2008). Page 2 (PDF, p.3) discloses that Facebook believed that Leader’s U.S. Patent No. 7,139,761 was innovative enough to have breached on sale bar at least by Feb. 19, 2010—five days before the award of Facebook’s first U.S. Patent No. 7,660,123 on Feb. 23, 2010. Facebook did not disclose this belief to the U.S. Patent Office in this or any other of its patent filings that have been evaluated by this blog to date.
Facebook’s argument about Leader’s priority date is prima facie evidence that they believed that the Leader invention was novel at least by Feb. 19, 2010. Click here to read USPTO documents about on sale bar. However, Facebook did not disclose this belief to the Patent Office in its patent application that was granted as U.S. Patent No. 7,669,123 Zuckerberg et al five days later on Feb. 23, 2010!!! He He He He! Attorneys couldn’t keep their stories straight?
QUADRUPLE GOTCHA !!!!
12. Hey Facebook, Feb. 19, 2010 is BEFORE Feb. 23, 2010
Does not Facebook’s own Leader v. Facebook testimony prove that they wilfully withheld material information about Leader’s U.S. Patent No. 7,139,761 McKibben et al from the Patent Office, thus inducing the Patent Office to grant Facebook’s patent(s) inequitably?
Facebook’s Cooley Godward attorney Michael Rhodes accused Leader inventor Michael McKibben of “threading the needle” regarding his testimony about when Leader’s invention was ready for patenting. Now who is threading the needle Mr. Rhodes? Do all of your 700+ patents and patent applications have these potentially fatal problems? Oh, but I suppose you don’t considered these risks material do you? We’re just muppets. HaHaHa.
* * *
Dr. Saul Greenberg, University of Calgary; Expert witness for Facebook in Leader v. Facebook.
^Back  MORE PATENT LAW FOR MUPPETS (See, it’s not that hard! I figured it out!) See “Expert witness practiced ‘dark arts’” for an analysis of another segment of the Leader v. Facebook trial where Facebook attorneys further confused the jury with Dr. Saul Greenberg’s bad science testimony. Such testimony is supposed to be discarded under the theory that a lay jury (the “trier of fact”) must be able to rely upon the truthfulness of the facts presented by experts.
Mathematically speaking, Dr. Greenberg violated the principle of bivalence—stating two contradictory truth values when only one can be true. He first said in early hand waiving that he couldn’t decipher the source code in Leader’s provisional patent, then later waxed eloquent about certain elements. See Fig. 9. An expert is not permitted to first say a box is empty, and then proceed to describe its contents. That is like saying the lake is empty, but my swim in it was refreshing. A reasonable person knows that one cannot swim in an empty lake. Dr. Greenberg did just that. Here’s a link to the actual trial transcript. (Note that Dr. Greenberg used “wild guess,” “guess” and “guessing” six times! “The lady doth protest too much, methinks?” — Hamlet, Act III, scene II; start at about Trial Tr. 10903:10.) See Fig. 9.
Fig. 9 – Trial Transcript, Fri. Jul. 23, 2010; Leader Technologies, Inc. v. Facebook, Inc., 08-cv-862-JJF-LPS (D.Del. 2008). This post focuses on the expert testimony of Dr. Saul Greenberg regarding Leader’s provisional patent and his “wild guess[ing]” (PDF p. 166, Tr. 10903:10) that suddenly morphed into detailed technical analysis “using my knowledge of programming” (PDF p. 167, Tr. 10904:17-18) to support elements of the source code that Dr. Greenberg believed supported Facebook’s assertions. This change violated the scientific principle of bivalence—that a box cannot be declared empty, then the contents of that box then described in detail. Also during this testimony he makes the incredible statement that Leader’s source code contained a FACEBOOK utility program “asp.facebook.util” (PDF p. 167, Tr. 10903:9). This inclusion would have been a miracle since Mark Zuckerberg was only a 17-year old high schooler at the time. The job of the court is to protect juries from expert testimony that uses bad science. See this blog for more analysis of Dr. Greenberg’s testimony.
At one point in Dr. Greenberg’s testimony he even said that a Facebook utility (“asp.facebook.util“) is contained in Leader provisional patent. WHAT???!!! THIS IS IMPOSSIBLE since the provisional was filed on Dec. 11, 2002 and the first code for Facebook was written in Jan. 2004 (if you can believe Mark Zuckerberg). See Trial Tr. 10903:9.
This testimony was used by Facebook to convince the jury that Leader should not be given the benefit of its earlier provisional patent filing date of Dec. 11, 2002. This opened the door for Facebook’s “on sale bar” attack. Tellingly, Facebook DID NOT DEPOSE A SINGLE RECIPIENT OF THESE ALLEGED OFFERS which they had vociferously argued and the judge described in Fig. 8 above as the justification for adding the “on sale bar.” Remarkably, not even Dr. Greenberg offered testimony about on sale bar—which in every other court would’ve been a hard evidence requirement to prove the technical contents of the alleged offers. “In confusion there is profit?” Hmmmm.
My GOTCHA meter is overloading!
A well-known lawyer “dark arts” tactic in patent infringement trials is for the infringer to find an expert witness willing to mislead the jury. Since a lay jury cannot assess the reliability of the science presented, it is the duty of the trial court judge to disqualify unreliable expert testimony. This new judge did not do that (it was his first federal trial). Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 US 579 (Supreme Court 1993) at 595-597 (the trial judge must ensure the reliability of scientific testimony).
- Mr. Cricket Graphic. Beatrice the Biologist. Oct. 21, 2010. Accessed Mar. 30, 2012.
- Pinocchio Graphic. Ownership unknown. Eringer33. Accessed Mar. 30, 2012.
- Photos of Leader v Facebook expert witnesses were obtained from their public websites.
- Christopher P. King biography obtained from the Fenwick & West LLP website. Accessed Mar. 23, 2012.
- Scribd documents are all marked as public domain. Scribd. Accessed Mar. 31, 2012.
- Beaker is a Muppet character that is believed to be owned The Walt Disney Company. Accessed Mar. 30, 2012.
- Dominos Photo. Commonlawblog.com. Accessed Mar. 31, 2012.
- Post-trial pleadings in Leader Technologies, Inc. v. Facebook, Inc., 08-cv-862-JJF-LPS (D.Del. 2008). Summary of Post-Trial Motions. Accessed Mar. 31, 2012.
- Federal Circuit Appeal Briefs by Leader (White Brief, Gray Brief) and Facebook (Red Brief) in Leader Tech v. Facebook, Case No. 2011-1366 (Fed. Cir.). Accessed Mar. 31, 2012.
- Legal Analysis of Leader v. Facebook. Origin of Facebook’s Technology? Accessed Mar. 31, 2012.