[Discuss] OSHW questions

malcolm stanley a.malcolm.stanley at gmail.com
Thu Nov 22 03:59:31 UTC 2012


I am aware of one recent case where engineers for a company are alleged to
have googled, selected, read, and discussed in email patents related to a
product which the company they worked for had signed a non-disclosure
agreement regarding and had an in depth review of provided by the vendor.

Later, when the company in question implemented a product which may or may
not have been similiar (I use the word very loosely here), they were sued
for infringement.

Not only were the email discussions included in discovery, but the web
searches were as well, as the company has a surveillance system in place to
monitor employee internet / web usage.

After a lengthy trial, a jury agreed with the plaintiff and awarded triple
damages. The award was a lot of money.

Shortly thereafter, every employee in the company was required to undertake
training which boiled down to "don't read patents". Discussions of
intellectual property with either vendors or peers on an internal basis
were banned without presence of counsel.

Ironically, this same company has an active employee patent filing program
in place, which continues to this day.

I think that the primary motivation for banning research and discussions
boils down to a few related ideas:

a) a little knowledge is a dangerous thing. Engineers are seldom lawyers
and what they think a patent means is rarely what a lawyer would think a
patent would mean, especially wrt enforceability;

b) Discovery in the hands of the technically savvy can be a pretty
comprehensive process; in the context of an aggressive line of questioning
the most innocent of queries or explanations can seem sinister in motive;

c) There are very few new ideas, and when they occur it usually happens in
several places at the same time. Why this occurs is an enduring
philosophical mystery of the zeitgeist. Practically, it means that your
idea may or may not be similiar to someone else's, and in the throes of
litigation you do not want the taint of proven exposure to someone else's
...uh... output, to weaken your claim of original sin. see B above.

so yes, it happens. lawyers have practical reasons for requesting it. the
effectiveness of the admonition is for the courts to decide...


_________________________________________
malcolm stanley

google.voice:  215.821.6252
Cell: 267.251.9479   <------------- new
email: a.malcolm.stanley at gmail.com
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Read my blog at http://soaringhorse.blogspot.com
_________________________________________



On Wed, Nov 21, 2012 at 3:27 PM, Chris Church <thisdroneeatspeople at gmail.com
> wrote:

> > I am a lawyer but I'm not a patent lawyer. I'm completely confused
> though by the notion of advising my clients not to research something. From
> a corporate / business standpoint, this could be the worst advice I ever
> gave a client.
> >
> > I can vaguely see an argument that (1) finding a similar patent will
> prejudice you and make you less likely to pursue your idea because someone
> else has already done something similar, and (2) once the other work is
> done, the patent attorneys doing the prior art search will find the
> relevant patents anyway.
>
> As it had been explained to me in the past (by IP lawyers giving me
> council), "A lack of awareness of any existing patent on the subject can be
> used in a defense against claims of willful infringement."
>
> That is, they would always argue that it couldn't be willful if I wasn't
> aware of the patent - i.e., being aware of the patent would have required
> to have first established some legal basis for belief that I could create
> an (later to be alleged) "infringing product," within intellectual property
> laws.  Being ignorant of any such patent, there was no need to create such
> a defense.  I was advised at more than one company that if I chose to go
> about researching patents, not to record which patents I researched unless
> they would be part of prior art in something we were filing.
>
> I am not a lawyer, will not ever be, and at no point in time was this
> theory ever put to test involving me.  I also have no opinion either way as
> to the quality of such advice. =)
>
> Chris
>
> On Nov 21, 2012, at 1:23 PM, David Boyhan wrote:
>
> > I am a lawyer but I'm not a patent lawyer. I'm completely confused
> though by the notion of advising my clients not to research something. From
> a corporate / business standpoint, this could be the worst advice I ever
> gave a client.
> >
> > I can vaguely see an argument that (1) finding a similar patent will
> prejudice you and make you less likely to pursue your idea because someone
> else has already done something similar, and (2) once the other work is
> done, the patent attorneys doing the prior art search will find the
> relevant patents anyway.
> >
> > It's just that the advice sounds a little like the client who once told
> me, years ago, only half-jokingly "we really want to buy this company, so
> don't do too much due diligence."
> >
> > I'm just imagining the deposition:
> >
> > "Did you think there might already be a patent on your idea?"
> > "Possibly"
> > "Did you look for one before you began to infringe my client's patent?"
> > "No"
> > "Why not?
> > "My lawyer told me not to."
> >
> >
> >
> >
> >
> > j. eric townsend wrote:
> >> As so many of us have learned to say, "I am not a lawyer and this is
> not legal advice."   Also, I'm in the US if that matters much...
> >>
> >> On 11/21/2012 4:52 AM, Andrew Katz wrote:
> >>
> >>> If you contribute to a project under an agreement which requires
> >>> you to warrant that you have no knowledge of any potentially
> conflicting patents,
> >>> having done a search could be a bad thing [...]
> >>
> >> I worked in consumer electronics from almost 20 years and never
> personally received "don't research patents" from a legal team.  I have
> heard "don't copy patents" (obviously :-) and "try not to look at current
> patents while you do research".  I always gathered that was about
> accidentally copying, not getting into a legal bind.  Working with national
> and international technology standards requires a lot of reading of other
> people's research and development documents.  (ex: how cable TV works, how
> transmitted television works, how analog modems work, etc.)
> >>
> >> That being said, in the past five years or so, I have heard quite a few
> engineer and startup types say they have received "never look at any
> patents" advice from their legal counsel, it's mostly been people involved
> with selling 3d printers and related technology.  I suspect there is a
> virtual landmine of patents around 3d printing and related technology, but
> I haven't looked yet. :-)
> >>
> >> --jet
> >>
> >>
> >
> > _______________________________________________
> > discuss mailing list
> > discuss at lists.oshwa.org
> > http://lists.oshwa.org/listinfo/discuss
>
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