John Desmarais is famous in patent law circles for obtaining a $1.5 billion verdict against Microsoft (NSDQ: MSFT) in 2007 and, more recently, for being a subject in an NPR documentary about the harm caused by so-called patent trolls. Now he has set his sights on Facebook and Twitter.
In a suit filed last week in Brooklyn federal court, a New York shell company called Easyweb Innovations accuses Facebook of infringing a series of patents related to methods of publishing voice and fax messages on the internet. The suit, which is nearly identical to one filed against Twitter last month, does not specify which Facebook features are infringing.
The case stands out from the ongoing flood of patent lawsuits targeting the tech industry because of who is leading it. Attorney John Demarais left a large firm in New York in 2010 to start his own venture after purchasing 4,500 patents from a semi-conductor maker. He has since filed lawsuits against Google-allied phone maker HTC and has also been retained as counsel by patent-holding behemoth Intellectual Ventures.
The new Facebook and Twitter suits are based on five patents that describe seemingly commonplace technologies that allow users to post messages on the internet and make them available to search engines. The patents are all derived from an earlier application filed in 1999. The patents describing the “invention” include several flow chart diagrams to show how a message can be saved or transferred, and include summaries like:
This invention relates to the electronic publication of a message, specifically to a system and method that easily enables a message to be reviewed by a mass audience.
The shell company that owns the patents was created in May of this year and is legally represented by one John D. Codignotto of Wantagh, Long Island, who is also listed as an inventor on the patents. The beneficial owners of the shell company could not immediately be determined and an attorney at Desmarais’s law firm said he could not comment on the matter.
The new case coincides with the ongoing phenomenon of “patent trolls” which are companies that do not invent anything but instead purchase patents and use them to sue big companies with deep pockets. Companies will frequently settle rather than put the issue before jurors who may understand little about technology and who have issued verdicts in the tens or hundreds of millions of dollars. One famous example of a so-called troll is NPE, a shell company controlled by a single lawyer who extracted $612 million from BlackBerry in 2006.
The issue of trolls came to public attention this year as a result of a highly acclaimed NPR documentary called “When Patents Attack.” The show briefly featured an account of Desmarais’s role as counsel for another shell company:
We called Oasis several times, but no one ever answered the phone. For a while, the company’s voice mail message directed all questions to John Desmarais , a lawyer in New York. He didn’t return our phone calls, but we did track him down at an intellectual property conference in San Francisco. He cited attorney-client privilege, and wouldn’t tell us anything – not even who owns Oasis Research. (He did say he’s a big fan of NPR.)
Given Desmarais’s track record, Facebook is likely in for quite a fight. The company did not immediately return a request for comment.