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April 2, 2009

Junk Fax

A decent patent turns junky when its holder sues without due diligence. Joseph Kirsch had sent letters to Canon and Xerox about his computer fax patent, 4,816,911, in 1995. Canon didn't bother to respond, but Xerox told Kirsch no license was needed. In 2000, Kirsch sued Xerox, Canon, Ricoh and Toshiba.

In 2005, all four defendants moved for summary judgment of noninfringement. Michigan district court Judge Denise Page Hood dismissed the case against Ricoh and Toshiba. Xerox and Canon had to slog on, facing a charge of willfulness over prior knowledge of the patent.

Kirsch had argued for damages on convoyed sales: ink and toner cartridges for the supposedly infringing copier/fax. The judge waved that off, as the two products were independent of each other.

The folly of it all was pointed out by a circularity. Kirsch had asserted against Xerox's Telecopier 295, which had an option to communicate with computers. Xerox argued that patent invalid, since the 295 was being sold in 1983, two years before Kirsch filed for his patent. Kirsch then argued that Xerox had failed to submit clear and convincing evidence that the 295 met '911 claim language. The judge snapped: "Plaintiffs cannot argue on the one hand that the Xerox Telecopier 295 infringes on its patent, and on the other hand now argue that the Telecopier 295, with the [computer] option, is not the same as plaintiffs' '911 patent, in order to overcome Xerox's invalidity defense."

The willfulness charge went by the way boards, as both defendants claimed they investigated possible infringement, concluding it wasn't so. Canon didn't even produce a witness to vouch for any such investigation, citing attorney-client privilege and work place doctrine.

Xerox is entirely off the hook now. Kirsch's case against Canon has been whittled to a few claims, without facing willfulness or convoyed sales as part of royalty base.

Posted by Patent Hawk at April 2, 2009 6:18 PM | Litigation


And who argued this case for Kirsch? That would be interesting information to know. Its not clear whether making such an argument is out of desperation, audacity, sheer ignorance or a combination of all three. Such an argument is begging for sanctions IMO.

Posted by: Just sayin' at April 3, 2009 9:24 PM

"And who argued this case for Kirsch?"

My initial thought. I had come to the conclusion it must have been a pro se case since no attorney could possibly be this ridiculous in court. Attorneys should face disbarment for such an act.

Posted by: 6000 at April 4, 2009 9:02 PM