Ocean Tomo versus PatentRatings

Ocean Tomo, LLC v. Jonathan Barney and PatentRatings LLC, Docket No. 12-cv-8450 (N.D. Ill. 2013)

Jonathan Barney is the founder of PatentRatings, the company that holds the patent on rating patents based upon a variety of objective criteria. See U.S. patent No. 6,556,992, 7,657,476, 7,716,226, 7,949,581, 7,962,511, 8,131,701, 8,504,560. In 2005, Barney joined Ocean Tomo and the company licensed use of his patent ratings information. According to the court documents, that agreement ended on a bad note in 2011:

After Barney began to work at Ocean Tomo, he quickly soured on the company as he discovered that "the environment at Ocean Tomo was rife with conflict, back-biting, and shady business and accounting practices." According to Barney, Ocean Tomo attempted to freeze him out, deprive him of the benefits he had been promised, and destroy him and PatentRatings financially so Ocean Tomo could appropriate the PatentRatings system and the associated intellectual property. Barney alleges that by February of 2011, the working environment at Ocean Tomo was so intolerable that he had no choice but to resign. He also alleges that Ocean Tomo used his resignation as an excuse to redeem a portion of his equity units without paying consideration and to reduce his share of profits and equity based on groundless claims of misconduct. . . . Barney also contends that Ocean Tomo wrongfully disclosed PatentRatings' confidential information to third-party software developers so they could reverse engineer the PatentRatings system and develop knock-off products based on PatentRatings' intellectual property. In addition, Barney asserts that Ocean Tomo wrongfully accessed PatentRatings' computer servers in Irvine, California, copied confidential data on the servers, and transferred that data to its own servers so it could attempt to reverse-engineer PatentRatings' product.

Prior to this lawsuit, the parties had actually arbitrated some of their disputes and a three-member panel found largely for Barney in rejecting Ocean Tomo's request for $2.5 million in damages. However, Ocean Tomo then sued in Illinois state court Barney for violation of his employment agreement, violation of the Illinois Trade Secret Act, violation of the Computer Fraud and Abuse Act (CFAA), and conversion. Barney removed the case to Federal Court countersued as noted above.

Although the case is still ongoing, the district court has dismissed several of Barney's claims for failure to state a claim upon which relief can be granted. These include Barney's claims of violation of an implied covenant of good faith and fair dealing; fraud; and the CFAA violation allegation. In particular, under Illionois law there is no independent cause of action for violation of the implied covenant of good faith and fair dealing, but rather that covenant is a part of each contract and thus must instead be alleged as part of a breach of contract claim. Barney's claim that Ocean Tomo committed fraud stemmed from his joining with the firm in 2005 and was thus barred by the Illinois five-year statute of limitations. Finally, the CFAA claim alleges that in September 2012 (long after the break-up) Ocean Tomo accessed PatentRatings' servers without authorization, copied confidential data and thereby caused at least $5,000 in damages. For a CFAA civil action, the damage threshold is a required element of a claim. However, in oral arguments PatentRatings admitted it was in the process of evaluating the damage an/or loss. The court therefore also dismissed the CFAA claim based upon PatentRatings' "tacit concession that its CFAA claim is deficient."

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Based upon an ongoing license, In Ocean Tomo continues to use the PatentRatings algorithms to report on patent quality through its Ocean Tomo Ratings.

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District Court Decision: Download Gov.uscourts.ilnd.275661.52.0

26 thoughts on “Ocean Tomo versus PatentRatings

  1. Speaking of valuable databases of digital information that aren’t protectable by patents:http://www.ischool.berkeley.ed…Although case law is technically public domain, the legal decisions that interpret and apply statutory law are often scattered across the Internet, locked up in proprietary systems, and only available by paying exorbitant fees. A new non-profit launching this week aims to make these legal materials easily and freely available to all. … Unlike most other legal research services, the Free Law Project is committed to the open-source software movement. Not only can users download CourtListener’s entire collection of legal documents, they can also download all the software that runs the site, and can freely edit or re-use that software. …By making its materials and tools open source, the Free Law Project hopes to support a wide range of software developers, enable innovative legal research technologies, and inspire new types of academic research.Excellent news.

  2. Barney also contends that Ocean Tomo wrongfully disclosed PatentRatings’ confidential information to third-party software developers so they could reverse engineer the PatentRatings system and develop knock-off products based on PatentRatings’ intellectual property.Reverse engineer? You mean PatentRatings didn’t invent the method of using a POWERFUL COMPUTER BRAIN to store information about “things” so they can be sorted accorded to predetermined criteria? Wherein those “things” are pieces of paper representing abstractions referred to as “patent rights”? What is there to “reverse engineer” if the system is patented?Perhaps the patented methods as they are disclosed don’t actually “rate” anything at all because all the “value” is in the unpatentable information. That sounds like a familiar, um, “paradigm.”

    1. MM how do you square your derision with the fact that people may use the program rather than hire patent attorneys to evaluate portfolios? So, a machine that is replacing human labor. And, yet MM mocks its very existence. How odd.

      1. a machine that is replacing human labor.The computer was invented a long, long time ago. Last time I checked, most computers are still being programmed by “humans” who “labor” at the task of writing instructions for the computer which determine what unpatentable information content is going to be received, stored, organized and/or transmitted by the computer (of course, the specific results of that labor are never disclosed in a typical computer-implemented patent application).The “existence” of computers is not being “mocked” at all, nor is the ability of computers to speed up information processing tasks that would take far longer without them. If anything, what is being “mocked” is the idea that claims should be granted on old computers with “new functionality” merely because the “new functionality” was not previously described in the prior art in the exact manner recited in the claim. There’s nothing “odd” about mocking that. People have been doing so for quite a while now, with mostly favorable results.

        1. What inventions do you think do merit patents? (And, of course, you are so ignorant of information processing that you should be ashamed to even write the word computer. But we know that you and J. Lourie rely on the science fiction essay test and feel that if something can be imaged being done by computer then it is obvious. Funny that it took 20 years to get a computer to walk like a human despite the computational power being available. I guess all those Ph.d.’s from MIT, Standford, CMU, Illinois, GeorgiaTech, and Berkeley are just not too smart. I guess they didn’t know if you just imaged it, then it would just appear and be obvious in MM j***off land. )

          1. it took 20 years to get a computer to walk like a human despite the computational power being availableSo “all those Ph.D.s” are entitled to a patent on “A computer, wherein the computer walks like a human” because otherwise nobody will ever want to program a computer to do anything “like a human.”Is that your argument? I’m not sure why you bring this example up. There are many reasons why some computerized action that “could have happened” earlier didn’t happen until later. In almost every case the “delay” has less to do with the availability of “computer processing power” per se and everything to do with the practical availability of cheaper hardware for performing the necessary computations and physical actions. And then of course there’s the issue of intellectual property rights themselves. How many different sub-functionalities releated to “computerized walking” do you suppose there are that could be separately patented? You know, walking “to available real estate”, walking “to said robot car”, walking “across the room to pick up said wrist-wearable computer”, walking “to the recipe book to read instructions to become an entirely new computerized walking device”, etc. The list goes on and on. You think those patents are going to speed up the process of bringing a computerized walking machine to market?Or look at it this way: why can’t I buy the complete catalog of all Beatles releases in digital form, including all the differently mastered versions (e.g., original stereo and mono, where appropriate), including each individual isolated track (vocal, guitar, drums) for each release, plus all the outtakes? The cheap and portable storage space for such a “release” has existed for a long time. The demand is there. Why can’t I buy it? Is it because it’s really hard to transfer digital audio files to a thumb drive? Or is there something else responsible for “the delay”?we know that you and J. Lourie … feel that if something can be imagined being done by computer then it is obviousWell, either programming a particular desired functionality is something that “any skilled programmer” can do merely upon being instructed as to the desired functionality, or the coding that actually works to achieve the functionality is what is “inventive”, in which case the claim should be limited to the code. Which is it? You seem to retreat into one or the other of these conflicting camps depending on which position serves the argument you are making that day. My feeling is that it’s 2013 and it’s time for the softie woftie patent crowd to grow up or find another playground.

            1. softie woftie…grow up… another playground..Oh no! I dared question the continued unmerited coddling of a pampered industry by our patent office. Bill Gates and dead Steve Jobs are going to have a sad.

            2. Dennis is trying to make a tick’s buck off the dog. Patents are the host, MM et al. are the parasites trying to kill the host without comprehending that without it, they die.

            3. What you wrote above is a joke not worth responding to. You demonstrate time and again that you know nothing about information processing. What is funny is that you seem to think all of it is easy or that is what computers are for and yet for anyone with even a rudimentary understanding of information processing knows—it is HARD!!!!!!!!!!!!!!!! Very Hard!!!!!!!!!!!! With decades of little progress at times. So, why don’t you spend some more time mocking the Church-Turing Thesis rather than calling for the Fed. Cir. judges to educate themselves. Isn’t that a clear indication MM that you are a policy tro$$ and not a member of the patent community.Or please tell us some more how software has no structure. And, then go to Google scholar and type in “structure software.”Or tell us how there is no conservation of information in physics. Or tell us how information is done without space, without time, and without energy. Tell us again all these wonderful magically things that go on in your MM land.Answer my question: tell me what inventions are worth a patent. And, compare and contrast them to information processing.So, what we have is a filthy tro$$ that is pushing for results rather than applying the law and pushing for ignorance rather than education. And, you filth bags on this board cannot hide from that truth.And you know you filth bags think it is some kind of joke, but in the end it is our social contract that you are violating. And, yes, Litigator Lemley is front and center.

            4. “but in the end it is our social contract that you are violating”OMG SAY IT AIN”T SO! SAY IT JUST AIN”T SO!

        2. “The computer was invented a long, long time ago. Last time I checked”Last I checked the vacuous and debunked ‘House’ argument should have been put to rest long ago.Last I checked 35 USC 101 still allows for “and any improvements thereof” – so much for the false reliance on ‘old computers’ claptrap.Last I checked Alappat was still good law and that a new machine was made with new configurations when the manufacture of software was added to an old machine. – so much for the so-called favorable results.Last I checked, such banal ad nauseum repetitious soapboxing that Malcolm vomits onto every thread is not (and cannot be) included in any sense of ‘norms of conversation.’Last I checked, Malcolm is still not included in the Patently-O community stats. Of what use is this new software if the same old tired CRP runs rampant?Hmmmmm. perceptions, perceptions perceptions.

          1. Last I checked the vacuous and debunked ‘House’ argument should have been put to rest long ago.Last I checked nobody knows what you’re talking about. Do you have a point to make other than flinging insults and non-sequiturs?

            1. The Vinnie Barbarino vacuous response – an offshoot of the “huh, what?” is the “what are you saying” vacuous response, or in the days of NAL, the “What the Sam Hill” vacuous response.Malcolm, your lack of wanting to engage is transparent.That you then top that off with Accuse-others-of-that-which-you-do false mischaracterization of “flinging insults and non-sequiturs” only highlights your lack of intellectual honesty.

        3. 35 USC 100(b) The term “process” means process, art or method, and includes —-a new use of a known— process, —machine—, manufacture, composition of matter, or material. 35 USC 101Whoever invents or discovers any new and useful —process—, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.Now then, why should new uses of computers be treated differently than, for example, a new use of a lever, a new use of a pulley, or a new use of an internal combustion engine?

          1. Because you never claim them as new uses? I mean you could, and then I could lol when you went to draw the old machines in relation to the new ones, but I doubt you’d like to do that.

  3. Wow, all those patents and the key intellectual property all turns out to be trade secrets. I wonder why he didn’t just include enough information to calculate actual ratings in the patent filings; then this would all be moot.

    1. The trade secret information is the database of user data used to make the predictions. There’s no telling how many categorized data points that includes after several years in operation.

  4. “”the environment at Ocean Tomo was rife with conflict, back-biting, and shady business and accounting practices.”"Who’d have ever guessed? This story promises to entertain.

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