Help Reform Section 101 of the US Patent Act
Our names are Randy dela Fuente and Chris Scoones. We are the owners of Snapizzi and US Patent 8,794,506 System for Automatic Image Association which is used by the high-volume photography industry to automate their workflow.
An industry built upon the protection of Intellectual Property.
On December 4, 2019, after being embroiled in patent-infringement litigation for over a year, the judge granted a Rule 12(b)(6) motion to dismiss our case based on Section 101 of US Patent Law – i.e., whether the patent is directed to patent-ineligible subject matter, such as a law of nature or abstract idea. The motion was granted based on a controversial, precedent-setting 2014 Supreme Court decision known as Alice.
This allowed the other party to challenge the validity of our patent without having to address the merits of the claims against them. Remember, our patent was acquired under the presumption of validity offered by the United States Patent and Trademark Office.
Although the Alice decision did not mention software as such, the case was widely considered as a decision on software patents. While the Supreme Court’s intention wasn't to make the decision about software, Alice has resulted in hundreds of software patents being invalidated. Erasing their value overnight. Companies and individuals have been decimated by Alice. We've now joined them.
Throughout the litigation, the other party did some very questionable things that never got to be addressed by the court. Most of which are outlined in our various motions, memorandums, and briefs contained in the public documents below. None of which factors into the motion to dismiss ruling. Nor is any evidence—or lack thereof—considered. They claimed to have prior art six years before the 2009 filing of our patent application. They also claimed if they were to license, they’d only owe us ~$5,000. These facts are in the public court documents listed below.
The question is…Why choose to litigate when you claim to have six years prior art? Or if the license fees would’ve been orders of magnitude less than what they were prepared to spend in litigation?
The answer is that they knew they had a chance to invalidate our patent based on Section 101 rather than pay for the use of our intellectual property. And it worked.
This is a danger for all inventors and patent owners. We urge you to download the case documents and draw your own conclusions about what was really going on.
The recent precedential opinion in Cellspin Soft, Inc. v. Fitbit, Inc., et al., gives us confidence that change is coming. While patents are to be presumed valid, the Federal Circuit had never conclusively stated that the same presumption applies to a patent when it is challenged on Section 101 grounds. With this decision, it is no longer a debate: Patents are presumed to be eligible under Section 101.
We're preparing to appeal the decision to the US Court of Appeals for the Federal Circuit.
It’s the proverbial David vs. Goliath.
We're asking supporters to contribute to our collective cause as we face another 6-12 months of appealing this decision. Legal fees thus far have been almost $400k so we appreciate even the smallest donations. We face an uphill battle unless we make changes to the current law. Even if change isn’t in time to help us, it will spare future patent owners from a similar injustice. As will the creation of a fund to help them wage this battle.
Sincerely,
Randy and Chris
The Story Behind Snapizzi
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How Google and Big Tech Killed the US Patent System
Testimony of Judge Paul R. Michel (Ret.) United States Court of Appeals for the Federal Circuit
Before the Subcommittee on Intellectual Property U.S. Senate Committee on the Judiciary
History of Alice by Gene Quinn:
SCOTUS Rules Alice Software Claims Patent Ineligible
In addition to supporting our fight, please consider supporting the passage of:
H.R. 5478 - Inventors Rights Act
A great documentary by Josh Malone on what's wrong with the US Patent System:
Invalidated: The Shredding of the US Patent System
An in-depth analysis by Dan Buri:
Patents Have Entered the Upside Down: Looking Back on the 2019 U.S. Patent Market
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Milestone Case Documents
[click to view individual documents]
01. ImageQuix vs. Snapizzi_ Declaratory Judgement Complaint
02. Answer and Counterclaim 6_18-cv-03119-TMC
03. Exhibit E - Claim Chart 6_18-cv-03119-TMC
04. Defendants’ Motion to Compel [MUST READ]
05. Memorandum in Support of Defendants’ Motion to Compel [MUST READ]
06. Response to Defendants’ Motion to Compel
07. Reply in Support of Motion to Compel
08. Motion to Extend Discovery and Other Deadlines
09. Memorandum in Support of Motion to Extend
10. Defendant's Expert Report Patent [MUST READ]
11. Defendants’ Reply in Support of Motion to Extend
12. Declaration of John D. Wooten IV [MUST READ]
13. 12(b)(6) Ruling
[Download Zip File of all 13 documents]
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OUR PLEDGE
With the support of the Intellectual Property Community, friends, family, and others affected by Alice, we can level the playing field and effect policy change. When we win our fight, we pledge to create a fund equal to the entire amount we’re able to raise through this campaign.
Furthermore, we’ll donate a minimum of 10.1% of any future settlements and licensing fees we receive from the '506 Patent to the fund.
The fund will be used to help others in a similar position as we find ourselves.
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