‘Firm Ducks Britannica”s Legal Malpractice Suit’

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‘     WASHINGTON (CN) – A federal judge Wednesday threw out a legal malpractice claim by Encyclopaedia Britannica against law firm Dickstein Shapiro, bringing to a close a five-year fight over patents the firm filed for the publisher in 1993.
     Britannica sued Dickstein Shapiro in 2010 after it lost a patent infringement case due to previously unnoticed errors in the patent applications filed by the firm”s lawyers.
     The publisher claimed the loss of the two patents meant it lost the rights to “groundbreaking” encyclopedia software that allowed users to sift through information by a variety of subtopics, lists and maps, according to the opinion by U.S. District Judge Royce C. Lamberth.
     But Britannica”s claims were “too broad and abstract” to be eligible for patents under new interpretations of patent law and don”t actually represent a “break-through” that would have been “unimaginable” previously as the company claimed, Lamberth wrote.
     Because of this, the company would have lost its patent infringement case even without Dickstein Shapiro”s alleged mistakes, Lamberth determined before dismissing the malpractice claim against the law firm.
     The system Britannica tried to patent – a method of displaying information in searchable lists and maps – was not a new idea, but rather a slight variation on something humans have been doing since the advent of writing, Lamberth ruled.
     “Indeed, encyclopedias – described as a type of ”database” in the specification – have existed for thousands of years,” Lamberth wrote. “For just as long, humans have organized information so that it could be searched for and retrieved by users: For example, encyclopedias typically are organized in alphabetical order and are searchable using indexes, and articles generally contain cross-references to other articles on similar topics. These activities long predate the advent of computers. Such fundamental human activities are ”abstract ideas” beyond the scope of [patent law].”
     Just because the search function Britannica developed took advantage of the fact that computers can search terms in an encyclopedia faster than a person could scan its pages and highlight each time a word appears, does not make it an “inventive concept,” as required for an idea to be patented, Lamberth ruled.
     “Not only have humans long used these methods of categorizing and searching information, but the patent itself suggests that textual browsing and searching were conventional methods of searching databases used in prior art,” Lamberth wrote.
     Britannica claimed the search function was an improvement on a computer”s functions, which would have made it a patentable idea under patent laws, according to the opinion.
     But Lamberth said the search functions were just an application the computer can run and don”t fundamentally change anything about the machine, and cited precedent from the Federal Circuit rejecting similar attempts to patent these types of software.
     Because of these developments in patent law, Dickstein Shapiro can”t be blamed for Britannica”s loss in court and therefore going forward with a legal malpractice suit was unnecessary, Lamberth ruled.
     A Britannica representative did not respond to a request for comment on the ruling.
     Dickstein Shapiro did not immediately comment after a Courthouse News request.’