By Lisa Shuchman, From Corporate Counsel

The Electronic Frontier Foundation, which created its “Stupid Patent of the Month” campaign to highlight flaws in the U.S. patent system, has been sued by a patent attorney and inventor who alleges he was defamed when the organization named one of his patents April’s “Stupid Patent of the Month.”

Scott Horstemeyer, a founding partner of the law firm Thomas Horstemeyer in Atlanta and the inventor behind a litigious nonpracticing entity called Eclipse IP, alleged in a complaint filed May 26 in Superior Court in Atlanta that EFF’s blog post was filled with defamatory statements that damaged him personally and professionally.

The April 30 post, which ran under a headline “Eclipse IP Casts a Shadow Over Innovation” and was written by staff attorney Daniel Nazer, focused on the ‘334 patent issued to Horstemeyer by the U.S. Patent and Trademark Office on April 21, claiming a method of updating delivery information. The “stupid patent” designation, the post said, goes to the ‘334 patent because the PTO issued it after a federal judge in the Central District of California invalidated claims from three Eclipse patents in the same family, saying they claim abstract ideas and therefore were invalid.

EFF noted in the post that Horstemeyer failed to disclose the California judge’s decision to the patent examiner during prosecution of the ‘334 patent, despite the fact that patent applicants and their attorneys have an ethical obligation to disclose any information material to patentability.

“While Horstemeyer has not made any genuine contribution to notification ‘technology,’ he has shown advanced skill at gaming the patent system,” Nazer wrote, adding that “it appears Horstemeyer hoped the [Patent] Office would not notice this decision and would simply rubber-stamp his application. Sadly, that is exactly what happened.”

Before filing the complaint, Horstemeyer’s attorney, Sanford Asman, sent a letter to EFF outlining the portions of the post his client believed contained “false, defamatory and malicious statements,” and demanded that the organization remove the post and publish an editorial repudiating it.

EFF declined, saying it stands by the opinions expressed in the post. In his response, attorney Eric Schroeder, a partner at Bryan Cave representing the nonprofit organization, wrote that nothing in the blog post could be construed as defamatory.

“The article is opinion that is absolutely protected by the First Amendment to the United States Constitution and state law, including that of Georgia and California,” he wrote. “As your letter does not identify any specific statement of fact that is provably false, it instead appears that your client takes issue with EFF expressing its belief that: Mr. Horstemeyer sought and was granted a ‘stupid’ patent …; that he appeared to ‘gam[e] the patent system’ in doing so; and he may have acted unethically. While you may disagree with this opinion, it is not actionable.”

Schroeder provided detailed legal arguments countering Horstemeyer’s claims and warned that a lawsuit would be “a serious mistake.” He said EFF will seek attorney fees if a lawsuit proceeds. He also said a lawsuit is likely to bring further negative publicity to Horstemeyer for his failure to disclose the California court decision to the PTO and for his apparent belief that he is not required to disclose adverse court decisions regarding patentability.

Horstemeyer could not immediately be reached for comment.

“We are very disappointed that an attorney would attempt to silence criticism with misguided and counterproductive litigation and will defend against this lawsuit vigorously,” EFF wrote in a statement on its website.

Photo by Laura Lewis, via Flickr

For more on this story go to: http://www.corpcounsel.com/id=1202728266210/Lawyer-Sues-EFF-for-Calling-His-Patent-Stupid#ixzz3c6LFQI00