From msuinfo!agate!ihnp4.ucsd.edu!swrinde!elroy.jpl.nasa.gov!decwrl!netcomsv!netcom.com!richardr Sat Mar 19 21:25:49 1994 Newsgroups: sci.crypt Path: msuinfo!agate!ihnp4.ucsd.edu!swrinde!elroy.jpl.nasa.gov!decwrl!netcomsv!netcom.com!richardr From: richardr@netcom.com (Richard L. Robertson) Subject: Re: YASR (Yet Another Secure RNG) Message-ID: Organization: NETCOM On-line Communication Services (408 241-9760 guest) References: <9403151701.AA20291@redwood.csl.sri.com> Date: Wed, 16 Mar 1994 02:40:04 GMT Lines: 241 Like Mr. John K. Taber, I propose to discuss Colin James III's patent 5,251,165, summarizing my communications with Mr. James and including a brief listing of case law citations from the U.S. Codes Annotated that speak to Mr. James' ex parte threats of legal action. This is primarily from a layman's view of the law and should not be construed as legal advice. This will probably be boring to most net readers, but I feel that the threats to free discussion posed by the actions of Mr. James compel everyone to speak up. ----------------------- I have been reading the message traffic on sci.crypt for some time (occasionally contributing when I had something to say). I read the message thread(s) on use of RNG's with mild interest but never bothered to join in because of the IMO relatively simple level of crypto technology proposed, much of which has been touched on in the published literature and found wanting for serious purposes. On the whole, this has been a very informative and useful group to follow and many useful ideas are discussed at all levels of sophistication. I read as much of the published cryptography literature as I can understand, and I also read many patents in the area of cryptography, including software patents, in order to stay as informed and educated as possible. I was very surprised by the flurry of retractions that sprung up in the discussion of RNG's that were apparently the result of ex parte threatening communications from a Mr. Colin James III. What caught my attention the most was the tone of the retractions, almost as though the parties had just been flamed with the legal equivalent of a blow torch. I contacted Colin James via E-mail, and he graciously supplied me with a copy of his patent # 5,251,165. I was extremely curious to see what he had done and especially curious to see if it was a broad breakthrough in the area of RNG-based cryptography. I found it to be unusually obscurely written for a computer software/ hardware patent and unusually lacking in background mathematical support for its claims of "greater randomness" than other published technology, but it was comprehendible with careful reading. Mr. John K. Taber (jktaber@netcom.com) posted a very clear (IMO) analysis of the patent and technical issues that relate to the patent's scope and coverage on Tue, 15 Mar 1994. I sent an E-mail raising questions of prior art, his claims of "greater randomness", what qualified cryptographers who had analyzed his invention had to say, and what business justifications he could raise to support a proposed licensing fee of $30K plus 2% of *retail* sales. His response was short, essentially unresponsive and suspicious almost to the point of paranoia. It included accusations that I had sent copies of his E-mail messages to me to other parties who had reposted them to sci.crypt. (His accusations are untrue) He never attempted to provide me with substantiation for his wild accusations. Even though he claims the right to republish E-mail sent to him, his claim is that "I was not afforded the courtesy of being asked if private mail could be so divulged". He is very inconsistent in his actions and requests. My reply to his response was to call him on his evasiveness. I also suggested that he was out of line in his threatening manner of telling people that they *might* be infringing. By this time I had already discovered a cryptanalytic attack on his invention that reduced the problem to cryptanalyzing his primary (or phase 1) RNG. The attack's running time is polynomial in the size of the intermediate circular buffer and would probably run with adequate speed on a 486 PC. I informed him that because this essentially showed that his invention provided no significant cryptographic strength over the primary RNG that I no longer had any interest in his invention. His response was to send me a message requesting that I not continue to contact him. I sent him the following letter consisting mostly of case law citations to patent infringement cases that I developed from research at the local law library. The citations are only from the U.S. Codes Annotated, are not exhaustive nor do they include any discussion from relevant law review articles. John K. Taber quotes E-mail Message-Id: <9402201659.AA17492@ nyx.cs.du.edu> from Mr Colin James: "I hope I do not have to defend my patent claims against Mr Bosch, or anyone for that matter. But if I do, the venue is in US Federal Court, it is extremely expensive; and once I start defending it I won't stop until I have recouped the cost of my lawyers, from the alleged infringers, and damages for the time I personally have spent on it. (Federal Court is the forum for all copyright, patent, and trademark issues; civil matters don't go there unless the dollar amount exceeds $ 20,000.00.) This should in no way be construed as a threat, Most of the case law citations speak to the issues raised by this threatening language. Some of the citations support the common sense view that any experimental use of patents and patented technology, such as might occur here on sci.crypt, is *not* actionable infringement, but is rather supported by the law to encourage the development of technology. -------- Copy of mu last letter to Colin James III -------- To: Colin James III Re: Request to cease contact Your request that I cease contacting you will be honored as long as you refrain from threatening people with legal action for discussions of cryptography on sci.crypt and other forums. You probably should consult your patent attorney to have him explain your actual rights under the patent law, what constitutes infringement and what is an appropriate manner to demand that someone who *may* be infringing cease their objectionable (to you) actions. 35 U.S.C.A. $ 271: Infringement of Patents Note 74: Method Patents Patent for method of process claim is not infringed unless *all* of the steps or stages of the process are used. Englehard Industries v. Research Instrumental Corp, C.A.Cal 1963, 324 F.2d 347, certiorari denied 84 S.Ct. 1220, 377 U.S. 923, 12 L.Ed 2d 215 For a method patent to be infringed, it must be infringed in the exact method described by the patent. Plastering Development Center, Inc. v. Perma Glas-Mesh Corp., D.C.Ohio 1973, 371 F.Supp. 939 There are similar citations for process patents. Note 216: Making Patented Invention - Experimental Manufacture Where alleged infringer had built the accused device only experimentally and it had neither manufactured the device for sale nor sold any, the accused device could not be relied upon to establish infringement. Dugan v. Lear Avai, Inc., D.C.N.Y. 1944, 55 F.Supp. 223, affirmed, 156 F.2d 29 Note 224: Use of Patented Inventions - Experimental Use Neither use of patented machine for experiments for the sole purpose of gratifying philosophical taste or curiosity or for instruction and amusement nor construction of infringing device purely for experimental purposes constitute "actionable infringement". Kaz Mfg. Co. v. Cheseborough-Ponds, Inc., D.C.N.Y. 1962, 211 F.Supp 815 Experimental use does not infringe a patent. Chesterfield v. US 1958, 159 F. Supp 371, 141 Ct.Cl. 838 35 U.S.C.A. $ 102 Patentability of inventions Note 1: Construction Patent claims must be constructed narrowly so as to avoid prior art if such construction can be reasonably adopted. Beckman Instruments, Inc. v. Chemtronics, Inc., C.A.Tex 1970, 428 F.2d 555 Note 19: Fraud In patent infringement litigation, trial courts are empowered and in fact obligated to determine the presence of fraud, inequitable conduct, or bad faith. Milgo Electronic Corp. v. United Business Communication, Inc., C.A.Kan 1980, 623 F.2d 645, certiorari denied 101 S.Ct. 794, 449 U.S. 1066, 66 L.Ed. 2d 611 35 U.S.C.A. $ 285: Attorneys Fees Note 4: In enacting this section, Congress did not intend that recovery of attorney's fees should become the ordinary or usual thing in patent suits. Bruen v. Haft, D.C.Pa 1951, 100 F.Supp 713 Purpose of this section is to prevent gross injustice, and award under this section requires unambiguous showing of extraordinary misconduct. Arbrook, Inc. v. American Hospital Supply Corp., C.A.Tex 1981, 645 F.2d 273 35 U.S.C.A. $ 284: Damages Note 31: Questions of Fact What is a reasonable royalty recoverable by patentee in infringement action wherein actual damages are not proved is a question of fact. Hughes Tool Co., v. G.W.Murphy Industries, Inc., C.A.Tex. 1973, 491 F.2d 923 35 U.S.C.A. $271: Infringement Note 53: Willfulness More is necessary to support finding of willful patent infringement than that the infringing acts were not inadvertent; court must determine that infringer acted in disregard of patent, that is, that infringer had no reasonable basis for believing it had right to do acts at issue. Stickle v. Heublin, Inc., C.A.Fed. 1983, 716 F.2d 1550 Note 218: Prior Art, Infringement By. If an accused machine is substantially identical to prior art, there can be no infringement of patent. Galin Iron Works & Manufacturing Co. v. Beckwith Machinery Co., C.C.Pa. 1939, 105 F.2d 941 Where accused device was constructed in accordance with the teachings of prior art and differed from the claimed invention in the very feature upon which patentability of the claimed invention was predicated, there could be no infringement. Kinnear-Weed Corp. v. Humble Oil & Refining Co., D.C.Tex. 1956, 165 F.Supp 143, [extensive citation list omitted] A patent could not be infringed by the practice of prior art. Peerless Equipment Co. v. Witt Miner, Inc. CCA Ill. 1938, 93 F.2d 98, certiorari denied 58 S.Ct. 611, 303 U.S. 641, 82 L.Ed. 1113 Nowhere in the statutes nor the case law could I find any law or holding that either petitioner or respondent in a patent infringement suit could get *any* recovery for the value of the time they personally spent either prosecuting or defending such a suit. So please cease your threatening comments and confine yourself to those areas and actions where you actually have legal rights. The kind of ex parte threats have a totally unnecessary chilling effect on scholarly discourse and on the general advancement of knowledge. A posting of apology and any associated explanation of what you were *actually* intending to accomplish by you communications to sci.crypt would at this point be very much in order IMHO, and would probably go very far in repairing your image and relations to the portion of the scientific and cryptographic community that communicates there Richard Robertson Internet: richardr@netcom.com Precision Software Products --------------------------------------------------- Disclaimer: Any errors in the citations are accidental and purely of a typographical nature.