A rather unusual lawsuit was filed last month in San Francisco by a patent attorney named Edward Durney. Mr. Durney is the sole shareholder of a company called A Truly Electric Car Company (ATECC), the plaintiff in the suit.
ATECC names Magna International, Inc. (Magna), Bluwav Systems, LLC (Bluwav) and Paperboy Ventures, LLC (Paperboy) as defendants and requests that a bunch of U.S. patent applications directed to electric vehicle technology be corrected to list Mr. Durney as a co-inventor.
Those applications are:
U.S. Patent Application Pub. No. 2004/0021437, entitled “Adaptive electric motors and generators providing improved performance and efficiency”
U.S. Patent App. Pub. No. 2005/0052080, entitled “Adaptive electric car”
U.S. Patent App. Pub. No. 2005/0045392, entitled “In-wheel electric motors”
U.S. Patent App. Pub. No. 2005/0046375, entitled “Software-based adaptive control system for electric motors and generators”
U.S. Patent App. Pub. No. 2005/0127856, entitled “Low-voltage electric motors”
U.S. Patent App. Pub. No. 2004/0263099, entitled “Electric propulsion system”
According to the complaint (truly_electric_complaint.pdf), Magna, Bluwav and Paperboy misused ATECC’s confidential information to effect a sale of Bluwav to Magna. I spoke to Mr. Durney, who told me that ATECC was set up for the purpose of buying Bluwav, but Magna used the due diligence he performed to step in and buy Bluwav itself.
The most unusual aspect of the case is Mr. Durney’s claims of copyright infringement. Mr. Durney apparently holds copyright registrations for the patent applications at issue: U.S. Copyright Reg. No. TXu1-209-372 covers the work “Four Patent Applications About Electric Motors and Vehicles” and Reg. No. TXu1-256-390 covers “Adaptive Electric Motors and Generators Providing Improved Performance and Efficiency: A Patent Application”.
It seems to me that success on the copyright claim would have no effect on the patent rights because copyright protects only the expression of the idea (i.e., the text of the application), not the idea itself (i.e., the intangible patentable invention). So even if the published patent applications infringe Mr. Durney’s copyrights, the defendants would still own the intangible patented ideas (should the applications issue) and the right to exclude others from practicing the patented inventions.
When I asked Mr. Durney about this, he told me he believes that his copyrighted expression has been violated by the defendants filing the patent applications he prepared (and made inventive contributions to) and having them published. This is an additional way for him to seek the compensation he says was denied him for his work on the applications.
Truly fascinating.
