Jed
Margolin, Pro Se
1981
Empire Rd.
VC
Highlands, NV
89521-7430
Telephone:
775-847-7845
Email:
jm@jmargolin.com
UNITED STATES DISTRICT COURT
DISTRICT OF NEVADA
JED
MARGOLIN,
Plaintiff,
vs.
CHARLES F. BOLDEN, in his official capacity as
Administrator, National Aeronautics and Space Administration, and NATIONAL
AERONAUTICS AND SPACE ADMINISTRATION,
Defendants.
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Case No. 3:09-cv-00421-LRH-(VPC)
SECOND AMENDED
COMPLAINT
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COMPLAINT
FOR INJUNCTIVE RELIEF
1. This
is an action under the Freedom of Information Act, 5 U.S.C. § 552 (2007)
(“FOIA”), for injunctive and other appropriate relief seeking the disclosure
and release of agency records improperly withheld from plaintiff by defendants Charles
F. Bolden, in his official capacity as Administrator of the National Aeronautics
and Space Administration, and the National Aeronautics and Space
Administration.
Jurisdiction
and Venue
2. This
Court has subject matter jurisdiction over this action and personal
jurisdiction over the parties pursuant to 5 U.S.C. § 552(a)(2)(A), 5 U.S.C. §
552(a)(2)(C), 5 U.S.C. § 552(a)(3)(A), 5
U.S.C. § 552(a)(3)(C) , 5 U.S.C. § 552(a)(6)(A)(ii), and 5 U.S.C. §
552(a)(6)(F).
3. Venue
is proper in this district pursuant to Section 552(a)(4)(B), as this is the
district in which plaintiff resides.
Parties
4.
Plaintiff Jed Margolin
(“Margolin”) is an engineer and independent inventor who resides at 1981 Empire
Rd., VC Highlands, Nevada.
5.
Defendant National
Aeronautics and Space Administration (“NASA”) is an independent administrative
agency within the Executive Branch of the United States within the meaning of
5 U.S.C. § 551(1) and 5 U.S.C. § 552(f)(1). Defendant Charles F. Bolden is the
Administrator of the National Aeronautics and Space Administration.
Statement
of Facts - Background
6. Margolin
is the named inventor on U.S. Patent 5,566,073 (‘073) Pilot aid using a synthetic environment and U.S. Patent 5,904,724
(‘724) Method and apparatus for remotely
piloting an aircraft. The ‘073 patent teaches the use of what is now called
synthetic vision in manned aircraft.
The ‘724 patent teaches the use of synthetic vision for controlling unmanned
aerial vehicles (UAVs). The front page of the ‘073 patent is Exhibit 2 at
Appendix Volume 1 A20. The front page of the ‘724 patent is Exhibit 1 at
Appendix Volume 1 A15.
7.
Margolin contacted NASA in
May 2003 after he became aware that they had used synthetic vision in the X-38
project. Because the use of synthetic vision for controlling a UAV can be used
to the detriment of this country by unfriendly entities he wanted a friendly
conversation because he thought NASA should buy the ‘724 patent in order to
control the technology.
8. NASA
immediately ordered copies of the file wrappers for U.S. Patent 5,566,073 and
U.S. Patent 5,904,724. See Exhibit 3 at Appendix Volume 1 A22. Only a small
portion of the file wrappers has been included in the present Appendix.
9.
In June 2003 Margolin was
turned over to Mr. Alan Kennedy (“Kennedy”) in the Office of the General
Counsel. This is what Margolin recorded in his Contact Log:
Summary: He basically said that
what most independent inventors have is junk and that since I am an independent
inventor what I have is probably junk. If NASA evaluates it as a license
proffer it will give it a pro forma rejection and I will file a claim anyway,
so the same people who rejected it as a proffer will reject it as a claim, but
in the process will have had to do more work, so to save them some work they
will ignore the proffer and handle it as a claim.
10. As
a result, in June 2003 Margolin filed a claim, completely answering all the
questions on NASA’s claim form. See Exhibit 1 at Appendix Volume 1 A5. Then
Kennedy informed him that NASA would conduct an investigation (expected to last
3-6 months) and that the purpose of the investigation would be to find prior
art to invalidate the patent.
11. After
six months Margolin did not hear from NASA so he called Kennedy, who said:
a. The investigation had not been done.
b. NASA had a Research Exemption for using the
patent. Margolin advised him this was not true. See Madey v. Duke 307 F.3d 1351 (Fed. Cir. 2002).
c. "The X-38 never flew." Margolin
informed him of the video on NASA's web site showing the X-38 flying.
d. The Statute of Limitations gives NASA 6 years
to respond to Margolin’s claim.
e. It would cost Margolin more to sue NASA in
Federal Claims Court than he could hope to recover from NASA.
Margolin sent Kennedy a letter
dated January 8, 2004, asking him to confirm some of the things he had said.
See Exhibit 4 at Appendix Volume 1 A33. Margolin received no response to his
letter.
12. After that, Kennedy refused to talk to
Margolin or respond to his letter. Then, various things came up and Margolin
was unable to pursue his claim against NASA.
13. Margolin later assigned the patents to
Optima Technology Group and the claim against NASA went with them.
Statement
of Facts - Current Case
14. Although
Margolin no longer owned the claim against NASA he still wanted to know the
results of NASA’s investigation so, on June 28, 2008 he filed a FOIA request.
See Exhibit 5 at Appendix Volume 1 A35. It was assigned FOIA HQ 08-270. For
some reason it was turned over to Mr. Jan McNutt (“McNutt”) in the Office of
the General Counsel. McNutt’s response, dated August 5, 2008, is Exhibit 6 at
Appendix Volume 1 A37. In his response he said,
We regret
the delay in processing your claim and assure you that we are now undertaking
measures to provide a resolution of your claim as soon as possible.
Unfortunately. Mr. Alan Kennedy retired from NASA earlier this year and the
action on your claim was not conveyed to management in a timely manner. In
addition the local attorney responsible for review of your claim also departed
from NASA. We are now cognizant of the importance of proceeding with a review
of the claim and will contact you when we have reached a decision.
In a telephone conversation with McNutt he said that
Margolin’s claim “had fallen between the cracks.” This led Margolin to believe
that no investigation had been done, or that it had not been completed (“We are now cognizant of the
importance of proceeding with a review of the claim and will contact you when
we have reached a decision.”).
In McNutt’s letter he asked
Margolin to give NASA a 90-day extension to his FOIA request.
15. On
August 8, 2008 Margolin agreed to the extension. See Exhibit 7 at Appendix
Volume 1 A39. However, despite being told several times that the requested
documents were being sent out, NASA did not send any documents to Margolin
until May 2009.
It is likely that the reason NASA
finally responded to Margolin’s FOIA Request is the fax he sent to Acting
Administrator Christopher Scolese where he asked Mr. Scolese to confirm that he
had exhausted all the administrative remedies that NASA had to offer. See
Exhibit 8 at Appendix Volume 1 A41. Margolin had previously sent the letter to
Mr. Scolese by Certified Mail, but USPS did not deliver it and had no
explanation how or where it was lost.
16. In
its very tardy response to Margolin’s FOIA Request, NASA withheld documents,
citing 5 U.S.C.§552(b)(5). See Exhibit 9 at Appendix Volume 1 A45.
a. One
of the documents that NASA withheld from him is a letter dated March 19, 2009
that was sent by Gary G. Borda (“Borda”) NASA Agency Counsel for
Intellectual Property to Optima Technology Group (“OTG”). (This document was
given to Margolin by OTG.) In this letter Borda denies Claim I-222 regarding
NASA’s infringement of U.S. Patent 5,904,724 (‘724) in the X-38 project. See
Exhibit 10 at Appendix Volume 1 A48. Margolin’s FOIA 08-270 request to NASA was
to produce documents relating to Claim I-222 and NASA withheld the most
material document at that point.
The Borda Letter denied the claim
based on a detailed claims analysis of ‘724 as applied to the X-38 project.
It also made the assertion:
“… numerous pieces of evidence were
uncovered which would constitute anticipatory prior knowledge and prior art
that was never considered by the U.S. Patent and Trademark Office during the
prosecution of the application which matured into Patent No. 5,904,724.”
and threatens, “… NASA reserves the
right to introduce such evidence of invalidity in an appropriate venue, should
the same become necessary.”
However, the Borda Letter did not
provide a detailed claims analysis of ‘724 against the purported prior art. It
did not even list the purported prior art.
NASA later claimed an exemption for
the Borda Patent Report under Deliberative Process, Attorney Work Product, or
Attorney-Client exemptions of 5 U.S.C. § 552(b)(5).
However, documents that are subject
to Discovery in a court action are not exempt. A good explanation can be found
in Martin v. Office of Special Counsel
Merit Systems Protection Board, 819 F.2d 1181, 260 U.S.App.D.C. 382. (U.S.
App. D.C., 1987) From ¶11:
FOIA Exemption (b)(5) protects from
disclosure those "inter-agency or intra-agency memorandums or letters
which would not be available by law to a party other than an agency in
litigation with the agency." 5 U.S.C. Sec. 552(b)(5) (1982).
Though the
Supreme Court has noted that this language "clearly contemplates that the
public is entitled to all such memoranda or letters that a private party could
discover in litigation with the agency," Mink, 410 U.S. at 86, 93
S.Ct. at 835, the exact relationship between ordinary civil discovery and
Exemption (b)(5), particularly the application of discovery privileges under
the exemption, has bedeviled the courts since the Act's inception.
Id. The Supreme Court,
seeing the need for a broadly sweeping rule on the matter, has insisted that
the needs of a particular plaintiff are not relevant to the exemption's
applicability, and has held repeatedly that
only documents
"normally" or "routinely" disclosable in civil discovery
fall outside the protection of the exemption. See NLRB v. Sears, Roebuck
& Co.,
421 U.S. 132, 149
& n. 16, 95 S.Ct. 1504, 1515 & n. 16, 44 L.Ed.2d 29 (1975); FTC v.
Grolier Inc.,
462 U.S. 19, 26,
103 S.Ct. 2209, 2213, 76 L.Ed.2d 387 (1983); United States v. Weber Aircraft
Corp.,
465 U.S. 792, 799, 104
S.Ct. 1488, 1492, 79 L.Ed.2d 814 (1984).
(Emphasis added)
Therefore, if a document is
“normally” or “routinely” available through Discovery, it is not exempt from
production under 5 U.S.C. Sec. 552(b)(5).
Even so, NASA’s threatened use of the
Borda Patent Report would not even require Discovery.
The only appropriate venues for
NASA to challenge the validity of a U.S. Patent are the U.S. Court of Federal
Claims, the U.S. Court of Appeals for the Federal Circuit, and the USPTO. The
Courts and the USPTO will not accept NASA’s word that a patent is invalid due
to prior art. NASA would be required to produce the evidence. Because NASA’s
threatened use of the Borda Patent Report requires that it be made public, it
is not subject to the Deliberative Process, Attorney Work Product, or
Attorney-Client exemptions of 5 U.S.C. § 552(b)(5). Therefore, the exemption NASA claims under 5
U.S.C.§552(b)(5) does not apply.
b.
Margolin already had most of
the documents NASA sent him because they were documents he had sent to NASA.
c.
Although 5 U.S.C. §
552(a)(6)(F) requires agencies to give an estimate of the volume of the
documents being withheld, NASA failed to do so.
17. Margolin
filed a FOIA Appeal on June 10, 2009. See Exhibit 11 at Appendix Volume 1
A54. The Appendices in the appeal have
been omitted due to their length. Margolin’s FOIA Appeal was received at NASA
Headquarters on June 12, 2009. See Exhibit 12 at Appendix Volume 1 A75.
18. On
Monday, July 21, 2009, Margolin called the NASA Office of the General Counsel
to inform NASA that they had failed to respond by the 20 day statutory deadline
required by 5 U.S.C. § 552(a)(6)(A)(ii), and to ask what NASA’s intentions
were. He spoke to Mr. Randolph Harris who said he would look into the matter
and call him back later that day. Mr. Harris did not call him back that day, so
the next day he called Mr. Harris. Mr. Harris said that NASA would be sending
Margolin a bunch of documents but he did not know what the documents were or
when they would be sent. He guessed seven days. Margolin also asked whether
NASA would waive legal service and accept a Complaint by USPS Express Mail. Mr.
Harris said, “No.” Only Certified mail. After Margolin told him about the
problem when he had sent NASA the letter of April 6, 2009 to Acting
Administrator Scolese (USPS never delivered it) Mr. Harris still said, “No.”
Margolin emailed Mr. Harris a letter asking him to confirm what he had said in
the telephone conversation. See Exhibit 13 at Appendix Volume 1 A77.
19. Margolin
did not receive a reply from Mr. Harris. Instead he received an email from Mr.
Jan McNutt, who asked for a 20-day extension for NASA to respond to Margolin’s
FOIA Appeal. See Exhibit 14 at Appendix Volume 1 A79. Whereas Mr. Harris had
promised him NASA would be sending more documents, McNutt did not. Since NASA had been acting in
bad faith toward Margolin for over six years and McNutt had already taken
improper advantage of the number of courtesies he had extended to him
regarding McNutt’s actions in the FOIA
request, Margolin said “No” to McNutt’s request for an extension. See Exhibit
15 at Appendix Volume 1 A81. NASA had failed to respond to Margolin’s FOIA
Appeal (or ask for an extension) within the 20 day statutory period required by
FOIA, and there was no reason to believe NASA had changed course and was
suddenly going to start acting in good faith.
20. Margolin filed a FOIA lawsuit against NASA
on July 31, 2009 in U.S. District Court for the District of Nevada, case No.
3:09-cv-00421-LRH-VPC.
21. After
Margolin filed the Court action NASA sent him their Denial of his FOIA Appeal.
See Exhibit 16 at Appendix Volume 1 A84 .
On August 10, 2009 Margolin received NASA’s Denial of his Appeal. The
letter was from Thomas S. Luedtke, Associate Administrator for Institutions and
Management. It was dated August 5 (four days after Margolin’s Complaint
appeared on Pacer and two days after he served the U.S. Attorney) and
postmarked August 6, which was the same day the Post Office delivered the Summons
and Complaint to NASA. NASA denied
Margolin’s FOIA Appeal and produced no additional documents, only more reasons
to withhold them. NASA admitted to withholding 100 pages of documents.
22. On
November 16, 2009 Margolin received two boxes of documents from Stephen L.
McConnell (“McConnell”), NASA Freedom of Information Act Officer. See Exhibit
17 at Appendix Volume 2 A4. The cover letter is Exhibit 18 at Appendix Volume 2
A6.
According to NASA there are about
4,000 pages of documents, which is a great deal more than the 100 pages they
admitted to withholding in their Denial of FOIA Appeal.
They are not in any particular
order. There is no index. There are many duplicates. Although the pages are numbered the numbers
are frequently illegible. There are gaps in the numbers indicating that
sections were entirely withheld, usually in the most interesting parts. Is NASA
really this disorganized?
The pages run from 00017 to 05605
indicating that around 1600 pages were entirely withheld. Many of the emails
are redacted. Sometimes the entire body of the email is redacted under §552
(b)(5) which McConnell characterizes as:
(b)(5) – which protects
inter-agency documents generated which "are predecisional and/or
deliberative in nature" and information protected as attorney work
product; and …
That is what this entire case is
about. However, by providing the documents (such as they are) it may mean NASA
does not have to provide a Vaughn Index or provide them to the Court for
in-camera inspection or have the Court
appoint a Special Master to review them. This places the entire burden on
Margolin. The documents are too voluminous to file in their entirety in this
Court action. The most relevant parts are reproduced in Appendix Volume 2 and
Appendix Volume 3.
23. The
approximately 4,000 pages of documents Margolin received from NASA on November
16, 2009 tell a very different, and very disturbing, story of the period of
time from when he contacted NASA in May 2003 about their infringement of ‘724
to when they finally responded to his FOIA request in May 2009.
They show:
a.
The synthetic vision software
for the X-38 project had been done by Mike Abernathy (“Abernathy”) of Rapid
Imaging Software, working with NASA’s Frank Delgado (“Delgado”) (JSC-NASA).
Delgado was brought onboard NASA’s
claim investigation in early 2004. Abernathy was brought onboard a few months
later and has been heavily involved ever since.
Delgado said the X-38 project did
not infringe the ‘724 patent but his analysis has not been provided.
Abernathy provided a few references
that he said were prior art that would invalidate ‘073 and ‘724. However, a
true analysis report requires showing how the patent claim elements are present
in the purported prior art. Abernathy failed to do that. A list of references
without such a detailed analysis is worthless.
Both Delgado and Abernathy are
incensed that the ‘073 and ‘724 patents were even issued and argue that NASA
should file a Request For Re-Examination with the Patent Office. Both Delgado
and Abernathy display a profound ignorance of patents and the patent
system. There is no evidence that NASA’s
attorneys (some of whom are patent attorneys) made any attempt to educate them.
NASA appears to have accepted the
Delgado and Abernathy reports uncritically, and in July, 2004, decided to deny
Margolin’s claim.
b.
NASA decided in July 2004 to
deny Margolin’s Claim, relying heavily on information supplied by Abernathy.
All of the documents dated after that are post-decisional. Therefore, they are
not exempt under 5 U.S.C.§552(b)(5)
c.
In September 2004 NASA
approved a plan to file a Request for Re-Examination with the Patent Office
because:
It seems clear that the technical
folks have determined that the Margolin patent on Synthetic Vision creates a
substantial problem for many of our partners in the aviation safety industry
for a variety of reasons.
For reasons that are not given, the
Request for Re-Examination was not filed.
d.
In September 2006 the issue
heated up again when Robert Adams of Optima Technology asked Abernathy to
license the Patents. There was considerable communications between Abernathy
and NASA on the subject even though much of it has been redacted. There was
also a conference call between Abernathy and various NASA staff members.
Although Abernathy showed a profound ignorance of patents and patent law, NASA
continued to accept his work uncritically.
e.
The relationship between
NASA and Mike Abernathy has been so close that it is reasonable to believe Mike
Abernathy has been acting as NASA’s Agent.
24.
The following are the major
players. For a fairly complete list of the players see Exhibit 19 at Appendix
Volume 2 A9.
Alan Kennedy (Attorney, Office of the General
Counsel, NASA HQ, now retired)
Barry V. Gibbens (Attorney, Langely Research
Center, now deceased)
Edward K. Fein (Intellectual Property Counsel, NASA Johnson
Space Center).
John Muratore (Program Manager, X-38/Crew Return
Vehicle).
Franciso (Frank) J. Delgado of the Engineering
Directorate (Johnson
Space Center)
headed up the software project for the X-38 program.
Mike Abernathy (Rapid Imaging Software) is the
contractor who supplied the synthetic vision software for the X-38 project.
Gary G. Borda (Office of the Associate General
Counsel, Agency Lead Attorney, NASA HQ)
Robert F. Rotella (Attorney, Office of the
General Counsel, Commercial and Intellectual Property Law Practice Group)
Dan Baize (Project Manager, Synthetic Vision, NASA Langley
Research Center)
Mark W. Homer (Patent Counsel, NASA Management
Office -JPL)
John H. Del Frate is director of the Advanced
Planning and Partnerships Office at NASA's Dryden Flight
Research Center.
Kurt G. Hammerle is a patent attorney at Johnson Space Center.
Mr. Jan McNutt (Attorney, Office of the
Associate General Counsel, Commercial and Intellectual Property Law Practice
Group, NASA Agency Counsel for Intellectual Property, NASA HQ)
25.
The earliest email in the NASA
documents starts February 13, 2004 at 10:52 AM and is part of a long
complicated email thread. See Exhibit 20 at Appendix Volume 2 A13. In order to
show them in a less confusing manner they have been converted to text and will
be reproduced here in what appears to be the correct chronological order and
without unnecessary duplication. The page numbers refer to the NASA page
numbers followed by the Appendix Volume 2 page number. (When emails are part of
a chain of quoted messages and they come from different time zones it can be
difficult to precisely determine the proper chronological order.)
This first email is from Edward K.
Fein (Intellectual Property Counsel, NASA
Johnson Space
Center) to John Muratore
(Program Manager, X-38/Crew Return Vehicle). Unfortunately, NASA has completely
redacted the message under 5 USC, §552(b)(5) . They have completely redacted
many messages under (b)(5).
_________________________________________________________________
[Page 04605] [AV2-A17]
-----Original Message-----
From: FEIN, EDWARD K. (JSC-HA) (NASA)
Sent: Friday, February 13, 2004 10:52 AM
To: MURATORE, JOHN F. (JSC-MS) (NASA)
Cc: 'Kennedy, Alan'
Subject: Administrative Claim of Jed Margolin for Infringement of U.S. Patent
5,904,724 by the X-38 Project L
[redacted (b)(5)]
-Ed
Edward K. Fein
Intellectual Property Counsel
NASA Johnson Space Center
Fax: [redacted (b)(6)]
EMail: [redacted (b)(6)]
_________________________________________________________________
Alan J. Kennedy was a Patent
Attorney in the Office of the Associate General Counsel (Intellectual
Property). He was the NASA attorney who treated Margolin so rudely.
The email chain continues.
________________________________________________________________
[Page 04604] [AV2-A16]
-----Original Message-----
From: MURATORE, JOHN F. (JSC-MS) (NASA)
Sent: Friday, February 20, 2004 6:37 PM
To: FEIN, EDWARD K. (JSC-HA) (NASA); DELGADO, FRANCISCO J. (FRANK) (JSC-ER2)
(NASA)
Cc: 'Kennedy, Alan'
Subject: RE: Administrative Claim of Jed Margolin for Infringement of U.S.
Patent 5,904,724 by the X-38 Project
[redacted (b)(5)]
jm
_________________________________________________________________
Franciso (Frank) J. Delgado of the
Engineering Directorate (Johnson
Space Center)
headed up the software project for the X-38 program.
_________________________________________________________________
[Page 04604] [AV2-A16]
-----Original Message-----
From: DELGADO, FRANCISCO J. (FRANK) (JSC-ER2) (NASA)
Sent: Friday, February 20, 2004 8:16 PM
To: MURATORE, JOHN F. (JSC-MS) (NASA); FEIN, EDWARD K. (JSC-HA) (NASA)
Cc: 'Kennedy, Alan'
Subject: RE: Administrative Claim of Jed Margolin for Infringement of U.S.
Patent 5,904,724 by the X-38 Project
[redacted (b)(5)]
Thanks,
Frank Delgado
Frank Delgado
Building 1, Room 920C
Phone: [redacted (b)(6)]
Fax: [redacted (b)(6)]
Pager: [redacted (b)(6)]
_________________________________________________________________
The next day.
_________________________________________________________________
[Page 04604] [AV2-A16]
-----Original Message-----
From: FEIN, EDWARD K. (JSC-HA) (NASA)
Sent: Monday, February 23, 2004 10:10 AM
To: DELGADO, FRANCISCO J. (FRANK) (JSC-ER2) (NASA)
Cc: 'Kennedy, Alan; MURATORE, JOHN F. (JSC-MS) (NASA)
Subject: RE: Administrative Claim of Jed Margolin for Infringement of U.S.
Patent 5,904,724 by the X-38 Project
Thanks, Frank!
-Ed
_________________________________________________________________
By late June 2004, Mike Abernathy
had been brought onboard. Abernathy (Rapid Imaging Software) is the contractor
who supplied the synthetic vision software for the X-38 project.
_________________________________________________________________
[Page 04603] [AV2-A15]
-----Original Message-----
From: FEIN, EDWARD K. (JSC-HA) (NASA) [mailto: [redacted (b)(6)]
Sent: Thursday, June 24, 2004 9:01 AM
To: DELGADO, FRANCISCO J. (FRANK) (JSC-ER2) (NASA)
Cc: [redacted (b)(6)] WHITTINGTON, JAMES (JSC-HA) (USA);
DICKERSON, MARY E. (JSC-HA) (NASA); MURATORE, JOHN F. (JSC-MS) (NASA)
Subject: RE: Administrative Claim of Jed Margolin for Infringement of U.S.
Patent 5,904,724 by the X-38 Project
Frank ... Haven't heard from you in a while. Where are we on this project? I
just spoke with Mike Abernathy, Rapid Imaging, one of our SBIR contractors. He
said he'd be happy to help us. He has information which may be relevant to
antedating the subject patent.
-Ed
_________________________________________________________________
The distribution list had been
expanded to James Whittington (SBIR Specialist at the Johnson
Space Center)
and Mary E. Dickerson (Paralegal Specialist at the Johnson Space
Center).
_________________________________________________________________
[Page 04603]
[AV2-A15]
-----Original Message-----
From: Mike Abernathy [mailto [redacted (b)(6)]
Sent: Monday, June 28, 2004 9:10 AM
To: FEIN, EDWARD K. (JSC-HA) (NASA)
Subject: RE: Administrative Claim of Jed Margolin for Infringement of U.S.
Patent 5,904,724 by the X-38 Project
Hi Ed,
Frank is back in West Virginia presenting SmartCam3D for NASA Software of the
Year.
What kinds of things would be used to demonstrate that a patent is invalid? Is
it necessary to show that people had done this before the patent was issued or
before the patent application?
This patent claims in the 1995 application that it developed the method of
pilot aid using a 3D synthetic environment. But at this webpage, you can see
that a Dutch university had already flown such an environment in 1994:
http://www.synthetic-vision.tudelft.nl/
(See First flight of the DELPHINS Tunnel-in-the-sky display at the bottom of
the list of links).
The patent claims a pilot aid using a synthetic environment – if the method
were used for another purpose than aiding the pilot like for example aiding a
camera operator instead would that be infringement?
What bothers me about this patent
is that it appears to be not a patent on peanut butter, nor on jelly, but
rather a patent on the method of making a sandwich by combining the two. This
to me appears to be a non-novel use of existing technologies to create a
"method". Everyone familiar with the field of synthetic vision is
boggled that such a patent has been issued because it is obvious use of
existing technologies.
Let me know how I can help. Best regards,
Mike Abernathy [redacted (b)(6)]
Rapid Imaging Software, Inc
[redacted (b)(6)]
www.landform.com
www.visualflight.com
_________________________________________________________________
Abernathy and Delgado worked on the
X-38 project together. Abernathy’s ignorance of basic patent law concepts is
profound and grows over the years.
If Abernathy had done even a small
amount of due diligence he would have discovered that there are a number of
U.S. Patents for making peanut butter and jelly sandwiches. U.S. Patent
3,552,980 issued June 5, 1971 to Cooper, et al. is a good example. See Exhibit
21 at Appendix Volume 2 A22. From
Column 1 line 45 - Column 2 line 23:
This
invention relates to new food products. More particularly, it relates to stable,
packaged peanut butter-base foods such as sandwich spreads, and to methods of
making them.
This
invention also relates to a process of treating sweet aqueous spreads such as
preserves, jams, jellies, and the like, to make them stable against water loss
when in contact with a hydrophilic material, such as peanut butter, without
deleteriously affecting their texture, spreadability, flavor, color and
mouthing characteristics.
Various
types of preserves, jellies, jams, and confections are ordinarily delicious
when freshly mixed with peanut butter. Unfortunately, when sweet, aqueous
spreads of this kind are mixed with peanut butter, and the mixture is allowed
to stand for a few days, the peanut butter becomes hard, appears dry even
though its moisture content has increased, and generally becomes an
unattractive brown in appearance and very objectionable in taste. The aqueous
spread in the mixture loses its moisture to the peanut butter spread and
objectionable sugar crystallization occurs. If the mixture stands for any
prolonged period of time, such as, for example, the several-week period that
would be typical of transit time and shelf life for peanut butter or the like
in a grocery store, the mixture changes so drastically that it is no longer a
marketable product.
Moreover,
mixtures of peanut butter with some materials such as, for example, grape
jelly, are very unattractive in appearance and, if thoroughly mixed and then
packaged, probably would look too unattractive to be readily saleable even in
the fresh state.
One of
the most popular sandwich combinations is peanut butter and fruit jelly, such
as apple jelly. A stable packaged food product containing a combination of
peanut butter and jelly would be a great convenience to the consumer, would be
very pleasant to use, and could be packaged in a number of attractive ways.
Unfortunately, it has not been possible in the past to make up stable packages
of such mixtures.
One
object of the present invention is to provide a new, attractive packaged food
product.
Another
object of the invention is to provide a new packaged food product that is a
stable combination of different, foods that can be eaten together to provide a
delicious taste that is attributable to their combination.
This patent is probative because it
shows Abernathy’s ignorance of basic patent law concepts and his inability to
do even a minimum amount of diligence.
Yet, as later documents show, NASA relied on his work
uncritically in making their decision to deny Margolin’s claim. NASA’s refusal
to comply with the Freedom of Information Act is due, at least in part, to
their desire to avoid embarrassment to the Agency.
It should be noted that the above patent was assigned to
CPC International, which was not trying to corner the market for peanut butter
and jelly sandwiches and prevent the American People from enjoying same. CPC International was making it possible for
more people to enjoy peanut butter and jelly sandwiches.
CPC International has gone through a number of mergers,
acquisitions, and divestitures in its long history.
At one time they produced Entenmann's pastries, Mazola
corn oil, Thomas' English muffins and dozens of other brand names.
They owned Best Foods, which produces very fine mayonnaise
under the brands Best Foods Mayonnaise (sold only West of the Rockies) and
Hellman’s Mayonnaise (sold only East of the Rockies).
They also make Skippy Peanut Butter.
If NASA was the Defendant in a Court action for infringing
on the Margolin Patents would they really assert the PBJ Defense?
_________________________________________________________________
[Page 04602] [AV2-A14]
FW: Administrative Claim of Jed Margolin for Infringement of U.S. Patent
5,904,724 by the
X-38 Project
From: FEIN, EDWARD K. (JSC-HA) (NASA) [redacted (b)(6)]
To: Kennedy, Alan [redacted (b)(6)]
Date: Jul 09 2004 - 4:17pm
Viewed On: - - ?date?
Alan ... Not sure I forwarded this one.
-Ed
_________________________________________________________________
Fein keeps Kennedy in the loop if only belatedly.
_________________________________________________________________
[Page 04605] [AV2-A17]
FW: Margolin Infringement
From: FEIN, EDWARD K. (JSC-HA) (NASA) [redacted (b)(6)]
To: DICKERSON, MARY E. (JSC-HA) (NASA) [redacted (b)(6)]
Date: Jul 09 2004 - 2:43pm
Viewed On: --?date?
RE: - 267k
RE: - 100k
RE: - 9.7k
FW: - 12k
FW: - 12k
_________________________________________________________________
No idea what Fein is sending Dickerson.
_________________________________________________________________
[Page 04605] [AV2-A17]
-----Original Message-----
From: FEIN, EDWARD K. (JSC-HA) (NASA)
Sent: Friday, July 09, 2004 2:41 PM
To: 'Kennedy, Alan'
Cc: 'Bayer, Kathy;
Subject: Margolin Infringement
[redacted (b)(5)]
_________________________________________________________________
Kathy Bayer is a Legal Technician in the Office of the
Associate General Counsel.
_________________________________________________________________
[Page 04606] [AV2-A18]
RE:
From: Mike Abernathy [redacted (b)(6)]
To: 'FEIN, EDWARD K. (JSC-HA) (NASA)
Date: Jun 28 2004 - 1:29pm
Viewed On: --?date?
FW: Patents 5566073 and 5904724
From: FEIN, EDWARD K. (JSC-HA) (NASA) [redacted (b)(6)]
To: CULBERT, CHRISTOPHER J. (CHRIS) (JSC-ER) (NASA) [redacted (b)(6)]
Date: Jul 13 2004 - 1:26pm
Viewed On: --?date?
-----Original Message-----
From: FEIN, EDWARD K. (JSC-HA) (NASA)
Sent: Tuesday, July 13, 2004 8:37 AM
To: BENZ, FRANK J. (JSC-EA) (NASA); GUY, WALTER W. (JSC-ER) (NASA); FARMER,
CLIFF L. (JSC-ER) (NASA)
Cc: GILBERT, CHARLENE E. (JSC-HA) (NASA); JAMES, JOHN E. (JACK) (JSC-HA) (NASA)
Subject: Patents 5566073 and 5904724
[redacted (b)(5)]
Edward K. Fein
Intellectual Property Counsel
NASA Johnson Space Center
Mail Code HA
[redacted (b)(6)]
Fax: [redacted (b)(6)]
E-Mail: [redacted (b)(6)]
_________________________________________________________________
- Christopher J. Culbert is Deputy Division Chief of
the Automation, Robotics, and Simulation Division at NASA/Johnson Space Center.
- Frank J. Benz is currently Manager of the NASA
Johnson Space Center (JSC) White Sands Test Facility (WSTF) near Las Cruces, New
Mexico. Appointed to this position in 2005.
- Charlene E. Gilbert is Director of the Technology
Transfer Office at Johnson
Space Center.
- John (Jack) E. James John is Assistant Director,
Technology Transfer Office, Johnson
Space Center.
- Cliff
L. Farmer is Chief, Display & Control Development Office, Johnson Space Center.
- Guy W. Walter is Chief, Automation, Robotics, and
Simulations Division, Engineering Directorate. Mr. Walter is a real
engineer who has made significant contributions to the space program. Why
did they have to drag him into this mess?
And now the result of these emails.
_________________________________________________________________
[Page 04607] [AV2-A19]
-----Original Message-----
From: FEIN, EDWARD K. (JSC-HA) (NASA)
Sent: Monday, July 12, 2004 11:00
AM
To: DELGADO, FRANCISCO J. (FRANK) (JSC-ER2) (NASA); 'Kennedy, Alan; [redacted
(b)(6)]
Cc: FARMER, CLIFF L. (JSC-ER) (NASA); MURATORE, JOHN F. (JSC-MS) (NASA)
Subject: RE: Patents 5566073 and 5904724
Frank ... Thank you so much for your detailed analysis and research on this
matter. I know that you invested considerable time into assisting in the
defense of this infringement claim. Your effort, together with valuable input
from Mike Abernathy, will be the basis for NASA's denying the administrative
claim. There is always a chance that Margolin will file a law suit, but with
all of the information you guys have turned up, I think the chance of that is
small.
Thanks again!
-Ed
_________________________________________________________________
NASA decided to deny the claim in July, 2004. All of the documents
that came afterwards are post-decisional documents that are, therefore, not
exempt from disclosure. Traditionally, the courts have established two
fundamental requirements, both of which must be met, for the deliberative
process privilege to be invoked. See Mapother v. Dep't
of Justice, 3 F.3d 1533, 1537 (D.C. Cir. 1993) ("The deliberative
process privilege protects materials that are both predecisional and
deliberative." (citing Petroleum Info. Corp. v. United States Dep't of the Interior,
976 F.2d 1429, 1434 (D.C. Cir. 1992))). First, the communication must be
predecisional, i.e., "antecedent to the adoption of an agency
policy." (Jordan,
591 F.2d at 774) Second, the communication must be deliberative, i.e., "a
direct part of the deliberative process in that it makes recommendations or
expresses opinions on legal or policy matters." Vaughn v. Rosen,
523 F.2d 1136, 1143-44 (D.C. Cir. 1975). The burden is upon the agency to
show that the information in question satisfies both requirements. See
Coastal States, 617 F.2d at 866.
The statement, “There is always a
chance that Margolin will file a law suit, but with all of the information you
guys have turned up, I think the chance of that is small”, makes no sense
because NASA never informed Margolin of “all of the information you guys turned
up.” Margolin has learned of this only now, in 2009, as a result of the present
lawsuit.
In order for a deterrent to work,
your opponent has to know of its existence. This is one of the messages of the classic 1964 Stanley Kubrick film Dr. Strangelove, or How I learned to stop
worrying and love the Bomb.
26.
Abernathy’s Detailed Analysis
of Prior Art appears to be contained in the email from Mike Abernathy to Edward
Fein dated June 28, 2004. See Exhibit 22 at Appendix Volume 2 A32. A true prior
art analysis requires an actual discussion of purported prior art pointing out
where the elements in the patent claim being discussed are present in the
purported prior art. Abernathy has failed to do this, especially with the
article that is in Dutch. See Exhibit 22
at Appendix 2 A42.
27.
Although NASA had already made
the decision to deny the claim, the story is just getting started.
Exhibit 23 at Appendix Volume 2 A45
contains a complicated email thread that took place on September 1, 2004. They
were in the same section in the NASA files as an email where Jan McNutt
introduced himself to Edward Fein after Mr. McNutt started working at NASA and
the case was dumped into his lap. The September 2004 documents may have been
provided to McNutt as a result of his email to Mr. Fein. The following is an attempt to present the
thread in order and without unnecessary duplicates.
_________________________________________________________________
[Page 2646] [AV2-A56]
From: McNutt, Jan (HQ-MC000)
Sent: Wednesday, August 06, 2008 1:36 PM
To: Fein, Edward K. (]SC-AL)
Cc: Borda, Gary G. (HQ-MC000); Rotella, Robert F. (HQ-MA000)
Subject: Patent Infringement claim from Jed Margolin; NASA Case No. I-222
Hello Mr. Fein,
I am a new attorney working commercial law and also helping out Gary and Bob.
Do you remember working on this infringement claim, and if so, what was the
outcome, if any? See attached.
<< File: Kennedy to JSC.pdf >>
<< File: Margolin FOIA.pdf
>>
<< File: Letter from
Optima 20080714.pdf >>
Thank you,
Jan S. McNutt
Attorney-Advisor (Commercial)
Office of the General Counsel
NASA Headquarters
_________________________________________________________________
This is where the thread starts in
September 2004.
_________________________________________________________________
[Page 2645] [AV2-A55]
At 09:33 AM 9/1/2004 -0600, Mike Abernathy wrote:
Good Morning Alan,
Per our discussions this morning I called both Dan Baize and Barry Gibbens at
Langley to discuss the resolution of questions surrounding patents 5566073 and
5904724. When we spoke earlier you indicated that based on the evidence of
prior art uncovered so far, that NASA might move for an Ex-Parte re-examination
of patent 5566073, provided that NASA patent counsel at LARC concurs. Mr. Baize
feels that this patent may invalid because of copious prior art, and that it is
therefore a significant impediment to the development of life-saving synthetic
vision technologies. Mr. Gibbens has indicated that he and Ms. Blackwell feel
it is now appropriate to for NASA LARC to proceed to request a re-examination.
We will therefore forward them the same information on prior art that I
forwarded to HQ. Please let us know how we can continue to be of help.
Best regards,
Mike Abernathy
Rapid Imaging Software, Inc.
[redacted (b)(6)]
www.landform.com
HYPERLINK "http://www.visualflight.com/"www.visualflight.com
Barry V. Gibbens
NASA Langley
Research Center
Intellectual Property Law Team - Office of Chief Counsel
wwwebsite: http://tech-transfer.larc.nasa.qov/
NEW E-MAIL ADDRESS: Please note that effective immediately, my e-mail address
is n [redacted (b)(6)] Please update your mail systems accordingly.
Thanks.
_________________________________________________________________
[Alan is presumably Alan Kennedy]
_________________________________________________________________
[Page 2644] [AV2-A54]
-----Original Message-----
From: FEIN, EDWARD K. (JSC-HA) (NASA)
Sent: Wednesday, September 01, 2004 10:06 AM
To: 'Mike Abernathy'
Subject: RE: US Patents 5566073 and 5904724
Thanks, Mike, for keeping me in the loop.
-Ed
______________
-----Original Message-----
From: Mike Abernathy [redacted (b)(6)]
Sent: Wednesday, September 1, 2004 10:33 AM
To: 'Kennedy, Alan'
Cc: 'Barry V. Gibbens, LaRC'; Dan Baize; 'Trey Arthur'; DELGADO, FRANCISCO J.
(FRANK) (JSC-ER2) (NASA); FEIN, EDWARD K. (JSC-HA) (NASA); BOE, ERIC A., LTCOL.
(JSC-CB) (NASA)
Subject: US Patents 5566073 and 5904724
Good Morning Alan,
Per our discussions this morning I called both Dan Baize and Barry Gibbens at Langley to discuss the
resolution of questions surrounding patents 5566073 and 5904724. When we spoke
earlier you indicated that based on the evidence of prior art uncovered so far,
that NASA might move for an Ex-Parte re-examination of patent 5566073, provided
that NASA patent counsel at LARC concurs. Mr. Baize feels that this patent may
invalid because of copious prior art, and that it is therefore a significant
impediment to the development of life-saving synthetic vision technologies. Mr.
Gibbens has indicated that he and Ms. Blackwell feel it is now appropriate to
for NASA LARC to proceed to request a re-examination. We will therefore forward
them the same information on prior art that I forwarded to HQ. Please let us
know how we can continue to be of help.
Best regards,
Mike Abernathy
Rapid Imaging Software, Inc.
[redacted (b)(6)]
www.landform.com
www.visualflight.com
Claims Analysis of Patent.doc
_________________________________________________________________
The above may be a duplicate, or
Abernathy may have resent it with the attachment.
The following email is from Barry
V. Gibbens, a patent attorney at Langley
Research Center.
_________________________________________________________________
[Page 2645] [AV2-A55]
Re: US Patents 5566073 and 5904724
From: Barry V. Gibbens, LaRC [redacted (b)(6)]
To: Mike Abernathy [redacted (b)(6)] Kennedy, Alan [redacted (b)(6)]
CC: Linda B. Blackburn [redacted (b)(6)]
Dan Baiz [redacted (b)(6)]
'Trey Arthur' [redacted (b)(6)]
DELGADO FRANCISCO J. (FRANK) [redacted (b)(6)]
FEIN, EDWARD K. JSC-H (NASA) [redacted (b)(6)]
Eric Boe [redacted (b)(6)]
Date: Sep 01 2004 - 11:29am
Hi Alan (and others),
Just to clarify the message below, I spoke with Mike Abernathy this morning,
and I've spoken with Dan Baize on a number of occasions concerning this topic.
I've also spoken with you (Alan) briefly, and with Linda Blackburn, Patent
Counsel here at Langley
(not Linda "Blackwell" :-). It seems clear that the technical folks
have determined that the Margolin patent on Synthetic Vision creates a
substantial problem for many of our partners in the aviation safety industry
for a variety of reasons. It also seems clear that there is substantial prior
art in existence to make an argument for re-examination of the Margolin patent.
Linda has stated that we at Langley
are willing to support an analysis of this situation at the Center level. She
has, however, also told me that we first need to perform a formal infringement
analysis to confirm (from a legal perspective) that we are in fact practicing
the patent as described by its claims. If that analysis shows probable
infringement, then we can proceed with a re-examination request, which Dan
Baize has indicated he would be willing to fund. It is my understanding that
you (again Alan) gave your blessing this morning for us to proceed at the
Center level on these activities. If that is the case, I'll go ahead and begin
moving on the formal infringement analysis, keeping you apprised of progress as
it develops. Please let me know if you are in agreement with the situation as I
have described it. If so, I'll begin work here shortly.
Thanks,
Barry
_________________________________________________________________
Note that one of the reasons for
filing a Request for Re-Examination is because:
It seems clear that the technical
folks have determined that the Margolin patent on Synthetic Vision creates a
substantial problem for many of our partners in the aviation safety industry
for a variety of reasons.
This has nothing to do with an
infringement claim against NASA. This is not about NASA taking Margolin’s
private property for Public Use which, under the Fifth Amendment to the U.S.
Constitution, requires that Margolin be compensated. This is about destroying (taking) Margolin’s
private property, without compensation, for the financial benefit of NASA’s partners, who are commercial companies.
This is about theft.
Note that the Subject is “Re: US
Patents 5566073 and 5904724”. U.S. Patent 5,904,724 was the subject of
Margolin’s infringement claim. U.S. Patent 5,566,073 was not. Why is NASA
proposing to invalidate a patent that was not the subject of the infringement
claim?
Also note: “Baize has indicated he
would be willing to fund.”
The email was sent by Barry V. Gibbens (Patent Attorney, Langley Research Center).
It was sent to:
Mike Abernathy (Rapid Imaging Software) is the
contractor who supplied the synthetic vision software for the X-38 project.
Alan Kennedy (Attorney, Office of the General
Counsel, NASA HQ, now retired)
Dan Baize (Project Manager, Synthetic Vision, NASA Langley
Research Center)
Trey Arthur (NASA Langley
Research Center)
He is listed as the co-author on several reports from the early 2000’s on
synthetic vision.
Franciso (Frank) J. Delgado of the Engineering
Directorate (Johnson
Space Center)
headed up the software project for the X-38 program.
Edward K. Fein (Intellectual Property Counsel, NASA Johnson
Space Center)
Eric Boe [Lt Col Eric A. Boe, (JSC-CB) (NASA),
now Colonel] Colonel Boe is an astronaut.
If any of them objected to the
proposed theft under Cover of Authority there is no indication of it in the
NASA documents.
There is an earlier email from Mike
Abernathy that is part of the quoted chain. It appears to have been sent to
Alan Kennedy. It is accompanied by a reply from Edward Fein. From NASA
documents page 2645 [AV2-A55]:
_________________________________________________________________
At 09:33 AM 9/1/2004 -0600, Mike
Abernathy wrote:
Good Morning Alan,
Per our discussions this morning I called both Dan Baize and Barry Gibbens at
Langley to discuss the resolution of questions surrounding patents 5566073 and
5904724. When we spoke earlier you indicated that based on the evidence of
prior art uncovered so far, that NASA might move for an Ex-Parte re-examination
of patent 5566073, provided that NASA patent counsel at LARC concurs. Mr. Baize
feels that this patent may invalid because of copious prior art, and that it is
therefore a significant impediment to the development of life-saving synthetic
vision technologies. Mr. Gibbens has indicated that he and Ms. Blackwell feel
it is now appropriate to for NASA LARC to proceed to request a re-examination.
We will therefore forward them the same information on prior art that I
forwarded to HQ. Please let us know how we can continue to be of help.
Best regards,
Mike Abernathy
Rapid Imaging Software, Inc.
[redacted (b)(6)]
www.landform.com
HYPERLINK "http://www.visualflight.com/"www.visualflight.com
Barry V. Gibbens
NASA Langley
Research Center
Intellectual Property Law Team - Office of Chief Counsel
wwwebsite: http://tech-transfer.larc.nasa.gov/
NEW E-MAIL ADDRESS: Please note that effective immediately, my e-mail address
is n [redacted (b)(6)] Please update your mail systems accordingly.
Thanks.
__________
[Page 2644] [AV2-A54]
-----Original Message-----
From: FEIN, EDWARD K. (JSC-HA) (NASA)
Sent: Wednesday, September 01, 2004 10:06 AM
To: 'Mike Abernathy'
Subject: RE: US Patents 5566073 and 5904724
Thanks, Mike, for keeping me in the loop.
-Ed
_________________________________________________________________
Abernathy makes the statement:
Mr. Baize feels that this patent
may invalid because of copious prior art, and that it is therefore a
significant impediment to the development of life-saving synthetic vision
technologies.
Abernathy has done the equivalent
of “Wrapping Himself in the Flag.” The Margolin patents were not an impediment
to the development of life-saving synthetic vision technologies. Margolin
developed the technology in order to improve aircraft safety. Margolin never
refused to license the patents. When Margolin owned them he was never asked to
license them. NASA never asked Margolin how much he wanted for them. Margolin
spent several years contacting aerospace companies to promote his patents and
was rather uniformly ignored. Did NASA have something to do with that?
_________________________________________________________________
[Page 02642] [AV2-A52]
-----Original Message-----
From: Mike Abernathy [redacted (b)(6)]
Sent: Wednesday, September 01, 2004 11:45 AM
To: FEIN, EDWARD K. (JSC-HA) (NASA)
Cc: DELGADO, FRANCISCO J. (FRANK) (JSC-ER2) (NASA)
Subject: RE: US Patents 5566073 and 5904724
Hi Ed,
Happy to keep you involved. I appreciated that article you sent me on the
topic. The one thing that concerned me in the article is that I realized if
Alan just sends the claims analysis to the PTO without requesting a re-exam
then the owner will have the leisure to think up excuses for why this is not
so, and prepare a defense maybe even ask for his own re-exam. Yikes! If NASA
does not ask for the re-exam upon finding the prior art, we are basically
strengthening his position to sue NASA by allowing him the time to synthesize a
defense against the defects of his patent. It appears that Barry Gibbens is
ready to press forward, happily.
Have I sent you the claims analysis yet? Best regards,
Mike Abernathy
Rapid Imaging Software, Inc.
[redacted (b)(6)]
www.landform.com
www.visualflight.com
_________________________________________________________________
Let's attack Margolin and not
give him the chance to defend himself.
________________________________________________________________
[Page 2643]
[AV2-A53]
-----Original Message------
From: FEIN, EDWARD K. (JSC-HA) (NAS
Sent: Wednesday, September 01, 2004 11:19 AM
To: 'Mike Abernathy'
Subject: RE: US Patents 5566073 and 5904724
Barry Gibbens is a good man, Mike, and no, you haven't sent me the claims
analysis. I am pleased to learn that the Agency is moving on this.
-Ed
_________________________________________________________________
_________________________________________________________________
[Page 2643]
[AV2-A53]
-----Original Message-----
From: Mike Abernathy [redacted (b)(6)]
Sent: Wednesday, September 01, 2004 12:25 PM
To: FEIN, EDWARD K. (JSC-HA) (NASA)
Subject: RE: US Patents 5566073 and 5904724
Here it is.
Best regards,
Mike Abernathy
Rapid Imaging Software, Inc.
[redacted (b)(6)]
www.landform.com
www.visualflight.com
_________________________________________________________________
_________________________________________________________________
[Page 2643]
[AV2-A53]
-----Original Message-----
From: FEIN, EDWARD K. (JSC-HA) (NASA)
Sent: Wednesday, September 01, 2004 11:41 AM
To: 'Mike Abernathy'
Subject: RE: US Patents 5566073 and 5904724
thanks!
_________________________________________________________________
_________________________________________________________________
[Page 2643]
[AV2-A53]
RE: US Patents 5566073 and 5904724
From: Mike Abernathy [redacted (b)(6)]
To: 'FEIN, EDWARD K. (JSC-HA) (NASA)
Date: Sep 01 2004 - 12:44pm
Sir,
Could you read this and let me know what you think of it? I know it will evolve
a lot in Barry's hands – which is good. But I would like your thoughts on it
for my own and Frank's edification.
Best regards,
Mike Abernathy
Rapid Imaging Software, Inc.
[redacted (b)(6)]
www.landform.com
www.visualflight.com
_________________________________________________________________
_________________________________________________________________
[Page 2641]
[AV2-A51]
FW: US Patents 5566073 and 5904724
From: FEIN, EDWARD K. (JSC-HA) (NASA) [redacted (b)(6)]
To: RO, THEODORE U., JD (JSC-HA)
(NASA) [redacted (b)(6)] CATE, JAMES M., JD (JSC-HA) (NASA) [redacted (b)(6)]
CC: KRISHEN, KUMAR (JSC-HA) (NASA)
[redacted (b)(6)]
WHITTINGTON, JAMES (JSC-HA) (USA)-
(NASA) [redacted (B0(6)]
HAINES, DAVID D. (JSC-HA) [redacted (b)(6)]
HIEGER, COLLIN (JSC-HA) (UNK) [redacted (b)(6)]
LANE, HELEN W. (JSC-AD) (NASA) [redacted (b)(6)]
HAYES, GREG W. (JSC-AD) (NASA) [redacted (b)(6)]
ROAN, BERNARD J. (JSC-AL) (NASA) [redacted (b)(6)]
REMINGTON, DANIEL R. (DAN) (JSC-AL) (NASA) [redacted (b)(6)]
Date: Sep 01 2004 - 12:51 pm
Claims Analysis of Patent.doc - 2.1 MB - View in Outlook[redacted (b)(5)]
-Ed
_________________________________________________________________
Abernathy’s claim analysis was
widely distributed. However, NASA’s documents do not contain the Claim Analysis
itself or any responses to it.
There are some new players.
- James M. Cate is currently a Patent Attorney at Johnson Space Center.
- Theodore U. Ro is currently a Patent Attorney at Johnson Space Center.
- Kumar Krishen (JSC-HA) is currently Technology
Account Manager at Johnson
Space Center.
- David D. Haines (JSC-HA) is currently Technology
Account Manager at Johnson
Space Center.
- Collin Hieger (JSC-HA) (UNK) is current SBIR
Associate at Johnson
Space Center.
- Dr.
Helen W. Lane (JSC-AD) (NASA) is currently
National Aeronautics and Space Administration (NASA), Johnson Space Center
(JSC) Chief Nutritionist and Manager of the NASA JSC University Research
and Affairs Office.
- Greg W. Hayes (JSC-AD) (NASA) is currently Director
of Human Resources and Education at Johnson Space
Center.
- Bernard J. Roan (JSC-AL) (NASA) is currently Chief
Counsel of the Legal Office at Johnson
Space Center,
and provides in-depth legal support to the center's activities, including
satellite installations and offices.
- Daniel R. Remington (DAN) (JSC-AL) (NASA) was Deputy
Chief Counsel of the Legal Office at Johnson Space
Center.
_________________________________________________________________
[Page 2639] [AV2-A49]
-----Original Message-----
From: Barry V. Gibbens, LaRC [mailto:Barry.V.Gibbens@)NASA.GOV~
Sent: Wednesday, September 01, 2004 2:21 PM
To: FEIN, EDWARD K. (JSC-HA) (NASA)
Subject: RE: US Patents 5566073 and 5904724
Thanks Ed - I'll pass the word. Just for future reference, if any of us were to
apply for the job, how would you feel about tele-commuting from, say, the Bahamas?????
[redacted (b)(5)]
_________________________________________________________________
_________________________________________________________________
[Page 2639] [AV2-A49]
At 12:30 PM 9/1/2004 -0500, you wrote:
Thanks Barry ...
[redacted (b)(5)]
-Ed
Btw, Jim Cate is retiring at the end of the month, and we definitely will be
filling the slot. So please spread the word. Good things about JSC is the high
locality pay differential in Houston,
and the relatively low cost of living here. The downside is that the poor
person will have to deal with my bad a** on a daily basis.
Take care ...
_________________________________________________________________
_________________________________________________________________
[Page 2638] [AV2-A48]
RE: US Patents 5566073 and 5904724
From: FEIN, EDWARD K. (JSC-HA) (NASA [redacted (b)(6)]
To: Barry V. Gibbens, LaRC [redacted (b)(6)]
BCC: ROAN, BERNARD J. (NASA) [redacted (b)(6)]
Date: Sep 01, 2004 - 2:44pm
No need to telecommute from the Bahamas,
Barry. Nassau Bay is right across the street from JSC!
Check out http://www.nassaubay.com/. See -- we got it all! And please do
pass the word. I'd even risk the wrath of Linda and Kathy to snag one of you
guys.
[redacted (b)(5)]
-Ed
_________________________________________________________________
_________________________________________________________________
[Page 2636] [AV2-A46]
-----Original Message-----
From: Barry V. Gibbens, LaRC [mailt [redacted (b)(6)]
Sent: Wednesday, September 01, 2004 3:26 PM
To: FEIN, EDWARD K. (JSC-HA) (NASA)
Cc: Linda B. Blackburn
Subject: RE: US Patents 5566073 and 5904724
Very nice! I went to the Nassau
Bay website, and looked
under "New Things . . . Check It Out." Three of the highlights were
"Storm Preparedness Information," "Hurricane Tracking
Chart," and "You Can Now Pay Traffic Fines On Line." Sounds like
my kind of place!!!
BG
_________________________________________________________________
Linda Blackburn was Patent Counsel in the Office of Chief
Counsel, Langley Research Center.
She retired on Oct. 26, 2009.
_________________________________________________________________
[Page 2635] [AV2-A45]
RE: US Patents 5566073 and 5904724
From: FEIN, EDWARD K. (JSC-HA) (NASA [redacted (b)(6)]
To: Barry V. Gibbens, LaRC [redacted (b)(6)]
CC: Linda B. Blackburn [redacted (b)(6)]
Date: Sep 01 2004 - 4:33pm
Rats! I guess I'd should research things better before I blindly send them out.
Btw, the real Bahamas
get hurricanes too.
_________________________________________________________________
Although these last emails contain
personal banter the subject line is “US Patents 5566073 and 5904724” so it is
reasonable to assume that the redacted parts pertain to the patents, which is
why the redacted parts were redacted. These emails are post-decisional since
the decision to deny Margolin’s claim was made in July 2004.
28.
Despite NASA’s Plan to file a
Request for Re-Examination with the Patent Office, they didn’t do it.
It’s possible that NASA concluded
they did not infringe. However, they had already decided they did not infringe
when they decided to deny Margolin’s claim in July. Besides, NASA’s reason for
wanting to invalidate the Patents was to benefit their partners.
There is another possibility to
consider, which is that an analysis of Abernathy’s purported prior art did not
stand up to careful scrutiny. Thus, the patents would survive a Re-Examination
and come out of it even stronger.
Since NASA’s reason for wanting to
invalidate the Margolin patents was to benefit their partners, this places any
and all communications between NASA (or any NASA employee or anyone outside
NASA acting at NASA’s direction) and NASA’s partners (or anyone acting for
NASA’s partners) that relate to the Margolin patents, the Infringement Claim,
and Margolin’s FOIA request subject to Margolin’s FOIA request.
Not only are the documents
post-decisional the threshold issue under Exemption 5 is whether a record is of
the type intended to be covered by the phrase "inter-agency or
intra-agency memorandums" -- a phrase which appears to encompass only
documents generated by an agency and not documents circulated beyond the
executive branch. See United States Dep't
of Justice v. Julian, 486 U.S.
1, 19 n.1 (1988).
However, the Supreme Court shed
light on this issue when it ruled on the contours of Exemption 5's
"inter-agency or intra-agency" threshold requirement for the first
time in Department of the Interior v.
Klamath Water Users Protective Ass'n. 532 U.S. 1 (2001). In a unanimous
decision, the Court ruled that the threshold of Exemption 5 did not encompass
communications between the Department of the Interior and several Indian tribes
which, in making their views known to the Department on certain matters of
administrative decisionmaking, not only had "their own, albeit entirely
legitimate, interests in mind," (Klamath,
532 U.S. at 12) but also were "seeking a Government benefit at the expense
of other applicants." (Id.
at 12 n.4)
Thus, records submitted to the
agency by the Tribes, as "outside consultants," did not qualify for
attorney work-product and deliberative process privilege protection in the
case. (Id. at 16)
NASA partners, especially Abernathy, have an interest in
having U.S. Patents 5,566,073 and 5,904,724 declared invalid.
29. There
was no apparent activity in the case until two years later, in September 2006
when Robert Adams of Optima Technology Group contacted Mike Abernathy about
licensing the Margolin Patents. See Exhibit 24 at Appendix Volume 2 A59.
In the numerous exchanges between
Adams and Abernathy several things are apparent.
a.
Abernathy showed a deeply
flawed understanding of patents.
One of Abernathy’s themes is that
an autopilot is absolutely essential in flying a UAV, that the ‘724 patent does
not have an autopilot, and therefore, the ‘724 patent is “defective.”
Abernathy’s understanding of what constitutes a “defective” patent is
defective. See 35 U.S.C. 251.
For example, suppose Margolin were to get a patent for
1.
A powerplant for an automobile comprising:
a first spherical container
containing a fuel;
a smaller second spherical
container containing the same said fuel;
whereas said smaller second
spherical container is located in approximately the center of said first
spherical container;
whereas said fuel comprises
deuterated acetone substantially saturated with uranium hexafluoride gas;
whereas said second smaller
spherical container is made using a jacket of lithium-6 deuteride;
whereas cavitation fusion is used
to produce a fusion reaction in said smaller second spherical container;
whereas said fusion reaction in
said smaller second spherical container is amplified by said jacket of
lithium-6 deuteride and creates a fission reaction in said first spherical
container; and
whereas the heat from said fusion
reaction and said fission reaction is used to perform useful work.
Margolin’s patent would not be
defective because he failed to include windshield wipers for the automobile.
Also, Abernathy does not understand
the Doctrine of Equivalents or Contributory Infringement.
b.
Abernathy sent copies of
everything to NASA and had a conference call on the matter.
c.
In his correspondence,
Abernathy harps on the theme, “provide evidence that the invention was built.”
One of the requirements for a patent is that the Specification describe the
claimed invention in enough detail that it may be built by a Person having
Ordinary Skill in the Art (POSITA) without undue experimentation.
In the proposed example, Margolin
would not have to build the hybrid fusion/fission powerplant in order to patent
it. All he would have to do is describe it in enough detail so a POSITA could
build it without undue experimentation.
Patents do not exist in order to
benefit inventors. Patents exist in order to benefit Society. The Founding
Fathers considered the matter important enough to put it in the U.S.
Constitution.
Article I, Section 8 lists one of
the powers of Congress:
To promote the Progress of
Science and useful Arts, by securing for limited Times to Authors and Inventors
the exclusive Right to their respective Writings and Discoveries;
Authors get a limited-time monopoly
to their work through Copyrights. Inventors get a limited-time monopoly to
their work through patents. (Authors get a much better deal.)
Patents aren’t free. In return for
a patent you have to fully disclose your invention. That is how patents Promote
the Progress of Science and useful Arts. Note that it doesn’t say Promote
the Economic Interests of Big (or small) Companies.
Without Patents the only way to
protect your invention is to keep it a secret. You might think, “How can you
sell something and also keep it a secret? Someone can buy one and reverse
engineer it.”
Oftentimes that is true, but there
are many products where the secret is in how it was manufactured. That is
especially true in the Chemical Industry.
Whether you build a working
prototype or not is irrelevant. Whether you produce a product or not is
irrelevant. The test is whether the application Promotes the Progress of
Science and useful Arts. When you comply with the Patent Rules without
building a prototype, it is called Constructive Reduction to Practice. Many big
companies get patents for things they never build or produce.
Again, this complicated email chain
will be unwrapped in an attempt to make sense of it.
_________________________________________________________________
[Page 00080] [AV2-A74]
From: Robert Adams [redacted
(b)(6)]
Sent: Tuesday, September 19, 2006 7:53 AM
To: [redacted (b)(6)]
cc: [redacted (b)(6)]
Subject: [Norton AntiSpam] Rapid Imaging Software, Inc. patent infringement
It has come to our attention that your company provides Synthetic Vision to fly
UAV both in real time and in simulation.
_____
September 19, 2006
Michael F. Abernathy
Rapid Imaging Software, Inc.
[redcated (b)(6)]
[redacted (b)(6)]
Sent via US MAIL, FAX & EMAIL
Mr. Abernathy,
It has come to our attention that your company provides Synthetic Vision to fly
UAV both in real time and in simulation.
I am sure that Mr. Francisco Delgado of NASA and your other clients would agree
with your company having a proper license of our intellectual property.
Hence as a legal formality, we are inviting your company to license our
technology seeing that your company is already commercially using and selling
said technology as covered by our IP listed below:
United States Patent 5,566,073 Margolin October 15, 1996 Pilot aid using a
synthetic environment
United States Patent 5,904,724 Margolin May 18, 1999, Method and apparatus for
remotely piloting an aircraft
We are pleased that you recognize the value of using Synthetic Vision to allow
UAV's to See-and-Avoid other aircraft; this is covered by our patents as noted
above.
Please contact us so that we can a proper legal license with our
attorneys for your use of our technology and/or you may contact our attorneys
(HYPERLINK) [redacted (b)(6)] to arrange a proper license of said
intellectual property. You have 15 days to do so.
Sincerely,
Robert Adams, CEO
Optima Technology Group
RA/cp
_________________________________________________________________
_________________________________________________________________
[Page 00079] [AV2-A73]
From: Mike Abernathy [redacted (b)(6)]
Sent: Sunday, September 24, 2006 4:29 PM
To: 'Robert Adams'
Subject: RE: [Norton AntiSpam] Rapid Imaging Software, Inc. patent
infringement
Dear Mr. Adams,
I have just returned from business travel, and have not had a chance to look
over your communications in detail. Thank you very much for bringing your
concerns to our attention. Let me assure you that we will do everything in our
power, now and in the future, to avoid infringement of these or any patents. We
have already begun another careful analysis of them and will act swiftly upon
what we learn, should any problems be found. We have been aware of these
patents for some years and have not ever infringed upon them, and will not do
so. When we first learned of them we carefully examined our activities and
those of our customers to make sure there was no possible infringement of them.
As soon as we learned of it, we also informed the legal departs of our major
customers to alert them to the existence of USP 5,904,724, but so far no UAV
manufacturers have been seriously interested in offering synthetic vision for
their UAV pilot stations.
We discovered that the system described the in patent pertaining to remotely
piloted vehicles USP 5,904,724 contains an entire clause in claim 1 that did
not exist in the X38 or other UAVs that we have seen – this is the final
paragraph of clause 1 regarding the method for handling delay in the control
loop by "adjusting control sensitivity". This simply is not present
in any form in any vehicles with which we have experience. Since all claims of
this patent include this clause by reference, that patent is not relevant to
these vehicles because none of them have this feature.
More important however, is that all UAV control systems with which we are
familiar require a device called an autopilot which is not contemplated at all
in the subject patent. This device is similar to ones in modern manned
aircraft, but it is used to control the aircraft flight in the pitch, heading,
and roll axes. On UAVs, the communications delay is not handled by determining
the delay and adjusting the control sensitivity as Margolin prescribes.
Instead, an autopilot is installed onboard the aircraft where it senses changes
in pitch, heading, and roll locally on board the aircraft. The pilot still
makes control inputs to fly the airplane, but only via the autopilot on board
the aircraft. The autopilot corrects attitude drift instantaneously avoiding
the problem of substantial communication delays, and allows the pilot to
control the vehicle in a more stable manner. Most important, the autopilot is
absolutely required to deal with the frequent communications outages which
occur . between the UAV and the ground control segment (This can be anywhere
from a second to an hour in length, generally). In the system of Margolin, a
communications outage would often result in the loss of the aircraft, because
the pilot would be unable to correct attitude drift during communication link
loss and the air vehicle would go out of control and could crash. In the last
decade of working with UAVs never have I witnessed a flight in which the
communication link was not lost at least once during the flight. If the control
communication link goes down, no control inputs can be made to the aircraft
from the pilot on the ground, but the autopilot keeps the airplane from
crashing by flying straight and level or gently banking until the link is
restored. The system of Margolin does not recognize the problem of link loss,
and fails to offer any solution. The autopilot functionality can be located in
various components in the X38 it was in the on board GNC (Guidance Navigation
and Control) computer, as I recollect.
There is another on-board component called a SAS or Stability Augmentation
System found on most large modern UAVs such as Predator, and which performs
additional real-time stabilization to that done by the autopilot. Again, the
SAS is not contemplated by the Margolin patent, yet is required to dampen
control system oscillations in order to safely operate a UAV in systems that
may suffer from communications delays to remote user control inputs. There are
many more differences that we found when we first examined it, but as you can
see we have never worked with a vehicle upon which your system could have been
implemented and safely flown, and therefore we realized that it is impossible
for us to have infringed this patent 5,904,724. You may easily independently
verify the fact of these profound and fundamental differences from your system
by examining the printed published materials regarding UAV control system and
NASAs many publications on X-38 control systems.
We have never allowed our software to be used as an aid in piloting manned
aircraft and thus cannot have infringed 5,566,073. If you aware of anyone doing
this with our software, kindly inform us immediately, and we will ask them to
desist.
Finally, let me set your mind at ease by informing you that our software
product license currently explicitly contains the following clause: "The
user is prohibited from using this software to pilot manned or unmanned
aircraft." Alas, the requirements of our current company insurance policy,
combined with the profound lack of a market for this possible application of
our technology facilitated this business decision. Your letter said we
recognize the "value" of this technology, but in view of the current
situation "lack of value" is probably more appropriate.
We will get back to you just as soon as we have had a chance to study these
patent claims further. For now, is there anything else that our company can
reasonably do in regard to the concern that you expressed?
Sincerely,
Mike Abernathy
Rapid Imaging Software, Inc.
_________________________________________________________________
_________________________________________________________________
[Page 00096] [AV2-A90]
From: Mike Abernathy
[redacted (b)(6)]
Sent: Sun 9/24/2006 6:38 PM
To: Fein, Edward K. (JSC-AL); Delgado, Francisco J. (JSC-ER2)
Subject: Rapid Imaging Software, Inc. patent infringement
Gentlemen,
I strongly believe that these two patents are defective, but more important I
feel strongly that NASA and RIS did not infringe either one of them, in spite
of these accusations.
I would like to ask for your help urgently since these people are threatening
to sue us and since they have falsely accused us of infringement.
I therefore would like to ask both of you to read my letter attached below
which has been sent to Mr. Adams, to make sure that I am stating things
properly. Would it be possible for me to call you tomorrow on the phone?
Mike Abernathy
Rapid Imaging Software, Inc.
{ copy of email sent to Robert Adams at 5:29pm }
_________________________________________________________________
_________________________________________________________________
[Page 00096] [AV2-A90]
RE: Rapid Imaging Software, Inc.
patent infringement
From: Delgado, Francisco J. (JSC-ER2) [redacted (b)(6)]
To: Mike Abernathy [redcated (b)(6), Fein, Edward K. (JSC-AL)
Date: Sep 25 2006 - 1:13am
Please work with Mr. Fein on a time to call. I can 'sneak' away from any
activity tomorrow to join a conference call. thanks,
Frank
_________________________________________________________________
_________________________________________________________________
[Page 00095] [AV2-A89]
RE: Rapid Imaging Software, Inc.
patent infringement
From: Fein, Edward K. (JSC-AL) [redacted (b)(6)]
To: Delgado, Francisco J.(JSC-ER2) [redacted (b)(6)], Mike Abernathy [redacted
(b)(6)], Kennedy, Alan [redacted (b)(6)]
Date: Sep 25 2006 - 8:55am
[redacted (b)(5)]
Edward K. Fein
Deputy Chief Counsel/
Intellectual Property Counsel
NASA Johnson Space Center
[redacted (b)(6)]
_________________________________________________________________
_________________________________________________________________
[Page 00095] [AV2-A89]
RE: Rapid Imaging Software patent
infringement
From: Fein, Edward K. (JSC-AL [redacted (b)(6)]
To: Mike Abernathy [redacted (b)(6)], Delgado, Francisco J.(JSC-ER2), [redacted
(b)(6)] Kennedy, Alan J. (HQ-MC000) [redacted (b)(6)]
Date: Sep 25 2006 - 9:59am
Thanks, Mike!
_________________________________________________________________
_________________________________________________________________
[Page 00091] [AV2-A85]
From: Robert Adams [redacted
(b)(6)]
Sent: Monday, September 25, 2006 8:55 AM
To: 'Mike Abernathy'
Subject: RE: Rapid Imaging Software, Inc. patent infringement
Mike,
Thanks for your email, I will forward it today over to my patent and review
legal team. Once they complete a review of your comments, I will give you a
ring on the phone and a response via the post and/or attorneys.
Respectfully,
Robert Adams
_________________________________________________________________
_________________________________________________________________
[Page 00091] [AV2-A85]
From: Mike Abernathy [redacted
(b)(6)]
Sent: Monday, September 25, 2006 10:32 AM
To: Fein, Edward K. (JSC-AL); DELGADO FRANCISCO J. (FRANK)
Cc: Kennedy, Alan J. (HQ-MC000)
Subject: FW: Rapid Imaging Software, Inc. patent infringement
FYI
Mike Abernathy
Rapid Imaging Software, Inc.
[copy of Adams email 8:55AM]
_________________________________________________________________
_________________________________________________________________
[Page 00091] [AV2-A85]
From: Fein, Edward K. (JSC-AL)
To: Mike Abernathy [redacted (b)(6)] DELGADO FRANCISCO J. (FRANK) [redacted
(b)(6)]
CC: Kennedy, Alan J. (HQ-MC000) [redacted (b)(6)]
Date: Sep 25 2006 - 10:38am
Thanks, Mike.
-Ed
_________________________________________________________________
_________________________________________________________________
[Page 00082] [AV2-A76]
From: Mike Abernathy [redacted
(b)(6)]
Sent: Monday, September 25, 2006 10:08 AM
To: 'Robert Adams'
Subject: question
Robert,
Thanks for your offer to call but I am still getting over throat surgery from 2
weeks ago so my phone is forwarded, but I look forward to email from you and/or
your attorneys.
In trying to understand the value of your IP I would like to ask 2 questions
regarding USP 5,904,724. Was this system ever built? Was it ever flight tested?
Of course you need not answer, but it really would be helpful in understanding
what is required to get your technology to market.
Mike Abernathy
Rapid Imaging Software, Inc.
_________________________________________________________________
_________________________________________________________________
[Page 00082] [AV2-A76]
FW: question
From: Mike Abernathy [redacted (b)(6)]
To: DELGADO FRANCISCO J. (FRANK) [redacted (b)(6)], Fein, Edward K. (JSC-AL),
[redacted (b)(6)], 'Kennedy, Alan J. (HQ-MC000)'[redacted (b)(6)] [redacted
(b)(6)]
Date: Sep 25 2006 - 11:44am
One more FYI.
Mike Abernathy
Rapid Imaging Software, Inc.
[copy of email sent to Robert Adams]
_________________________________________________________________
_________________________________________________________________
[Page 00073] [AV2-A67]
From: Robert Adams [redacted
(b)(6)]
Sent: Monday, September 25, 2006 12:26 PM
To: 'Mike Abernathy'
Subject: Privileged and Confidential Settlement Communications Protected Under
Rule 408 of the Federal Rules of Evidence
Privileged and Confidential Settlement Communications Protected Under Rule 408
of the Federal Rules of Evidence
Mike,
My legal team has read your response and it is a personal shame since you would
rather cut and run verse facing the facts and take a license for past and
future business, as I am sure it would be substantially less then litigation.
As you have been made aware in our prior communications, among other inventions,
the Patents protect a number of features that are implemented in products
capable of flying any and all UAV's (1.3) remotely and/or using Synthetic
Vision and/or using a synthetic environment.
1.1 "Patent Portfolio" shall mean the portfolio consisting of United
States Patent Numbers 5,904,724 (Method and Apparatus for Remotely Piloting an
Aircraft), 5,566,073 (Pilot Aid Using a Synthetic Environment), and those
future United States
patents that may be added in accordance with the covenants and warranties.
1.2 "RPV" shall mean "remotely piloted
vehicle." A "remotely piloted aircraft" is an RPV.
"UAV" shall mean "unmanned aerial vehicle." RPV is an older
term for UAV. "UCAV" shall mean "Unmanned Combat Aerial
Vehicle." UCAV is also sometimes defined as an "Uninhabited Combat
Aerial Vehicle." UCAV is a UAV that is intended for use in combat. UCAS
means "Unmanned Combat Air System."
1.3 "Synthetic Vision" is the current term for
"Synthetic Environment" and is the three dimensional projected image
data presented to the pilot or other observer.
Of the ten companies responsible for the establishment of UAV Specifications or
standard, eight of those companies sell UAV-Devices under brands they control,
and each of those companies, i.e., Boeing Aerospace; Lockheed; Nakamichi
Corporation; General Atomics Corporation; L-3 and Jacor Corporation; Raytheon;
and Geneva Aerospace, pay Optima running royalties for the above referenced
patents.
The substantial terms and conditions of our licensing Agreement: i) resulted
from negotiations with the market leading manufacturers of UAV's; ii) are
subject to most favored nation clauses; and iii) are, therefore, not
negotiable.
The Agreement i) is exceedingly fair; ii) does not obligate Infringer to
anything more than an industry accepted reasonable royalty for the Patents;
iii) does not obligate Infringer to anything more than an industry accepted
reasonable terms; and iv) may be canceled by Infringer at any time.
Mike, there is no reason to permit Infringer (Your company) to further drag on
the execution of said Agreement based on the facts present on the infringement
matter.
Infringer must appreciate that the Patents cover a range of different
inventions required to implement the UAV using Synthetic Vision Specifications;
and there exists pending divisions of the Patents having claims that are read
on by implementation of the UAV Specifications.
Infringer principal competitors have appreciated the exceptional litigation
strength and flexibility of my patent portfolio and have decided to accept a
license rather than expose themselves to an injunction.
Infringer must appreciate that if litigation between the parties is initiated:
i) the matter will immediately become personal for both parties; ii) I do not
have to account to any other person; and iii) no license or settlement of any
kind will ever be possible under any of my intellectual properties. Infringer's
competitors require that Infringer be either licensed or enjoined.
I have resolved myself to this course of action in the event an agreement
reached shortly, I firmly believe that enjoining Infringer from selling
UAV-Devices will not result in lost royalties; and it is in Optima's long-term
interests to make an example of a company that has refused to take a license.
Anyone who is fully knowledgeable of the strength and scope of my patent
portfolio, and who appreciates the risk-taking and tenacity that I have
demonstrated, would not, in light of the terms being offered, recommend
jeopardizing the UAV business Infringer enjoys in the U.S.
1.
I have just returned from business travel, and have not had a chance to look
over your communications in detail. Thank you very much for bringing your
concerns to our attention. Let me assure you that we will do everything in our
power, now and in the future, to avoid infringement of these or any patents. We
have already begun another careful analysis of them and will act swiftly upon
what we learn, should any problems be found. We have been aware of these
patents for some years and have not ever infringed upon them, and will not do
so. When we first learned of them, we carefully examined our activities and
those of our customers to make sure there was no possible infringement of them.
As soon as we learned of it, we also informed the legal departs of our major
customers to alert them to the existence of USP 5,904,724, but so far no UAV
manufacturers have been seriously interested in offering synthetic vision for
their UAV pilot stations.
RIS own admission they knew about '724 will go to show that their infringement
was willful, which means treble damages Robert. (They probably found out about
it when NASA interviewed Jed about their X-38 project.) We will find out at
trail and/or during the discover phase.
From their web site: http://www.landform.com/
SmartCam3D provides unparalleled situation awareness for UAS sensor operators.
It fuses video with synthetic vision to create the most powerful situation
awareness technology currently available. SmartCam3D is an augmented reality
system that has been developed, flight tested, and deployed in the most
demanding conditions including combat, and as a result it is highly evolved
technology which is in use today around the world. The reason that SmartCam3D
is so popular is simple: it makes sensor operators more effective, and reduces
the target response time. SmartCam3D is deployed with US Army Shadow UAV, and
is at present being integrated to the USAF Predator, as well as the Army
Warrior UAS. SmartCam3D is the war fighter's choice for sensor operator
situational awareness.
Improving a patented invention by adding something to it (in this case fusing
video with synthetic vision) is still infringement. Indeed, you may be able to
patent the improvement. However, you may not practice the improved invention
without the permission of the original patent holder. (It also means that the
holder of the original patent may not practice your improvement without your
permission.)
Since they publicly admit SmartCam3D is being used with US Army Shadow, USAF
Predator, and Army Warrior his statement "no UAV manufacturers have been
seriously interested in offering synthetic vision for their UAV pilot
stations" is obviously false.
Also from their web site:
Software License Changes
RIS, Inc. changed insurance carriers, and effective September 1st, 2006 we
updated our Software User License agreement. It now states that "The user
is prohibited from using this software to pilot manned or unmanned
aircraft." Our licenses have always prohibited use of our software for
piloting manned aircraft. As you know, we had hoped that we would find a market
for our UAV Glass Cockpit Product line. However, there is simply not sufficient
market interest for us to bring such a product to market at this time, so we have
decided not to release it. As a small company, we need to focus on our energy
on the Sensor Operator and Intelligence Analyst at this time.
He is saying that his product should not be used for the very purpose it being
advertised, sold, and used for. Lame. And it doesn't get him off the hook as he
is still legally liable.
Since it did not state this until September 1, 2006, he has started to take
this seriously, and he is clearly worried thus, he changed the terms to try to
reduce the liability. I will have our team use wayback site and pull up the old
Software User License agreement prior to Sept 1, 2006 this is when I bet they
made all their sales and that is what OTG would be entitled too as well.
Here is a short lesson on infringement for Mike.
From: http://inventors.about.com/library/bl/toc/bl patent-infringement.htm
Text Box: Infringement can be direct, indirect, or contributory. Anyone who
makes, uses, or sells the patented invention is a direct infringer. If a person
actively encourages another to make, use, or sell the invention, the person so
inducing is liable for indirect infringement. Contributory infringement can be
committed by knowingly selling or supplying an item for which the only use is
in connection with a patented invention. Good faith or ignorance is no defense
for direct infringement, but it can be for indirect or contributory
infringement. The remedies for infringement consist of: 1. Injunctive relief,
2. damages (including treble damages for willful infringement),
3. attorneys' fees in some cases, and
4. court costs.
2.
We discovered that the system described the in patent pertaining to remotely
piloted vehicles USP 5,904,724 contains an entire clause in claim 1 that did
not exist in the X38 or other UAVs that we have seen — this is the final
paragraph of clause 1 regarding the method for handling delay in the control
loop by "adjusting control sensitivity". This simply is not present
in any form in any vehicles with which we have experience. Since all claims of
this patent include this clause by reference, that patent is not relevant to
these vehicles because none of them have this feature.
The clause he is referring to is:
a set of one or more remote flight controls coupled to said computer for
inputting said flight control information, wherein said computer is also for
determining a delay time for communicating said flight data between said
computer and said remotely piloted aircraft, and wherein said computer adjusts
the sensitivity of said set of one or more remote flight controls based on said
delay time.
Time delays in a control system are unavoidable. Normally, a control system has
fixed time delays and the system is designed to operate properly with these
time delays. Because of the complexity of a UAV system these time delays may
not be known at the time the system (including the control laws) are designed.
These time delays may also change during a mission due to the communications
path changing. If the system does not properly deal with these changing time
delays it will lead to pilot-induced oscillation and there is a good chance the
aircraft will crash.
Anyone designing a UAS that does not adjust for changing time delays is an
idiot. I don't think the people making UAVs are idiots. That does not relieve
him of contributory infringement. It is likely that these time delays are dealt
with as part of the control law system which Abernathy might not be privy to
and thus a court order will provide us his insider info.
3.
More important however, is that all UAV control systems with which we are
familiar require a device called an autopilot which is not contemplated at all
in the subject patent. This device is similar to ones in modern manned
aircraft, but it is used to control the aircraft flight in the pitch, heading,
and roll axes. On UAVs, the communications delay is not handled by determining
the delay and adjusting the control sensitivity as Margolin prescribes.
Instead, an autopilot is installed onboard the aircraft where it senses changes
in pitch, heading, and roll locally on board the aircraft. The pilot still
makes control inputs to fly the airplane, but only via the autopilot on board
the aircraft. The autopilot corrects attitude drift instantaneously avoiding
the problem of substantial communication delays, and allows the pilot to
control the vehicle in a more stable manner.
Most important, the autopilot is absolutely required to deal with the frequent
communications outages which occur between the UAV and the ground control
segment (This can be anywhere from a second to an hour in length, generally).
In the system of Margolin, a communications outage would often result in the
loss of the aircraft, because the pilot would be unable to correct attitude
drift during communication link loss and the air vehicle would go out of
control and could crash. In the last decade of working with UAVs never have I
witnessed a flight in which the communication link was not lost at least once
during the flight. If the control communication link goes down, no control
inputs can be made to the aircraft from the pilot on the ground, but the
autopilot keeps the airplane from crashing by flying straight and level or
gently banking until the link is restored. The system of Margolin does not
recognize the problem of link loss, and fails to offer any solution. The
autopilot functionality can be located in various components in the X38 it was
in the on board GNC (Guidance Navigation and Control) computer, as I recollect.
The fact that '724 does not explicitly teach an autopilot is irrelevant. Adding
an autopilot to '724 is still infringement, just as adding a video overlay is
infringement.
There is also the matter of the Doctrine of Equivalence. See attached file
patentsl.pdf Consider Column 2, lines 12-18:
The computers in the system allow for several modes of operation. For example,
the remote aircraft can be instructed to fly to given coordinates without
further input from the remote pilot. It also makes it possible to provide
computer assistance to the remote pilot. In this mode, the remote flight
control controls absolute pitch and roll angles instead pitch and roll rates
which is the normal mode for aircraft.
That legal sounds like a defined autopilot to me and that as we need to show
infringement at the Markman hearing..
4.
There is another on-board component called a SAS or Stability Augmentation
System found on most large modern UAVs such as Predator, and which performs
additional real-time stabilization to that done by the autopilot. Again, the
SAS is not contemplated by the Margolin patent, yet is required to dampen
control system oscillations in order to safely operate a UAV in systems that
may suffer from communications delays to remote user control inputs. There are
many more differences that we found when we first examined it, but as you can
see we have never worked with a vehicle upon which your system could have been
implemented and safely flown, and therefore we realized that it is impossible
for us to have infringed this patent 5,904,724. You may easily independently
verify the fact of these profound and fundamental differences from your system
by examining the printed published materials regarding UAV control system and
NASAs many publications on X-38 control systems.
Again, adding something to '724 is still infringement.
As far as examining the control systems on NASA's X-38 project is concerned, in
a telephone conversation with NASA's Alan Kennedy in the Office of the General
Counsel on February 9, 2006, he repeated his claim that, "The X-38 does
fly." NASA has a video of the X-38 (flying) on its web site. (See
http://www.dfrc.nasa.qov/Gallery/Movie/X-38/HTML/EM-0038-
5.
We have never allowed our software to be used as an aid in piloting manned
aircraft and thus cannot have infringed 5,566,073. If you aware of anyone doing
this with our software, kindly inform us immediately, and we will ask them to
desist.
We still have him on infringing on '724.
6.
Finally, let me set your mind at ease by informing you that our software
product license currently explicitly contains the following clause: "The
user is prohibited from using this software to pilot manned or unmanned
aircraft." Alas, the requirements of our current company insurance policy,
combined with the profound lack of a market for this possible application of
our technology facilitated this business decision. Your letter said we
recognize the "value" of this technology, but in view of the current
situation "lack of value" is probably more appropriate.
_________________________________________________________________
_________________________________________________________________
[Page 00073] [AV2-A67]
latest from Optima
From: Mike Abernathy [redacted (b)(6)]
To: FEIN, EDWARD K. (JSC-HA) (NASA) [redacted (b)(6)]
Kennedy, Alan J. (HQ-
MCOOO)
Date: Sep 25 2006 - 3:08pm
* image002.gif - 6.9k - View in Outlook
Ed,
This has not blown over. We would rather lose our company than see NASA hurt by
this. Ed, it appears that RIS situation is hopeless. They know that we did not
infringe, yet they continue because they know that we lack the funds to fight
them. Our situation appears hopeless but we cannot accept a license for
technology that we know is dangerous to the public, so I cannot accept this
deal that they have offered.
Let us know what you think as soon as possible.
Mike Abernathy
Rapid Imaging Software, Inc.
_________________________________________________________________
_________________________________________________________________
[Page 00072] [AV2-A66]
From: Mike Abernathy [redacted
(b)(6)]
Sent: Monday, September 25, 2006 1:29PM
To: 'Robert Adams'
Subject: License
Please tell the legal team thanks
for getting back to us right away - we appreciate it.
You have asked us to consider licensing and this we are now doing. In the
interest of due diligence as a prospective licensor of your technology, we ask
that you provide us with the following information about the subject invention:
Was this invention ever constructed? If so when, where, and how?
Was this invention ever flight tested? Please provide us with the name of the
Pilot in Command, the responsible Flight Test Engineer, the model and block
number of the vehicle and GCS, and the range or location at which such testing
might have taken place. Also, indicate the dates of such testing. If flight
test reports are available please provide them to us, as well.
I know that you are anxious for us
to consider your license offer, please provide us with this information.
Mike Abernathy
Rapid Imaging Software, Inc.
_________________________________________________________________
_________________________________________________________________
[Page 00072] [AV2-A66]
From: Robert Adams [mailto:
[redacted (b)(6)]
Sent: Monday, September 25, 2006 2:49 PM
To: 'Mike Abernathy' Subject: RE: license
Mike,
Neither the company nor I are in any way anxious in signing any more
licensees's as we have many already, but as you know we must protect our
patents in order to preserve said Intellectual Property.
As to your questions, they do not relate to a license and/or a licensee. Our
Intellectual Property has been tested in court and is proven solid by far such
standards the Federal Court including the Federal Appeals Court. In addition,
as to matters of disclosure, all such development at OTG and by our licensee is
covered by NDA's.
Should you wish to challenge such, then I advise you to seek proper legal
counseling as we are not an attorney nor will ours advice you on such a
matters.
Your company has clearly infringed and OTG must protect itself against such matters
just as your company would do if in the same position.
Robert Adams
_________________________________________________________________
_________________________________________________________________
[Page 00071] [AV2-A65]
From: Mike Abernathy [redacted
(b)(6)]
Sent: Monday, September 25, 2006 2:26 PM
To: 'Robert Adams'
Subject: RE: license
Robert,
You have offered to license your technology to our company. You have stated
that this technology is useful for "see and avoid applications" for
UAVs which is an interesting market arena. We are making a good faith effort to
consider your offer. We must know whether this technology has been brought into
existence and whether it was ever test flown as a matter of due diligence.
We are not asking these questions out of idle curiosity and we certainly not
trying to be difficult — we need this information in order to know the market
value of the technology to our users, and there are certain elements of the
method that we have concerns about. A flight test report — even if the system
was implemented on a model airplane — will almost certainly allay our concerns
and we can get on with this. The fact of whether or not this technology has
been tested does not require an NDA.
Robert, throughout our dealings I have been honest and responsive to all of
your requests, perhaps at peril to our company. I now ask you to please
reciprocate my efforts in a small way and provide the requested information so
that we may consider your offer of license.
Mike Abernathy
Rapid Imaging Software, Inc.
_________________________________________________________________
_________________________________________________________________
[Page 00070] [AV2-A64]
From: Robert Adam
[redacted (b)(6)]
Sent: Monday, September 25, 2006 3:51 PM
To: 'Mike Abernathy'
Subject: RE: license
Mike,
Let me try and be clear, all such development at OTG on behalf and or/or by our
licensee is covered by NDA's and thus our company can be sued should we violate
such agreements. As to your company's infringement of our patents, since that
was clearly not covered by a NDA with us; please provide said information in
detail:
Other then those items listed at your website and NASA's, what other projects
did you do that infringed on our invention? If so when, where, and how?
Who at NASA flight-tested your product that used our invention? Please provide
us with the name of the Pilot in Command, the responsible Flight Test Engineer,
the model and block number of the vehicle and GCS, and the range or location at
which such testing might have taken place with NASA and others. Also, indicate
the dates of such testing. If flight test reports are available, as well please
provide them to us.
Mike, I have no time to play games with someone who clearly infringes and
thinks nothing of respecting our IP.
I will forward said matter to our legal department for further research and
filing in accordance with the Federal laws. Please have your legal IP counsel
contact our attorneys.
Robert Adams
_________________________________________________________________
_________________________________________________________________
[Page 00069] [AV2-A63]
From: Mike Abernathy [mailto
[redacted (b)(6)]
Sent: Monday, September 25, 2006 6:25 PM
To: FEIN, EDWARD K. (JSC-HA) (NASA); DELGADO FRANCISCO J.
(FRANK) v); [redacted (b)(6)]
Kennedy, Alan J. (HQ-MC000); [redacted (b)(6)]; 'Moore, Thomas, Mr, OSD-ATL';
'Davey, Jon (Bingaman)'
Subject: and the very last communication of the day
Hi All,
Let me summarize what I think has just happened to our company.
In late 1995 we introduce our LandForm synthetic vision system to the market as
COTS software product.
In 1997/8 we sell this to NASA and together we are the first people on earth to
create a synthetic vision flight guidance system for a remotely piloted
vehicle. Starting in 1998 the X38 is captive carried and test flown using this
system. We documented our success in the attached document written in 1998 and
published in early 1999. It was my privilege to be at Edwards when it happened,
and is the highlight of my career until the program is cancelled in 2002.
We go on and demonstrate that our software can be used as pilot aid to other
UAVs including Predator, Shadow, Tern, and many more. We receive no interest in
this application, but instead they use it for sensor operator stations. It is a
commercial success and people say good things about it. It is sold to mostly to
a commercial UAV manufacturer named AAI Corporation. Many tests are done and
the military guys all like it.
In 1999 the patent office issues a patent to a former Atari employee named
Margolin for a Synthetic Environment for Remotely Piloted Vehicle. He had
evidently applied for it in 1996. Shortly thereafter he begins to complain to
NASA that they and RIS infringed upon his patent presumably by flying a system
2 years before he received his patent. Is this a joke?
In 7 years he never so much as asked RIS about using his technology. Margolin
as best I can tell never built this system and never test flew it. Can't say as
I blame him because his system looks to me like a crater looking for an
address. It cannot be safely operated in the form patented (no autopilot). No
one is even stupid enough to build it this way, not even him.
Sometime after that, I am alerted to the patent. I read it, but since there are
major differences in the way X-38 worked with our software, I felt strongly
that we had not infringed. I provide this information, plus evidence of prior
art to NASA legal counsel. I am troubled because really I can't see how his
system could fly because it would fail during link loss. Margolin also had a
patent on synthetic vision for manned aircraft (if you can imagine) and we
found copious prior art for that. I am also troubled because I never hear that
the request for reexamination has been sent in by NASA.
Last week I received an email from Optima technology group threatening (thinly
veiled) to destroy our relationships with our customers and sue us if we don't
license their technologies. We explain that we do not sell software for use in
piloting unmanned aerial vehicles any more owing to insurance which is true. We
had demonstrated this in the past, but there really is not much market that we
could see. We also explained that we had not infringed and why we thought we
had been respectful of their patent, but they just tried to make it look like
we infringed. But we did not.
They know we cannot withstand the onslaught of their lawsuits, even though we
are clearly and obviously not guilty of infringement. They think that we will
have to fold and accept their license, but we cannot do this because they are
legal blackmailers, and because they are selling defective technology. If we
give in, then they will just destroy some other little companies they way they
did ours. And we cannot let anyone pay them off for us, because that just gives
them funds to go destroy another company. For many years our company has tried
to provide an innovative product with an excellent value and never compromise
our integrity. I cannot let this nonsense bring that to an end by pretending
that we are licensing technology when what they are selling is a fraud.
When I asked politely if their system has ever been tested Mr. Adams simply
tells us to go get a lawyer, he is referring the matter for filing. I felt that
it was not unreasonable to ask to know this but it really made him furious.
Anyway I told him to tell it to our lawyer Mr. Ben Allison of Sutinfirm with
whom I shall meet tomorrow. Tonight they said that they will issue a cease and
desist order, which I believe means that we will be unable to sell our software
anymore which will destroy our income stream and that will be it. I can't waste
anymore time on this now. It is time for me to get back to work on things that
matter for our users.
I have a docs appointment tomorrow at 8-10 local time. I had throat surgery
recently so I really can't talk and frankly I find I tend to break into tears
very frequently when I try to do so. But I want you all to know that I will
stand firm until it is over. What would the soldiers who have used our software
in combat think of me if I gave ground? Then bring it on.
I know it sounds bad for us right now, but remember that whatever happens to us
no one can take away the honor and the privilege of working with NASA, the OSD,
and all the other completely excellent people with whom we have worked.
Mike Abernathy
Rapid Imaging Software, Inc.
Attached are the other communications from them.
_________________________________________________________________
Note that Abernathy sent a copy of
the above email to the Office of the Secretary of Defense in the person of Mr. Thomas Moore (OSD-ATL). “OSD” indicates he is with the Office of the
Secretary of Defense. “ATL” might mean Atlanta,
but it probably means Acquisition, Technology & Logistics (AT&L).
He also sent a copy to his U.S.
Senator Jeff Bingaman (D-NM) in the person of Jon Davey. Jon Davey is Senator Bingaman's Legislative
Assistant for issues related to the military and veterans' affairs. He
graduated from Carleton
College in 2003 with a
bachelor's degree in International Relations.
_________________________________________________________________
[Page 00068] [AV2-A62]
FW: and the very last communication
of the day
From: Fein, Edward K. (JSC-AL) [redacted (b)(6)]
To: Kennedy, Alan J. (HQ-MC000) [redacted (b)(6)]
CC: Borda, Gary G. (HQ-MC000) [redacted (b)(6)]
Date: Sep 26 2006 - 8:11 am
[redacted (b)(5)]
[redacted (b)(5)]
_________________________________________________________________
_________________________________________________________________
[Page 00067] [AV2-A61]
From: Robert Adams [redacted (b)(6)
]
Sent: Mon 9/25/2006 5:58 PM
To: Delgado, Francisco J. (JSC-ER2)
Subject: RE: Read: Let us chat on about SCOUT, SC3D, the X-38 program and RIS;
noted below are our patents that cover said technology that RIS and your groups
are using.
Sir,
Since you have clearly refused to cooperate, please provide us your
department's heads information and said contact information including a contact
in your IP litigation department. We are aware that you received your read
receipt of our email sent to you regarding:
Let us chat on about SCOUT, SC3D, the X-38 program, and RIS; noted below are
our patents that cover said technology that RIS and your groups are using.
United States Patent 5,566,073 Margolin October 15, 1996 Pilot aid using a
synthetic environment
United States Patent 5,904,724 Margolin May 18, 1999, Method and apparatus for
remotely piloting an aircraft
We simple have one goal in mind and that is have a chat regarding the
technology and that RIS and NASA take a license of said IP technology.
Thank you
______
From: Delgado, Francisco J.
(JSC-ER2) [redacted (b)(6)]
Sent: Tuesday, September 19, 2006 7:30 AM
Subject: Read: Let us chat on about SCOUT, SC3D, the X-38 program and RIS;
noted below are our patents that cover said technology that RIS and your groups
are using.
Your message
To: Delgado, Francisco J. (JSC-ER2)
Cc:
Subject: Let us chat on about SCOUT, SC3D, the X-38 program and RIS; noted
below are our patents that cover said technology that RIS and your groups are
using.
Sent: Tue, 19 Sep 2006 08:52:25 -0500
was read on Tue, 19 Sep 2006 09:30:05 -0500
_________________________________________________________________
_________________________________________________________________
[Page 00067] [AV2-A61]
From: Delgado, Francisco J.
(JSC-ER2) [redacted (b)(6)]
Sent: Monday, September 25, 2006 9:42 PM
To: Mike Abernathy; Fein, Edward K. (JSC-AL); Kennedy, Alan J. (HQ-MC000);
[redacted (b)(6)]
Cc: Delgado, Francisco J. (JSC-ER2); Fredrickson, Steven E. (JSC-ER)
Subject: FW: Read: Let us chat on about SCOUT, SC3D, the X-38 program and RIS;
noted below are our patents that cover said technology that RIS and your groups
are using.
See email from "Mr. Adams" below.
This is getting more ridiculous by the minute. I have resisted replying in any
form as suggested by JSC council. However, this matter has been left open for
quite some time and something needs to be done NOW. It has come to my attention
that Mr. Adams and company have issued a letter that prohibits RIS from selling
any of their software until this issue is resolved. We have had a very
"intellectually" fruitful relationship with RIS for almost a decade
and would like to continue this relationship for many years to come. Some of
the technology concepts in question were co-developed by RIS and I during many
"brainstorming sessions" on how to provide optimal situation
awareness to various users.
The folks pressing forward with this claim do not have solid ground to stand on
(IMHO). Based on the previous research performed, I do not see how their patent
claims are valid and I would like to request that NASA's council take this
matter seriously and get the patents invalidated (as it should have been done
when this first showed up a couple of years ago). This is not only the right
legal thing to do, but also the right moral thing to do. If we allow an
individual to continue to harass small companies and stand-by with little/no
action, then we are no better than the company doing the harassing. As a
government organization, we need to keep the public faith and trust and again,
"do the right thing." I realize that patience is important in legal
matter, but believe that the time for sitting idle and hoping that this matter
goes away is way past due and that something needs to be done ASAP. Putting
companies that NASA relies on to help move technology forward out of business
with a barrage of unwarranted litigation does not seem like it is in NASA's (or
our taxpayers) best interest.
Please let me know what I need to do on my end to help move this along.
BTW: If we do not deal with issue immediately it will only get worse for NASA.
I know of several Projects within JSC, JPL, and Langley that use independently
developed technology (i.e. technology that does not use what RIS and I came up
with) that I am sure Mr. Adams and company would claim infringes on their
"Patents." We seem to be on his radar at the moment because we do
what government organizations are encouraged to do ("Publish their
work").
Thank You,
Frank Delgado
_________________________________________________________________
The above email from Delgado is
especially probative. NASA had already denied Margolin’s claim and was
convinced that Margolin would not sue them for infringement. Why is it intent
in attacking the Margolin Patents?
Delgado states:
Based on the previous research
performed, I do not see how their patent claims are valid and I would like to
request that NASA's council take this matter seriously and get the patents
invalidated (as it should have been done when this first showed up a couple of
years ago). This is not only the right legal thing to do, but also the right
moral thing to do. If we allow an individual to continue to harass small
companies and stand-by with little/no action, then we are no better than the
company doing the harassing. As a government organization, we need to keep
the public faith and trust and again, "do the right thing." I
realize that patience is important in legal matter, but believe that the time
for sitting idle and hoping that this matter goes away is way past due and that
something needs to be done ASAP. Putting companies that NASA relies on to
help move technology forward out of business with a barrage of unwarranted
litigation does not seem like it is in NASA's (or our taxpayers) best interest.
Delgado is also Wrapping Himself in
the Flag.
NASA is not the Court. NASA is not
the Patent Office. NASA is not the Protector of the Public Faith and Trust. The
only interest NASA has shown in this case has been its own and the interests of
its Partners.
This is more than NASA trying to
help a former contractor. This looks like NASA trying to help someone who is
acting as their Agent.
NASA evidently spent a great deal
of time trying to help Abernathy. What project or account did they charge their
time to?
_________________________________________________________________
[Page 00064] [AV2-A59]
From: Fein,
Edward K. (JSC-AL)
Sent: Wednesday, August 06, 2008 3:29 PM
To: McNutt, Jan (HQ-MC000)
Cc: Borda, Gary G. (HQ-MC000); Rotella, Robert F. (HQ-MA000)
Subject: RE: Patent Infringement claim from Jed Margolin;
NASA Case No. 1-222
[redacted (b)(5)]
_____
RE: Read: Let us chat on about SCOUT, SC3D, the X-38 program and RIS; noted
below are our patents that cover said technology that RIS and your groups are
using.
From: Mike Abernathy [redacted (b)(6)]
To: 'Delgado, Francisco J. (JSC-ER2)[redacted (b)(6)] 'Fein, Edward K. (JSC-
AL)' [redacted (b)(6)] 'Kennedy, Alan J. (HQ-MC000)'
[redacted (B)(6)]
Cc: 'Fredricson, Steve E. (JSC-ER)' [redacted (b)(6)]
Date: Sep 26 2006 12:13pm
Thank you very much. It means very much to Carolyn and I right
now.
Mike Abernathy
Rapid Imaging Software, Inc.
_________________________________________________________________
30. Margolin
filed his FOIA Request on July 1, 2008. It was turned over to McNutt of the
Office of the General Counsel. McNutt asked Margolin for a 90-day extension on
July 24, 2008. Margolin agreed on August 8, 2008.
Shortly thereafter McNutt asked
Laura Burns (Law Librarian for the Office of the General Counsel) for Court
documents in the then-ongoing litigation between Universal Avionics Systems
Corporation (“UASC”) and Optima Technology Group (OTG) and Jed Margolin in U.S.
District Court for the District of Arizona (Universal Avionics Systems
Corporation vs. Optima Technology Group, et. No. CV 07-588-TUC-RCC). See
Exhibit 25 at Appendix Volume 2 A99.
_________________________________________________________________
[Page 02666] [AV2-A99]
[redacted]
From: Burns, Laura (HQ-MA000)
Sent: Friday, August 15, 2008 2:10 PM
To: McNutt, Jan (HQ-MC000)
Subject: UAS.vs.OTG
Jan,
Attached are some documents from the Universal case. Several of the documents
were not available because they were sealed. If you have any questions, let me
know.
UAs.vs. OTG. docket.pdf
OTG.Answer.to.UAS.Complaint.pd...
OTG.Amended.Answer.pdf
UAS. Reply.Counterclaims.pdf
UAS.Order.Motion.Dismiss.4.9.0...
USA.2ndAmendedComplaint.pdf
OTG.Answer.2nd.Amended.Complai...
UAS.Reply.to.OTG. Counterclaims...
Laura
Law Librarian for the Office of the General Counsel
NASA Headquarters
300 E Street, SW, Suite
9W39A
Washington, DC 20546
202-358-2078 (v)
202-358-4355 (f)
_________________________________________________________________
In October McNutt asked Ms. Burns for an update. See Exhibit
25 at Appendix Volume 2 A100.
_________________________________________________________________
[Page 002968] [AV2-A100]
McNutt, Jan (HQ-M0000)
Sent: Wednesday, October 01, 2008 11:05 AM
To: Burns, Laura (HQ-MA000)
Subject: RE: UAS.vs.OTG
Laura,
Could you get an update on this case for me. I've included the last docket
document you sent me for the case.
<< File: UAs vs OTG docket.pdf >>
Thanks, Jan
_________________
From: Burns,
Laura (HQ-MA000)
Sent: Wednesday, October 01, 2008 2:18 PM
To: McNutt, Jan (HQ-MC000)
Subject: RE: UAS.vs.OTG
Jan,
Attached is the update for the docket. Please let me know which documents you
would like.
PDF: docket.update.pdf
Laura
Law Librarian for the Office of the
General Counsel
NASA HeadQuarters
_________________________________________________________________
Why did McNutt do this? The
litigation between UASC and OTG had nothing to do with Margolin’s Claim or
Margolin’s FOIA Request.
Since NASA wanted the Margolin
patents invalidated it is reasonable to ask the following questions:
a.
Did McNutt (or any NASA
employee or anyone outside NASA at NASA’s direction) have communications with
UASC regarding the Margolin Patents, Margolin’s Claim, or Margolin’s FOIA
Request?
b.
Did McNutt (or any NASA
employee or anyone outside NASA at NASA’s direction) aid UASC in its litigation
with OTG?
McNutt’s actions place any and all
communications between NASA (or any NASA employee or anyone outside NASA acting
at NASA’s direction) and Universal Avionics Systems Corporation (or anyone
acting for Universal Avionics Systems Corporation) that relate to the Margolin
patents, the Infringement Claim, and Margolin’s FOIA request subject to
Margolin’s FOIA request.
It should be noted that the UASC
litigation was settled long before it even got to the part that was supposed to
be about the patents.
31. In
or around October 2008 NASA Dryden (DFRC-NASA) was apparently asked if any of
their projects might infringe on the Patents. The answers are informative. See
Exhibit 26 at Appendix Volume 2 A103.
In the following email (written by
Mark Homer, quoting John Del Frate - October 21, 2008), although
he concludes that Dryden’s work does not infringe he pays the patent
(‘724) a high compliment.
Since May of 1999, we have tested a
number of UAVs. This patent would be addressed to our most sophisticated UAVs
which would include: X-36, X-45 (UCAV), Pathfinder Plus, Helios/Centurion, Altus, Altair, lkhana,
Hyper-X (X-43) and X-48B (currently flying). As I mentioned in a previous
e-mail, our level of complexity in the ground control stations never reached
the level described in the patent. It could go there, but it is very costly and
our niche is in testing the aircraft and doing research to enable capabilities.
The environment described in the patent is more for the operational level UAVs.
And he also reveals which projects probably
infringe.
- X-36, X-45 and X-48B were done by Boeing.
- Pathfinder Plus and Helios/Centurion were sponsored
by the Office of Aerospace Technology at NASA Headquarters. They were
managed by the NASA Dryden Flight
Research Center
in partnership with AeroVironment,
Inc., Monrovia, Calif.
- Altus
and Altair are General Atomics.
- Lkhana is a modified version of the Predator B
manufactured by General Atomics.
- Hyper-X (X-43) was a project managed by NASA-Langley
and included partners Boeing, Micro Craft, Pratt & Whitney, RJK
Technologies, and Boeing, who was responsible for the vehicle design,
thermal protection system, flight control system and the navigation.
_________________________________________________________________
[Page 00618] [AV2-A103]
From: Homer, Mark W. (JPL-0910)
Sent: Tuesday, October 21, 2008 11:17 AM
To: Borda, Gary G. (HQ-MC000); Rotella, Robert F. (HQ-MA000)
Subject: FW: UAV Patent Infringement Issue
Attachments: Patent 5904724 Margolin.jd.pdf
Gentlemen,
According to DFRC's technical folks (as you can see by the attached), the UAVs
flown at Dryden don't infringe on the patent (several elements in the
independent claims aren't found in these aircraft). Please let me know if you
need any further assistance.
Mark Homer
818-354-7770
_________________________________________________________________
From: Del Frate, John H. (DFRC-Z)
Sent: Tue 10/21/2008 11:00 AM
To: Homer, Mark W. (JPL-0910)
Cc: Brent Cobleigh; Samuels, David A. (DFRC-L)
Subject: Re: UAV Patent Infringement Issue
Mark,
Attached is the patent document with my notes for each sub-element in claims 1
and 13. Let me know if you have any trouble seeing them. I could not do a copy
and paste off the pdf file (it must have been locked) so rather than re-typing
the sections, I just used the "note" tool in Acrobat to capture my responses.
Since May of 1999, we have tested a number of UAVs. This patent would be
addressed to our most sophisticated UAVs which would include: X-36, X-45
(UCAV), Pathfinder Plus, Helios/Centurion, Altus, Altair, lkhana, Hyper-X (X-43) and
X-48B (currently flying). As I mentioned in a previous e-mail, our level of
complexity in the ground control stations never reached the level described in
the patent. It could go there, but it is very costly and our niche is in
testing the aircraft and doing research to enable capabilities. The environment
described in the patent is more for the operational level UAVs.
Again, please let me know if you need anything else.
John
On 10/20/08 1:54 PM, "Homer,
Mark W. (JPL-0910)" <mark.w.homer@nasa.gov> wrote:
John,
Thanks for your effort. Based on this information, it appears that the UAVs
Dryden has used do not infringe the patent (in order for infringement to occur,
all of the "sub-elements" in the independent claims (1 and 13) must
be met. If you could simply provide me with why you believe that certain of the
sub-elements of these two claims weren't used by Dryden, a little more
specifically, so I can provide this info to HQ, that would be great. Thanks
again.
Mark
_________________________________________________________________
Mr. Del Frate pays another compliment to the ‘724 patent in
this email sent October 20, 2009.
The patent in question, in general,
captures some typical features that are inherent in all UAVs. However when it
shifts into using computer generated terrain models and head mounted displays,
that level of sophistication was never found in our Ground Control Stations –
it was possible, but we were cost and schedule constrained and it was not a
requirement for meeting our goals.
And we find out that Brent Cobleigh knows if General Atomics
infringes.
I'm not sure how best to respond to
your request, but I will take a stab, and then you can tell me what else you
need. I will be responding to the Patent Claims fairly broadly but I will let
Brent Cobleigh speak for the capability of the General Atomics family of aircraft.
But there is no evidence in the NASA Documents that Mr.
Cobleigh was asked.
_________________________________________________________________
[Page 00618] [AV2-A104]
From: Del Frate, John H. (DFRC-Z)
Sent: Mon 10/20/2008 10:56 AM
To: Homer, Mark W. (FL-0910)
Cc: Brent Cobleigh
Subject: Re: UAV Patent Infringement Issue
Mark,
I'm not sure how best to respond to your request, but I will take a stab, and
then you can tell me what else you need. I will be responding to the Patent
Claims fairly broadly but I will let Brent Cobleigh speak for the capability of
the General Atomics family of aircraft.
The patent in question, in general, captures some typical features that are
inherent in all UAVs. However when it shifts into using computer generated
terrain models and head mounted displays, that level of sophistication was
never found in our Ground Control Stations – it was possible, but we were cost
and schedule constrained and it was not a requirement for meeting our goals.
I will list the claim numbers followed by a Y or N or ?. I use "?"
when I'm not sure if we had that feature.
1 – By my count 6 sub-claims: Y, Y, N, N, N, N
2 – 2 sub-claims: Y, ?
3–Y
4–Y
5–Y
6–Y
7–N
8–N
9–Y
10-?
11-?
12–N
13 – Y, N, Y, N (in some parts of this paragraph), N (but it depends how this
is defined)
14–Y
15–Y
16–N
17–Y
18-?
19-?
20 – Y (some of the UAVs could do this)
Let me know what else you need.
John
_________________________________________________________________
32. In
early October 2008 McNutt contacted Abernathy and asked for help in the
infringement action. This is another tangled email thread. Again, in order to
show them in a less confusing manner they have been converted to text and will
be reproduced here in what appears to be the correct chronological order and
without unnecessary duplication. The page numbers refer to the NASA page
numbers followed by the Appendix Volume 2 page number. (When emails are part of
a chain of quoted messages and they come from different time zones it can be
difficult to precisely determine the proper chronological order.) See Exhibit
27 at Appendix Volume 2 A106.
_________________________________________________________________
[Page 01864] [AV2-A110]
From: McNutt, ]an (HQ-M0000
Sent: Friday, October 03, 2008 1:37 PM
To: mikea@landform.com
Subject: Optima Technology Group - Margolin Patents
Dear Mr. Abernathy,
I am a new attorney working on Intellectual Property and Commercial Law matters
at NASA and have been assigned to handle a long outstanding claim against the
agency for patent infringement due to NASA's collaboration with your company in
the late 90s. Mr. Ed Fein of the
Johnson
Space Center
suggested I contact you to discuss the infringement action brought against us
by the Optima Technology Group regarding a patent they own by the inventor Jed
Margolin. I would like to set up a conference next week sometime for this
purpose. Please let me know if you are inclined to speak with NASA on this and
if so, when would be a good time for you.
Regards,
Jan S. McNutt
Senior Attorney (Commercial)
Office of the General Counsel
NASA Headquarters
[redacted (b)(6)]
_________________________________________________________________
_________________________________________________________________
[Page 01863] [AV2-A109]
From: Mike Abernathy [redacted (b)(6)]
Sent: Friday, October 03, 2008 2:49 PM
To: 'McNutt, Jan (HQ-MC000)'
Cc: Benjamin W. Allison; krukar@olpatentlaw.com
Subject: RE: Optima Technology Group - Margolin Patents
Privileged and Confidential
Dear Jan,
We will of course be happy to help however possible. Our company prepared a
request for re-examination of these patents based on prior art and would have
used it had OTG not gone away.
These patents are defective because the invention is both obvious and non-novel
as evidenced by numerous printed published works. (We can provide these
references if needed). Ironically, they claim patent on work already published
by NASA over a decade earlier.
The attached NASA technical publication by Shahan Serrafian,
Simulator
Evaluation of a Remotely Piloted Vehicle Lateral Landing Task Using a Visual
Display, dates from 1984 and fully anticipates both Margolin patents, and
is referenced by neither one.
http://en.wikipedia.org/wiki/Highly Maneuverable Aircraft Technology
In other words, OTG is attempting force NASA to pay for a patent infringement
on something that NASA in fact invented and published more than a decade prior
to the patent filing.
Would Wednesday at 10AM MT be convenient for you?
Mike Abernathy
Rapid Imaging Software, Inc.
www.landform.com
_________________________________________________________________
About the Serrafian reference: Simulator Evaluation of a Remotely Piloted
Vehicle Lateral Landing Task Using a Visual Display. Serrafian published
two reports about HiMat.
NASA Technical Memorandum 84916
(May 1984):
NASA Technical Memorandum 85903 (August
1984):
Although the material in both
reports is mostly the same they are not identical. Abernathy’s failure to
distinguish the two reports (or note that there are two reports) is poor
scholarship.
Abernathy also failed to mention
that neither report shows the use of synthetic vision.
The Serrafian report that Abernathy
should have read is NASA Technical Memorandum 88264 Effect of Time Delay on Flying Qualitities: An Update by Rogers E.
Smith and Shahan K. Sarrafian. See Exhibit 29 at Appendix Volume 3 A4.
From the Introduction:
The advent of modern, full-authority electronic flight control
systems produced many exciting advances in aircraft handling and performance
capabilities. Unfortunately, this improved capability has not evolved without
cost. Chief among the problems related to this modern technology is the
introduction of additional time delay in the response of the aircraft to pilot
input. These time delays can produce a significant degradation in the flying
qualities of the aircraft during demanding tasks.
This Serrafian report is about the
need to compensate for time delays in the control systems used in modern manned
aircraft. There are additional time delays with unmanned aircraft which must be
considered, and they are considered in the ’724 patent.
Abernathy cited Wikipedia as a
source. Anyone can edit Wikipedia. Wikipedia states (http://en.wikipedia.org/wiki/Wikipedia:About)
Wikipedia is written
collaboratively by an international group of volunteers. Anyone with internet
access can write and make changes to Wikipedia articles. There are no
requirements to provide one's real name when contributing; rather, each
writer's privacy is protected unless they choose to reveal their identity
themselves.
The Wikipedia article on Highly
Maneuverable Aircraft Technology was started March 24, 2006 by a contributor
named Arado, and simply said:
The Highly Maneuverable Aircraft
Technology (HiMAT) was a NASA-program to develop technologies for future
fighter aircraft. Among the technologies explored were close-coupled canards,
fully digital flight control (including propulsion), composite materials
(graphite and fiberglass), winglets etc.
The article did not mention
synthetic vision until February 5, 2008. That contributor, using the name SoarIT, has chosen to remain anonymous.
In short, Wikipedia cannot be
relied upon for reliable information on subjects where people have an agenda to
promote.
_________________________________________________________________
[Page 01860] [AV2-A106]
[redacted]
From: McNutt, Jan (HQ-M0000)
Sent: Monday, October 06, 2008 11:18 AM
To: Rotella, Robert F. (HQ-MA000)
Cc: Borda, Gary G. (HQ-MC000)
Subject: FW: Optima Technology Group - Margolin Patents
First attorney.
-----Original Message-----
From: krukar@olpatentlaw.com [redacted (b)(6)]
Friday, October 03, 2008 5:13 PM
To: Mike Abernathy
Cc: McNutt, Jan (HQ-MC000); [redacted (b)(6)]
Subject: RE: Optima Technology Group - Margolin Patents
Hi Jan,
Richard Krukar, the guy that prepped the reexam request here.
Another issue we found is that Rapid Imaging Software (RIS) is not infringing
either directly or indirectly.
... richard
On Fri, October 3, 2008 2:48 pm, Mike Abernathy wrote:
> Privileged and Confidential
>
> Dear Jan,
>
> We will of course be happy to help however possible. Our
company
> prepared a request for re-examination of these patents
based on prior art
> and would have used it had OTG not gone away.
>
> These patents are defective because the invention is
both obvious and
> non-novel as evidenced by numerous printed published
works. (We can
> provide these references if needed). Ironically, they
claim patent on
> work already published by NASA over a decade earlier.
>
> The attached NASA technical publication by Shahan
Serrafian, Simulator
> Evaluation of a Remotely Piloted Vehicle Lateral Landing
Task Using a
> Visual Display, dates from 1984 and fully anticipates
both Margolin patents, and
> is referenced by neither one.
>
> http://en.wikipedia.org/wiki/Highly Maneuverable
Aircraft Technology
>
> In other words, OTG is attempting force NASA to pay for
a patent
> infringement on something that NASA in fact invented and
published more
> than a decade prior to the patent filing.
>
> Would Wednesday at 10AM MT be convenient for you?
>
> Mike Abernathy
> Rapid Imaging Software, Inc.
> [redacted (b)(6)]
>
> www.landform.com
_________________________________________________________________
_________________________________________________________________
[Page 01863] [AV2-A109]
[redacted]
From: McNutt, Jan (HQ-M0000)
Sent: Monday, October 06, 2008 11:18 AM
To: Rotella, Robert F. (HQ-MA000)
Cc: Borda, Gary G. (HQ-M0000)
Subject: FW: Optima Technology Group - Margolin Patents
Second attorney.
From: Benjamin W. Allison [redacted (b)(6)]
Sent: Friday, October 03, 2008 5:46 PM
To: Mike Abernathy; McNutt, Jan (HQ-MC000)
Cc: krukar@olpatentlaw.com
Subject: RE: Optima Technology Group - Margolin Patents
Jan,
We're assisting RIS in the Optima matter as well, and I would like to
participate in the call Wednesday. Let me know call-in information when you
can.
Regards, Ben
Benjamin Allison
Sutin Thayer & Browne PC
[redacted (b)(6)]
_________________________________________________________________
_________________________________________________________________
[Page 01865] [AV2-A111]
[redacted]
From: McNutt, Jan (HQ-M0000)
Sent: Monday, October 06, 2008 11:19 AM
To: Rotella, Robert F. (HQ-MA000); Fein, Edward K.
(JSC-AL)
Cc: Borda, Gary G. (HQ-MC000)
Subject: FW: patent
Attachments: HiMAT Claims Analysis of Patent 5904724.doc;
HIMAT_Kempel_1988_0006558_ 1989006558.pdf
Second email from Abernathy.
----------------------
From: Mike Abernath [redacted (b)(6)]
Sent: Saturday, October 04, 2008 7:08 PM
To: McNutt, Jan
Cc: [redacted (b)(6)]
Subject: patent
Privileged and confidential
Hi Jan,
Richard is quite correct to point out that we did not infringe. Our software
license in fact prohibits this use of our software.
I have attached a claims chart regarding NASA research fully anticipating the
patent, to help you become familiar with the patent in question. Please keep
this information confidential for now.
Mike Abernathy
Rapid Imaging Software, Inc.
[redacted (b)(6)]
www.landform.com
_________________________________________________________________
_________________________________________________________________
[Page 01960] [AV2-A113]
From: McNutt, Jan (HQ-MC000)
Sent: Tuesday, October 07, 2008 9:27 AM
To: Mike Abernathy
Cc: [redacted (b)(6)]
Subject: RE: patent
Hello Mike,
I've set up a telephone conference for 10:00 AM MT (12:00 PM EDT), Wednesday,
October 15th. The call in number is Toll Free: [not redacted by NASA] and the
Passcode is: [not redacted by NASA]. I think I have the time right. Please check
this (Arizona??).
Mr. Bob Rotella from HQ and Mr. Ed Fein with JSC will be joining us. Thanks and
looking forward to talking to you.
Regards, Jan
This document, including any attachments, contains information that may be
confidential, protected by the attorney-client or other applicable privileges,
or constitutes non-public information. All content is intended only for the
designated recipient(s). If you are not an intended recipient of this
information or have received this message inadvertently, please take
appropriate steps to destroy this content in its entirety and notify the sender
of its destruction. Use, dissemination, distribution, or reproduction of this
information by unintended recipients or in a manner inconsistent with its
provision is not authorized and may be unlawful.
_________________________________________________________________
_________________________________________________________________
[Page 01962] [AV2-A115]
From: [redacted (b)(6)]
Sent: Wednesday, October 08, 2008 12:59 PM
To: McNutt, Jan (HQ-MC000)
Cc: Rotella, Robert F. (HQ-MA000); Fein, Edward K. (JSC-AL)
Subject: RE: patent
It was a pleasure to hear your viewpoints on the Margolin patent. I'm just
shooting a side email to mention how thankful I am for NASA's work over the
last 50 years and for how much of it is searchable online. I've actually used
some NASA reports from the '60s (Apollo program) in filing a reexamination
request for another client.
all for now
Richard Krukar
Ortiz and Lopez, PLLC
_________________________________________________________________
_________________________________________________________________
[Page 01963] [AV2-A116]
[redacted]
From: Mike Abernathy
Sent: Wednesday, October 08, 2008 1:29 PM
To: McNutt Jan (HQ-MC000
Cc: [redacted (b)(6)] Rotella, Robert F. (HQ-MA000);
Fein,
Subject: RE: patent
Privileged and confidential
Dear Jan,
After speaking with Richard and Ben RIS, Inc. has decided to honor your request
to provide NASA with our research regarding the subject patent.
We sincerely appreciate your interest in protecting NASA's important published
work in synthetic vision research for the benefit of the American people.
I will begin forwarding the subject research papers and Richard's claims charts
in several emails.
Mike Abernathy
Rapid Imaging Software, Inc.
[redacted (b)(6)]
www.landform.com
_________________________________________________________________
_________________________________________________________________
[Page 01965] [AV2-A118]
[redacted]
From: McNutt, Jan (HQ-MC000)
Sent: Wednesday, October 08, 2008 2:30 PM
To: Mike Abernathy
Cc: [redacted (b)(6)] Rotella, Robert F. (HQ-MA000); Fein,, Edward
K. (JSC-AL)
Subject: RE: patent
Hi Mike,
I'm sorry we were cut off earlier when you called. I must have pushed the wrong
button when I put on my headset.
Thank you also for taking the time and effort and to allow us to benefit from
your years of dealing with this technology. A quick look confirms that I have
received all the attachments that you sent, so we will spend a little time
looking them over. It's nice to know NASA technology has been of such benefit
for all of you. NASA tries hard to make technology available to the world
without restrictions unless absolutely necessary. In fact, my main job is to
assist the efforts of technology transfer, rather than have it locked up in our
agency. See: http://www.ipp.nasa.gov/. I will let you know the
development of this in as much as I can. Hopefully, we will find a solution
that everyone can share in.
Regards,
Jan
This document, including any attachments, contains information that may be confidential,
protected by the attorney-client or other applicable privileges, or constitutes
non-public information. All content is intended only for the designated
recipient(s). If you are not an intended recipient of this information or have
received this message inadvertently, please take appropriate steps to destroy
this content in its entirety and notify the sender of its destruction. Use,
dissemination, distribution, or reproduction of this information by unintended
recipients or in a manner inconsistent with its provision is not authorized and
may be unlawful.
Privileged and confidential
_________________________________________________________________
The preceding emails show there was
a conference call with at least Jan McNutt, Bob Rotella, Ed Fein, Mike
Abernathy, and Abernathy’s attorneys.
The close cooperation between these
parties constitute agency, misconduct, or conspiracy.
McNutt says, “Hopefully, we will
find a solution that everyone can share in.”
Everyone except Margolin and Optima
Technology Group, that is.
And who did McNutt mean by “everyone”
?
It is not known if McNutt kept his
promise to Abernathy, “I will let you know the development of this in as much
as I can.” The NASA documents are silent on the matter.
_________________________________________________________________
[Page 01968]
[AV2-121]
[redacted]
From: Mike Abernathy [redacted
(b)(6)]
Sent: Wednesday, October 08,
2008
4:18PM
To:
McNutt, Jan (HQ-MC000)
Cc:
[redacted (b)(6), Rotella, Robert F. (HQ-MA000); Fein, Edward, K.
(JSC-AL)
Subject: draft article
Attachment
Attachments: REVISEDAUVSIcolumn v5 clean.doc
Hi All,
The
attached article is one written by myself and Dr. Mark Draper and Gloria
Calhoun of the Air Force Research Lab about the history of synthetic vision
naturally with particular focus on the USAF and with an eye toward UAVs. This
is a draft technical journal article which has not yet been published, but
which will be submitted for publication in the near future as soon as it is
approved through AFRL channels.
I am
sending it to you because it tells the story of how NASA and USAF developed
this powerful technology called synthetic vision. The article is entitled "Synthetic Vision Technology for
Unmanned Aerial Vehicles: Historical Examples and Current Emphasis".
I hope you find it interesting and useful.
Mike
Abernathy
Rapid
Imaging Software, Inc.
[redacted
(b)(6)]
www.landform.com_________________________________________________________________
33. The
article that Abernathy sent to NASA to preview (See Exhibit 30 at Appendix
Volume 3 A18) was published in the December 2008 issue AUVSI’s Unmanned
Systems Magazine as Synthetic
Vision Technology for Unmanned Systems: Looking Back and Looking Forward. The
authors are Jeff Fox, Michael Abernathy, Mark Draper and Gloria Calhoun. See
Exhibit 31 at Appendix Volume 3 A26.
Abernathy is with Rapid Imaging
Software, Mark Draper and Gloria Calhoun are with AFRL, and Jeff Fox is listed
as Flight Operations Engineer at NASA
Johnson Space
Center. (See Exhibit 31
at Appendix Volume 3 A27) Jeff Fox was not listed as a co-author on the preview
copy Abernathy gave to NASA. A
comparison of the two versions shows that it was tightened up and made more
readable, presumably by AUVSI Editor Brett Davis. There are no major additions.
The addition of Mr. Fox’s name and affiliation with NASA indicates that NASA
gave its approval to the article. It also gave the article more credibility.
The article presents a spurious
history of synthetic vision.
Margolin responded with the article Synthetic Vision – The Real Story. See Exhibit 32 at Appendix
Volume 3 A29. Although the editor of AUVSI Magazine had promised Margolin the
opportunity to respond in the magazine, he later refused to even mention the
controversy about the Abernathy article. See Exhibit 33 at Appendix Volume 3
A87. As result, Margolin posted his response on his personal web site at
www.jmargolin.com .
NASA decided to deny Margolin’s
claim in July, 2004. (See Exhibit 20 at Appendix Volume 2 A19]. Everything
after that is post-decisional and therefore not exempt from production.
Although NASA has now provided
approximately 4,000 pages of documents many are redacted and it is likely that
many have been entirely withheld.
NASA must disclose all these
documents in their entirety, preferably in their original electronic format.
34.
Margolin sent a copy of his
response to McNutt. See Exhibit 34 at Appendix Volume 3 A91. There is no
evidence in the NASA documents that anyone at NASA discussed the Margolin
Response. It is hard to believe that no one at NASA discussed it.
The NASA documents from Abernathy
end with one where he expresses pleasure at the apparent misfortune of others.
(See Exhibit 28 at Appendix Volume 2 A125)
35. Finally we find out what this has all
been about in these emails from Robert F. Rotella, Senior Patent Attorney,
Office of the General Counsel, NASA Headquarters. [See Exhibit 34 at Appendix
Volume 3 A94]
The first one appears to have been
sent when he was offsite and sent the email to himself. The second one was to
his staff. Emphasis has been added.
_________________________________________________________________
[Page 02363] [AV3-A94]
[redacted]
From: Bob Rotella [r.rotella@att.net]
Sent: Thursday, March 19, 2009 10:17 AM
To: Rotella, Robert F. (HQ-MC000)
Subject: war
NASA Administrative Claims - Jed Margolin and its successor in interest,
Optima, have pursued an administrative claim for patent infringement. Upon
completion of investigation by JSC and DFC, reviewed all materials and prepared
initial draft of final agency determination letter denying claim based on lack
of infringement. (Rotella, McNutt, Borda)(3/9/09)
_________________________________________________________________
_________________________________________________________________
[Page 02364] [AV3-A95]
[redacted]
From: Rotella, Robert F. (HQ-MC000)
Sent: Thursday, March 19, 2009 10:24 AM
To: Borda, Gary G. (HQ-MC000); Graham, Courtney B. (HQ-M0000)
Cc: Bayer, Kathy (HQ-MC000)
Subject: WAR item
NASA Administrative Claims - Jed
Margolin and its successor in interest, Optima, have pursued an administrative
claim for patent infringement. Upon completion of investigation by JSC and DFC,
reviewed all materials and prepared initial draft of final agency determination
letter denying claim based on lack of infringement. (Rotella, McNutt, Borda)
Robert F. Rotella
Senior Patent Attorney
Office of the General Counsel
NASA Headquarters
[redacted (b)(6)]
This document, including any attachments, contains information that is
confidential, protected by the attorney-client or other applicable privileges,
or constitutes non-public information. It is intended only for the designated
recipient(s). If you are not an intended recipient of this information, please
take appropriate steps to destroy this document in its entirety and notify the
sender of its destruction. Use, dissemination, distribution, or reproduction of
this information by unintended recipients is not authorized and may be
unlawful.
_________________________________________________________________
NASA has been
at war against Margolin and
Optima Technology Group.
In modern
warfare there are no rules. NASA’s actions during the past 6+ years confirm
that they considered the patent claim a war, a war they were resolved to win
even at the cost of fairness and honesty.
The very next document is also interesting.
_________________________________________________________________
[Page 02367] [AV3-A96]
[redacted]
From: Rotella, Robert F. (HQ-MC000)
Sent: Tuesday, May 05,
2009 2:14 PM
To: Graham, Courtney B. (HQ-MC000)
Subject: CIPLG Practice Group
1) Node 3 module of ISS online naming contest: Drafted set of rules and entry
conditions for participants; the most significant was that the agency was not
bound to accept the results of the online voting which avoided having to name
Node 3 after Stephen Colbert, who encouraged viewers to nominate him.
2) Administrative Claims for Patent Infringement:
a) Delta Engineers' allegation of infringement of its U.S. patent covering a "High
Performance Cold Plate." Claim was denied in a final agency decision
following extensive review;
b) Margolin/Optima allegation of patent infringement by X-38 Project, based on
patent covering "Synthetic Vision." Claim was denied in a final
agency decision following extensive review and coordination with Center patent
staffs.
3) NASA trademarks: agency will pursue formal trademark
registration in US and European Community for NASA brands, including: meatball,
NASA seal, NASA acronym, "National Aeronautics and Space Administration.
Robert F. Rotella
Senior Patent Attorney
Office of the General Counsel
[redacted (b)(6)]
This document, including any attachments, contains information that is
confidential, protected by the attorney-client or other applicable privileges,
or constitutes non-public information. It is intended only for the designated
recipient(s). If you are not an intended recipient of this information, please
take appropriate steps to destroy this document in its entirety and notify the
sender of its destruction. Use, dissemination, distribution, or reproduction of
this information by unintended recipients is not authorized and may be
unlawful.
_________________________________________________________________
NASA denied the ‘724 claim (again) as
well as the claim by Delta Engineers.
It then decided to pursue formal
trademark registration for various NASA brands.
Why should anyone respect NASA’s
Intellectual Property when NASA refuses to respect the Intellectual Property of
others?
36. Over
a period of only a few days in early November 2009 Margolin’s personal web site
(www.jmargolin.com) was visited by
Abernathy’s attorneys (Sutin Thayer), Universal Avionics Systems Corporation
(both Arizona and Washington State), and the law firm of Greenberg Traurig.
This is known because every server
on the Internet keeps a log of accesses containing information such as the IP
address of the computer accessing the server, time and date of access, and the
page or file being accessed. As the Webmaster for his web site, Margolin has
access to his server’s logs.
Every computer on the Internet has
an IP address. It is how data packets are routed to where they are supposed to
go.
Through publicly available tools it
is generally possible to determine who the IP Address belongs to and if it is
assigned to a named server. For example, using the Whois service provided by
Network Solutions it is possible to determine that the IP Address of 209.191.175.42 belongs to a range of
IP Addresses assigned to Greenberg Traurig.
http://www.networksolutions.com/whois/index.jsp
209.191.175.42
Record Type: IP Address
Internap Network Services
Corporation PNAP-1-98 (NET-209-191-128-0-1)
209.191.128.0 - 209.191.191.255
Greenberg Traurig
INAP-NYC-GREENBERG-3496 (NET-209-191-175-40-1)
209.191.175.40 - 209.191.175.47
This says that IP addresses from
209.191.175.40 to 209.191.175.47 are assigned to Greenberg Traurig. IP Address 209.191.175.42 is within
that range so it belongs to Greenberg Traurig.
By using a program that uses the
Reverse IP Lookup command supported by DNS Servers it was determined that the
IP Address 207.114.136.186 is
associated with the domain name sutinfirm.com, which is the web site for Sutin
Thayer.
Sutin Thayer, Universal Avionics
Systems Corporation, and Greenberg Traurig have all been to Margolin’s web site
before, but such visits have been relatively rare. For all of them to occur
within such a short period of time attracted Margolin’s attention.
The following are exemplars. For
all the Web accesses from Greenberg Traurig, Sutin Thayer, and Universal
Avionics Systems Corporation for 2009 see Exhibit 36 at Appendix Volume 3 A98.
Items of
interest have been emphasized.
Greenberg Traurig
209.191.175.42
209.191.175.42 - - [03/Nov/2009:22:48:23 -0500] "GET /tomcat/tomcat.htm. HTTP/1.1" 301 258
www.jmargolin.com "-" "Mozilla/4.0 (compatible; MSIE 6.0;
Windows NT 5.2; SV1; .NET CLR 1.1.4322; .NET CLR 2.0.50727)" "-"
209.191.175.42
209.191.175.42 - - [06/Nov/2009:15:51:26 -0500] "GET /nasa/nasa.htm HTTP/1.1" 200 60378
jmargolin.com "http://jmargolin.com/" "Mozilla/4.0 (compatible;
MSIE 7.0; Windows NT 5.1; .NET CLR 1.1.4322; .NET CLR 2.0.50727; InfoPath.1;
.NET CLR 3.0.04506.30; .NET CLR 3.0.04506.648)" "-"
209.191.175.42
209.191.175.42 - - [06/Nov/2009:15:56:35 -0500] "GET /svr/auvsi_answer.htm HTTP/1.1" 200
392069 jmargolin.com "http://jmargolin.com/svr/auvsi_response_index.htm"
"Mozilla/4.0 (compatible; MSIE 7.0; Windows NT 5.1; .NET CLR 1.1.4322;
.NET CLR 2.0.50727; InfoPath.1; .NET CLR 3.0.04506.30; .NET CLR
3.0.04506.648)" "-"
Universal Avionics Systems Corporation - Tucson, AZ
mx.uasc.com
206.169.91.33 - - [04/Nov/2009:00:14:09 -0500] "GET /tomcat/tomcat.htm HTTP/1.1" 200 21340
www.jmargolin.com "-" "Mozilla/4.0 (compatible; MSIE 7.0;
Windows NT 5.1; .NET CLR 1.1.4322; .NET CLR 2.0.50727; InfoPath.1)"
"-"
Universal Avionics Systems Corporation - Redmond, WA
phoenix.uascwa.com
206.169.227.226 - - [04/Nov/2009:11:23:19 -0500] "GET /tomcat/tomcat.htm HTTP/1.1" 200 21340
www.jmargolin.com "-" "Mozilla/5.0 (Macintosh; U; Intel Mac OS X
10_6_1; en-us) AppleWebKit/531.9 (KHTML, like Gecko) Version/4.0.3 Safari/531.9"
"-"
[They came to www.jmargolin.com from a Google search
for: Jed Morgolin]
phoenix.uascwa.com
206.169.227.226 - - [04/Nov/2009:12:44:56 -0500] "GET /
HTTP/1.1" 200 16200 www.jmargolin.com "http://www.google.com/search?sourceid=navclient&aq=t&ie=UTF-8&rlz=1T4ADBF_enUS312US312&q=Jed+Morgolin"
"Mozilla/4.0 (compatible; MSIE 7.0; Windows NT 5.1; .NET CLR 1.1.4322;
.NET CLR 2.0.50727; InfoPath.1)" "-"
phoenix.uascwa.com
206.169.227.226 - - [04/Nov/2009:12:45:05 -0500] "GET /svr/auvsi_response_index.htm HTTP/1.1"
200 2673 www.jmargolin.com "http://www.jmargolin.com/"
"Mozilla/4.0 (compatible; MSIE 7.0; Windows NT 5.1; .NET CLR 1.1.4322;
.NET CLR 2.0.50727; InfoPath.1)" "-"
phoenix.uascwa.com
206.169.227.226 - - [04/Nov/2009:12:45:25 -0500] "GET /nasa/nasa.htm HTTP/1.1" 200 60378
www.jmargolin.com "http://www.jmargolin.com/" "Mozilla/4.0
(compatible; MSIE 7.0; Windows NT 5.1; .NET CLR 1.1.4322; .NET CLR 2.0.50727;
InfoPath.1)" "-"
phoenix.uascwa.com
206.169.227.226 - - [04/Nov/2009:13:06:08 -0500] "GET /patents2/pilot.htm HTTP/1.1" 200 12578
www.jmargolin.com "http://www.jmargolin.com/tomcat/tomcat.htm"
"Mozilla/5.0 (Macintosh; U; Intel Mac OS X 10_6_1; en-us)
AppleWebKit/531.9 (KHTML, like Gecko) Version/4.0.3 Safari/531.9"
"-"
Sutin Thayer
mail.sutinfirm.com
207.114.136.186 - - [02/Nov/2009:20:11:13 -0500] "GET /svr/auvsi_answer.pdf HTTP/1.0" 200
268354 www.jmargolin.com
"http://www.jmargolin.com/svr/auvsi_response_index.htm"
"Mozilla/4.0 (compatible; MSIE 7.0; Windows NT 5.1; GTB6; .NET CLR
1.1.4322; .NET CLR 2.0.50727; .NET CLR 3.0.4506.2152; .NET CLR 3.5.30729)"
"-"
[They came to www.jmargolin.com from a Google search
for: jmargolin]
mail.sutinfirm.com
207.114.136.186 - - [02/Nov/2009:19:35:58 -0500] "GET /
HTTP/1.0" 200 16200 www.jmargolin.com
"http://www.google.com/search?hl=en&source=hp&q=jmargolin&aq=f&oq=&aqi=&rlz=1R2ADFA_enUS342"
"Mozilla/4.0 (compatible; MSIE 7.0; Windows NT 5.1; GTB6; .NET CLR
1.1.4322; .NET CLR 2.0.50727; .NET CLR 3.0.4506.2152; .NET CLR 3.5.30729)"
"-"
The web page tomcat.htm is
the article Margolin wrote in 2001 titled TomCat - Atari's Last XY Game
. TomCat was a 3D flying game that was never produced. It became an object of
controversy during the Universal Avionics Systems Corporation lawsuit. Because
Margolin is the Keeper of the TomCat History he was obliged to write about its
role in the case. See Exhibit 37 at
Appendix Volume 3 A130. Although Margolin expended considerable effort to make
videos of the game, none of the Visitors bothered to look at them.
The web page auvsi_answer.pdf is Margolin’s response to the
Abernathy AUVSI article. See Exhibit 32 at Appendix Volume 3 A29.
The web page auvsi_answer.htm is an html version of Margolin’s
Response.
The web page pilot.htm is Margolin’s index page for the ‘073 patent.
The web page nasa.htm is Margolin’s article/blog on the
current case. When Margolin filed his FOIA request he asked for the Journalist
Exemption on the grounds he intended to write an article on How NASA Treats
Independent Inventors, and that is what he is doing. (www.jmargolin.com/nasa/nasa.htm)
At one
point Universal Avionics Systems Corporation did a Google search for Jed Morgolin. Although they spelled
Margolin’s name wrong, Google took them to Margolin’s web site anyway.
37. The
reason for these visits was revealed on December 3, 2009 when Margolin received
an email from Scott J. Bornstein (“Bornstein”) of the law firm of Greenberg Traurig.
See Exhibit 38 at Appendix Volume 3 A134.
Margolin points out that:
He has never threatened to sue Abernathy for
infringement of the Patents.
He does not own the Patents and, therefore, does
not have standing to sue Abernathy for infringement. Thus, Abernathy does not
need to fear that Margolin will sue him for infringement.
Optima Technology Group/Robert Adams is not
Margolin’s agent and does not represent him.
Margolin is not Optima Technology Group/Robert
Adams’ agent and does not represent them.
Bornstein represented Universal
Avionics Systems Corporation in its lawsuit against Optima Technology Group and
Margolin. He now also represents Abernathy.
Abernathy has been constructively
working as NASA’s agent since 2004 in NASA’s attempt to invalidate the Patents
because, according to NASA:
It seems clear that the technical
folks have determined that the Margolin patent on Synthetic Vision creates a
substantial problem for many of our partners in the aviation safety industry
for a variety of reasons.
See Exhibit 23 at Appendix Volume 2 A55.
Although NASA denied Margolin’s
claim in July 2004 (See Exhibit 20 at Appendix Volume 2 A19) they have
continued in their attempts to invalidate and discredit the Margolin Patents
through, at least, Abernathy.
They have waged a war (NASA’s own
word) against Margolin, one conducted by stealth and deception, all the while
telling themselves it was for the Public Good. It was not for the Public Good.
It was for their own benefit and the benefit of their Partners.
And now Bornstein (representing
NASA’s agent Abernathy) has threatened Margolin with unspecified legal action
which, if taken, would subject Margolin to a frivolous and malicious lawsuit.
NASA has crossed a line.
This line separates civilized
behavior from uncivilized behavior.
This line separates decency from
indecency.
This line separates bureaucratic
self-interest from criminal misconduct.
According to McNutt’s August 5,
2008 letter to Margolin (See Exhibit 6 at Appendix Volume 1 A37):
We regret
the delay in processing your claim and assure you that we are now undertaking
measures to provide a resolution of your claim as soon as possible.
Unfortunately. Mr. Alan Kennedy retired from NASA earlier this year and the action on your claim was not conveyed
to management in a timely manner. In addition the local attorney
responsible for review of your claim also departed from NASA. We are now
cognizant of the importance of proceeding with a review of the claim and will
contact you when we have reached a decision.
{Emphasis added]
It is hardly credible that the
group dealing with the Margolin Claim, and then the Margolin FOIA request,
could have kept their actions secret from NASA management considering the
enormous amount of time spent by various NASA personnel on it over the years.
Still, since the core group was
relatively small, they might have been able to operate under the radar.
This Rogue Group has committed
criminal misconduct under cover of authority.
Normally, the department charged
with investigating criminal misconduct is the Department of Justice. However,
DOJ is representing NASA in the present case, which presents an insurmountable
conflict of interest.
The only way a proper investigation
can be conducted is for the United States Attorney General to appoint Special
Counsel as provided by 28 C.F.R. § 600 .
38. It
is ironic that the documented unethical and criminal acts were committed by, at
the behest of, or with the knowledge of NASA’s Office of the General Counsel. Under the Code of
Federal Regulations Title 14 Aeronautics and Space, Part
1207—Standards of Conduct:
§ 1207.103 Designations of responsible
officials.
(a) Designated Agency Ethics
Official. The General Counsel of NASA is the Designated Agency Ethics
Official and is delegated the authority to coordinate and manage NASA's ethics
program as set forth in 5 CFR 2638.203.
Cause of Action
(Breach of Duty to Disclose Responsive Documents)
39. Plaintiff incorporates and re-alleges all
preceding paragraphs as if fully set out herein.
40. Defendants have violated their duty of disclosure under 5
U.S.C.§ 552(a)(2) et seq. by failing
to disclose all documents
related to the Administrative Claim of Jed Margolin for Infringement of U.S. Patent Nos.
5,566,073 and 5,904,724; NASA Case No. I-222.
41. Plaintiff has constructively exhausted
all his administrative remedies as set forth in 5 U.S.C. § 552(a)(6)(C)(i).
Requested Relief
WHEREFORE,
plaintiff respectfully requests that this Court:
A. Order defendant to disclose requested
records in their entireties and provide copies to plaintiff, said records to
include: the patent report alleged to exist, but not provided, in the Borda
letter; contacts between NASA and Mike Abernathy (and/or Rapid Imaging Software
and/or its employees and/or agents); contacts between NASA (and/or those acting
at NASA’s direction) and Universal Avionics Systems Corporation; and contacts
between NASA (and/or those acting at NASA’s direction) and its partners
including, but not limited to, Boeing, General Atomics, and AeroVironment.
B. Issue an Order finding that
defendant’s actions were in bad faith, arbitrary, capricious, and contrary to
law;
C. Provide for expeditious proceedings
in this action;
D. Award plaintiff his costs incurred
during the administrative proceedings and in this action;
E. Recommend to the United States
Attorney General that he appoint Special Counsel to investigate criminal misconduct
committed by NASA employees under color of authority; and
F. Grant
such other relief as the Court may deem just and proper.
Respectfully submitted,
/Jed Margolin/
Jed
Margolin, plaintiff pro se
1981
Empire Rd.
VC Highlands, NV
89521-7430
775-847-7845
jm@jmargolin.com
Dated: December 22, 2009
CERTIFICATE OF
SERVICE
The
undersigned hereby certifies that service of the foregoing SECOND AMENDED
COMPLAINT has been made by electronic
notification through the Court's electronic filing system on December 22, 2009.
/Jed Margolin/
Jed Margolin