Open Source JMRI Timeline

This is about a U.S. legal case in which a free open source software project
is defending itself against a commercial entity trying to patent and control
intellectual property created by model train enthusiasts. Some of this IP
has been in public development and use since 1946. (The United States Patent and
Trademark Office or USPTO says: “A person shall be entitled to a patent unless …
the invention was … in public use or on sale in this country, more than one year
prior to the date of the application for patent….” See

35 U.S.C. 102 Conditions for patentability.)

The timeline below was derived from many
public sources and is to
the best of my knowlege correct (but certainly not complete).
Why publish this?

The Case All of Open Source Has Been Waiting For is complex but seems to be
establishing important precedents in open source law. Seeing the many threads of
action set forth chronologically may help non-lawyer readers understand. This blog
entry follows up on my

August 29, 2008 entry called “Open Source Court Hearing Today” about
the JMRI model train software legal case.
My husband John Plocher and I have been following the
JMRI open source court case since it
started about 3 years ago. John is also a JMRI contributor.

Background:

• What is JMRI?
  
  From the JMRI model train software website:
  
  “JMRI is an informal open-source group. We do this for
  the joy of model railroading, and don’t produce anything for profit.”
• JMRI is good work.
  
  It won James Gosling’s
  annual
  JavaOne Duke’s Choice Award, for “Java Everywhere” in 2006.
• Bob Jacobsen
  
  Bob leads the JMRI effort. He was the
  winner of U.C.
  Berkeley’s Distinguished Teaching Award in 2004. See
  Bob’s picture accepting
  the Duke’s Choice award. Remember MythBuster’s TV story in 2006 called
  
  Anti-Gravity Device? Bob was the Guest Star Physics Professor on that MythBuster’s
  show.
• SLAPP
  
  SLAPP means “strategic lawsuit against public participation”, defined
  in wikipedia as:
  “…a lawsuit or a threat of lawsuit that is intended to intimidate and silence critics
  by burdening them with the cost of a legal defense until they abandon their criticism or opposition. … The plaintiff’s goals are accomplished if the defendant succumbs to fear, intimidation, mounting legal costs or simple exhaustion and abandons the criticism. A SLAPP may also intimidate others from participating in the debate.”
• A very brief summary of this complex case (from
  
  JMRI Defense: Our Story So Far):
  
  “JMRI is open-source software for model-railroaders. …
  Matt Katzer owns KAM Industries, a company that tries to sell model railroad software. He’s never contributed anything to the JMRI effort. But that hasn’t stopped him from taking JMRI intellectual property.
  Matt Katzer and his company KAMIND Associates, Inc. are attacking the rights of open source groups to enforce their copyrights and licenses. If they prevail, the rights of open source groups like JMRI will be significantly weakened, if not lost. We are breaking ground for open source groups in federal court and establishing legal rights for open source groups and their members. We need your help and donations to succeed in this legal fight.”
• To make donations, go to
  Donating to JMRI.

John, James, Bob and Duke, JavaOne

Model Train Layout at JavaOne 2006

Images Copyright 2006 John Plocher

“Model train control system” U.S. Patents by Matthew A. Katzer or KAM Industries
involved in this case include:

US Pat. App. 11/981320 Filed Oct 30, 2007	US Pat. App. 11/607233 Filed Dec 1, 2006	US Pat. App. 11/593770 Filed Nov 7, 2006	US Pat. App. 11/592784 Filed Nov 3, 2006 Jan 25, 2008 USPTO rejected
US Pat. 7209812 Filed Mar 14, 2006	US Pat. 7216836 Filed Oct 26, 2004	US Pat. 7177733 Filed Nov 16, 2004 issued February 13, 2007 Disclaimed Mar 18, 2008	U.S. Pat. App. 10/889,995 Filed Jul 13, 2004 Dec 21, 2006 USPTO rejected
US Pat. 6909945 was App. 10/713,476 Filed Nov 14, 2003 issued June 21, 2005	US Pat. 6827023 Filed Jan 10, 2003	US Pat. 6877699 Filed Nov 10, 2003	US Pat. 6530329 Filed Apr 17, 2002 issued March 11, 2003 Disclaimed Mar 18, 2008
US Pat. 6494408 Filed May 15, 2001	US Pat. 6460467 Filed May 15, 2001 issued October 8, 2002	US Pat. 6270040 Filed Apr 3, 2000 issued August 7, 2001	US Pat. 6267061 Filed Apr 17, 2000 issued July 31, 2001
US Pat. 6676089 Filed May 14, 1999 issued Jan 13, 2004	US Pat. 6065406 Filed Jun 24, 1998 issued May 23, 2000

Timeline:

Coming Events

December 19, 2008 – Court Hearing (to be in San Francisco)

2008

* January 18, 2008 - Jacobsen's Response to Katzer's Contract, Copyright and Digital Millennium Copyright Act (DMCA) Arguments * January 22, 2008 - Amicus Brief Accepted * January 23, 2008 - Deadline For Settlement Disclosures Set * January 25, 2008 - United States Patent and Trademark Office (USPTO) Rejects Katzer patent application 11/592,784 * February 01, 2008 - Katzer Doesn't Provide Disclosures, Files to disclaim Patent, Moves to Dismiss * February 13. 2008 - Settlement Conference * February 15, 2008 - Hearing Rescheduled * February 29, 2008 - Motions for For Early Discovery & Rescheduling Denied * March 18, 2008 - Katzer disclaims patent 6,530,329 (issued March 11, 2003) * March 18, 2008 - Katzer disclaims patent 7,177,733 (issued February 13, 2007) * April 04, 2008 - Two replies from Jacobsen * April 11, 2008 - Hearing * May 07, 2008 - Copyright Appeal Hearing * July 14, 2008 - JMRI 2.2 released * August 13, 2008 - Copyright Appeal Decision * August 29, 2008 - Scheduling Conference

2007

* January 19, 2007 - Federal Court Hearing * February 13, 2007 - Katzer patent 7,177,733 issued (disclaimed March 18, 2008) * July 22, 2007 - JMRI 1.8 released * August 06, 2007 - DecoderPro.com Ordered Transferred to JMRI * August 17, 2007 - Ruling on January 19th Motions * September 5, 2007 - Request for Reconsideration on Cybersquatting Denied * September 13, 2007 - Appeal of Copyright Ruling * September 14, 2007 - Case Management Conference * October 30, 2007 - US Pat. App. 11/981320 filed by Katzer * October 31, 2007 - JMRI files a Second Amended Complaint * November 2, 2007 - Katzer files a Motion in Opposition * November 29, 2007 - Jacobsen files a Motion pointing out Katzer's misstatements and noticing issues * December 03, 2007 - Katzer replies * December 11, 2007 - Second Amended Complaint Ruling * December 17, 2007 - Jacobsen Appeal Brief Filed with the Court of Appeals * December 21, 2007 - Katzer files a 3rd Motion to Dismiss * December 28, 2007 - Key Open Source Organizations File Brief Supporting JMRI * December 31, 2007 - JMRI 2.0 released

2006

* March 13, 2006 - Jacobsen asks for a Declaratory Judgment * March 14, 2006 - US Pat. 7209812 filed by Katzer * May 25, 2006 - Katzer files an Information Disclosure Statement 10/889,995 * July 12, 2006 - Anti-SLAPP motions * August 7, 2006 - USPTO provisionally rejects Application 10/889,995 - a Continuation of '329 - for unpatentability * August 13, 2006 - Court Hearing * September 10, 2006 - Infringing Copyrighted Material * September 11, 2006 - Jacobsen files an Amended Complaint * September 27, 2006 - Another Round of Motions from Katzer * October 20, 2006 - Written Ruling on Initial Motions * October 25, 2006 - Request for Preliminary Injunction Against Copyright Infringement * October 30, 2006 - Request for Reconsideration of Motions Denied * November 3, 2006 - Reply to Motions; Defending Open-Source Copyright * November 3, 2006 - US Pat. App. 11/592784 filed by Katzer * November 7, 2006 - US Pat. App. 11/593770 filed by Katzer * November 9, 2006 - Katzer files a Memorandum of Opposition * November 17, 2006 - JMRI files a reply and additional materials * November 17, 2006 - Katzer also files a reply * December 1, 2006 - US Pat. App. 11/607233 filed by Katzer * December 04, 2006 - JMRI filed a Motion for Leave to File Surreply to Defendant's Reply Memorandum. * December 21, 2006 - USPTO Rejects application 10/889,995 - a Continuation of '329 - for unpatentability

2005

* March 8, 2005 - Jacobsen gets a bill from Katzer for JMRI downloads (at $19/copy) * 7 April 2005 - Katzer vs. Britton trademark infringement suit settled * June 18, 2005 - JMRI 1.6 released * June 21, 2005 - Katzer patent 6,909,945 issued * August 24, 2005 - Jacobsen gets a $203,000 bill from Katzer, for 7,000 JMRI downloads (at $29/copy)

2004

* January 13, 2004 - Katzer patent 6,676,089 issued * February 22, 2004 - Katzer registers the domain name DecoderPro.com * April 08, 2004 - JMRI 1.4 released * July 13, 2004 - US Pat. App. 10/889,995 filed by Katzer * September 08, 2004 - Glenn Butcher removes his loconetd and railroad apps after being advised of potential patent infringement by Katzer * October 13, 2004 - A post on the LocoNet Hackers yahoo group mentions Katzer's use of DecoderPro.com. * October 15, 2004 - Jacobsen posts to the JMRIusers group about it. * October 26, 2004 - US Pat. 7216836 filed by Katzer * October 27, 2004 - Jacobsen registers DecoderPro as a trademark with the USPTO * October 29, 2004 - Jerry Britton offered to trade Katzer another domain name for DecoderPro.com * 8 November 2004 - Katzer sued Jerry Britton for trademark infringement * November 16, 2004 - Katzer files for patent 7,177,733 (issued February 13, 2007, disclaimed March 18, 2008)

2003

* January 10, 2003 - US Pat. 6827023 filed by Katzer * March 11, 2003 - Katzer patent 6,530,329 issued (disclaimed March 18, 2008) * August 18, 2003 - JMRI 1.2.5 released * November 10, 2003 - US Pat. 6877699 filed by Katzer * November 14, 2003 - Katzer files for patent 6,909,945 (issued June 21, 2005)

2002

* March 2002 - JMRI developers use Java RMI to provide client/server capabilities * April 14 2002 - JMRI test version with client/server code released * April 17, 2002 - Katzer files for patent 6,530,329 (issued March 11, 2003, disclaimed March 18, 2008) * September 17, 2002 - Katzer files lawsuits against Hans-Rudi Tanner and Juergen Freiwald for patent infringement * October, 2002 - Hans-Rudi Tanner and Juergen Freiwald reply * October 8, 2002 - Katzer patent 6,460,467 issued * October 28, 2002 - JMRI 1.1 released * December 30, 2002 - Katzer dropped the Tanner and Freiwald suits

2001

* May 15, 2001 - US Pat. 6494408 filed by Katzer * May 15, 2001 - US Pat. 6460467 filed by Katzer (issued October 8, 2002) * July 12, 2001 - First "commercial" use of the name decoderpro by JMRI developers * July 31, 2001 - Katzer patent 6,267,061 issued * August 7, 2001 - Katzer patent 6,270,040 issued

2000	* May 23, 2000 - Katzer patent 6,065,406 issued * April 03, 2000 - Katzer files for patent 6,270,040 (issued August 7, 2001) * April 17, 2000 - Katzer files for patent 6,267,061 (issued July 31, 2001)

1999	* May 14, 1999 - Katzer files for patent 6,676,089 (issued Jan 13, 2004)

1998	* June 24, 1998 - Katzer files for patent 6,065,406 (issued May 23, 2000)

1946-now

.

Selected Prior Art Listed in U.S. Patent 7,177,733 (patent disclaimed March 18, 2008) 1946-now The Tech Model Railroad Club (TMRC) is a student organization at Massachusetts Institute of Technology (MIT). TMRC is one of the most famous model railroad clubs in the world. Formed in 1946, its HO scale layout specializes in automated operation of model trains. Many TRMC publications are referenced as prior art. 1988 The Märklin Digital Club: The Digital Club was launched in 1988 and has since been keeping pace with the rapidly advancing technology of digital multi-train control. Many Digital Club publications are referenced as prior art. 1992 "A model railroad for Ada and software engineering" by John W. McCormick, "Communications of the ACM" archive: Volume 35 , Issue 11 (November 1992), pp. 68 - 70, ISSN:0001-0782 1994 Rutger Friberg Model Railroad Electronics Allt om Hobby Publishing Company, ISBN-10: 9185496731 (expanded and republished: 1995, 1997, 1998)