Surveillance End Users Getting Sued by Hawk

Author: IPVM Team, Published on Aug 08, 2013

Last year, Avigilon sued Hawk Technology Systems while Hawk sued Vicon and BJ Wholesale Club plus countersued Avigilon for patent infringement. Now Hawk says it will shift its strategy from targeting manufacturers to targeting end users. We interviewed Barry Schwab, the Chief Technology Officer and President of Hawk to understand their patents, approach and intentions.

Our report answers these questions:

  • Why is Hawk targeting end users?
  • What does Hawk's patents cover?
  • What happened to the initial suits against Avigilon, Vicon and BJ's?
  • What type of licensing agreements is Hawk looking for?
  • How and when did Hawk invent this?
  • Who may be violating Hawk's patents?
  • What will happen to manufacturers and end users?

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Comments (27)

john: please thank mr purvis your associate for making the corrections to the article

Mr. Schulman, the byline as been corrected. I've spoken to Mr. Schwab this evening and the 30+ patents are correctly atrributed to him and not Hawk Technologies. Feel free to get in touch with me if you have any additional questions.

Today's copyright and patent matters totally became insane and the biggest threat to the technologic development. Greedy inventors wanna make more and more money and block the others to add top of the founded ideas. The given stories in the article are discusting!

Their action might be lawful but not right! Today's patent and copyright matters must be reviewed and should be in favour of the humanity not only the inventor's benefits. By 2013 human being would achieve far better technology if there wouln't be these funny and ridicilous patent and copyright things. Millions of people dead, sufered and suffering because of uninvented technology preveneted by these two criminal subjects; copyright and patent.

The post from undisclosed doesn't belong on a business forum. We are all in BUSINESS, not running charitable organizations. When "humanity" evoles to Star Trek mode - and everything is free because our replicators create them from nothing - then we can get rid of patents and copyrights.

@Undisclosed

So your saying that no one should be given any credit or compensation for something they invented on their own? I thought we lived in a Capitalist society where people get paid for goods and services they provide. But if you feel so strongly about this then you may want to consider moving to China. They have no problems stealing other peoples ideas, paying workers as little as possible to turn the biggest profit with the least amount of work and ingenuity.

Can someone explain how reapplication extends the original patent? That seems to me to be an abusive practice if that means what I think it means. The new inventions upon reapplication would seem to be protected of course. But, are we saying that the oldest inventions in the patent are reanimated to live another 20 years? Or did I just miss the point of the reapplication?

When we first published this story, Undisclosed asked: "Can someone explain how reapplication extends the original patent?"

I talked to a patent lawyer and the patent office today and to answer the question: It doesn't extend the patent, but it makes it stronger.

Here are some differences in patent reexamination and reissue. A reissue can be used to broaden the scope of claims of a patent (within two years of it's original issue). It can also be used to narrow the scope of a patent. A patent owner can also introduce prior art to strengthen the patent. The ideas of reissue is to make claims clearer or correct errors and it usually used to make a patent stronger. It does not extend the life of the patent. A reissue can only be initiated by the patent owner and can’t be done after a patent has expired. One downside is that reissue also opens up examination of every claim made by the patent, not just the ones being corrected.

In contrast, a reexamination can be initiated by the patent owner or someone challenging the patent or a judge presiding over a patent case. It’s to examine the patent to make sure all the claims are sound and legit and assesses the strength of the patent. Reexaminations are often done instead of civil litigation to settle patent disputes. Reexaminations cannot be abandoned once the process has started, but reissues can. The patent office says reissues are done more frequently done that reexaminations.

That’s the gist of it, but if anyone has any other questions let me know.

Sounds like instead of going after manufacturers who have bigger legal budgets and might band together with other manufacturers, they're going after customers as easier targets, which also might inspire the manufacturer to pony up money for fear the customers will come back on them and also scare away future customers.

If I were a judge I'd say the first people Hawk would have to go after is the manufacturers. If the manufacturer sold customers a patent infringing product, that's the first party of liability. Only if after the manufacturer is not longer able to meet restitution requirements (such as insolvency), would customers I think then be required to make good on compliance.

I guess even if they did go after customers first, I'd guess customers could go back on manufacturers (and possibly dealeras and distributors) for having been sold "faulty" products that were patent infringing- such customers have a reasonable expectation that they are buying legal products.

I started in the IT industry and as I've said before it seems the security industry is far behind IT (like maybe a decade) in technology solutions. It's like the SCO/Linux lawsuits all over again, among others.

I'm for making money on inventions, I firmly believe it's led to more innovations that saves lives than costs them. (I do agree that in some cases it has cost them, but on the balance has saved more, but that is a deep philisophical dicussion not for this discussion).

But some of these "process" patents seem a little ridiculous to me. Multi-streaming? It almost seems like if nobody has patented it yet, I can go down to the patent office and patent the idea of putting doors on cars. So every car that get's sold either has to pay me a royalty or people have to get in and out of cars Dukes of Hazard style. Now if you come up with a door latching system that gives you a solid, clean sounding lock that's better than other door latches, that's one thing, but you can't patent the idea of putting doors on cars.

By the way, if you got to this page by doing a Google search, you owe me money because I just patented that idea. Google's name and technology is their own, but the process of using Google to do a search, I've patented. Cash or credit card. No checks please.

Luis, you clearly don't understand patents and their purpose. Hawks' patents were applied for in 1995. Tell me one product that you know of in 1995 that used multi-streaming for purposes of recording video?

That is the point. They applied for a patent that pre-dates the use of the application in their patent. This isn't the "Chicken or the Egg" story. There clearly is a winner in the debate. They filed the patent probably 10-15 years ahead of the industry using the same process.

Your car door analogy doesn't fit, since cars have had doors for over 100 years now. Your patent would NOT pre-date the application of doors on cars. You would actually never receive a patent for something like that, because it is already in use and would be considered public domain.

"Luis, you clearly don't understand patents and their purpose."

Yeah, I stopped about right there.

It's pretty obvious that Mr. Schwab (any relation to Charles?) and Hawk were unsatisfied with the results of their lawsuits against Avigilon and Vicon so they decided to pursue easier game: end users who typically don't have the same deep pockets.

I find it interesting they waited so long to initiate their lawsuits. After all, multi-streaming has been used for at least 10 years. Why the wait?

These two have apparently sued Apple as well. As far as I can tell, nothing has happened with the case since September of 2010 (the court is extremely busy). So, yeah, patent trolls looking for a payday.

Time for patent law reform. If the original inventor never attempted to capitalize on the patent, it should be invalidated after a number of years- say, ten years. Hawk produces nothing, contributes nothing. They're mere rent-seekers, imagining future technologies and waiting for someone else to invent them so they can sue.

I find it interesting that the other principal in Hawk Technology Systems is a lawyer with his own firm that he still actively manages. Nothing like having a loaded gun on yourside. Also, Barry Schwab comes from the old dinosaur media companies that have brought us archane copywright and licening to music and video called DRM. I agree, going after the end user is tatic that has been used in other tech areas to scare the end user and bring in the manufacturer by other means. This may not be patent trolling in a classic sense, but it is low-ball bullying by the school yard bully.

Yes you are a patent troll, especially going after customers 18 years after your idea was orgininally patented. The customer bought and paid for software expecting it to be a complete product, it's not the customers responsibility to reimburse you for any infringements that a vendor may or may not have committed.

Yes if you created a new technology you should be compensated by companies using that technology through licensing, but you came up with an idea. Idea's shouldn't be patentable. I don't see anywhere where you actually came up with and produced any technology related to your patent. You simply sat back and waited for vendors to start using the technology across the industry and then started suing. That in fact does make you a patent troll.

@Ron Walczak (questioning preferration of being undisclosed is not your business either, I don't feel that I have to disclose myself, fi there is problem what I am writing here, site admins already know who I am!. ) @undisclosed after Mr Ron If a patented idea not becoming real by the founder within a certain time (eg 10 years), founder should not have right but keeping his/her name as a founder of the idea. Patenting is not only for protecting ideas. Who register first competition. Many of us here productive and many ideas which recently not registered but used daily by everyone. Suddenly one chosen deciding to register that and not allowing others to continue to use the idea. Hawk thought multistreaming as i am thinking an aircraft which can do reversing and putting a side with a patent paper but not doing anything else. One day a company who is not aware of my idea investing millions and making the idea real. As a patent owner I am watching and waiting for their success. When its happen, when money start showing itself to this company, I am running to the court and claiming that this company has stole my idea. Stole???? Get lost! I am not saying that the inventor should not be protected. But today touch screen is the part of the life and the person/company who thought first, already got his part from the company who made actually real! Patents protected by laws and capitalism. Despite that no government questioning china's stealing the ideas policy. So where is patent and copyright understanding? This is just an another food chain and ultimate price beared by the people. Regards

I have a difficult time understanding what damages Hawk would argue they sustained from an end user. The end user is not reselling the product so there is no financial gain from the so called patent infringement

The only cases I've followed are the OV lawsuits which John chronicled here and the Apple / Samsung / HTC wars. In neither of these instances did they try and sue customer.

I'm sure if any of them thought there was a dime to be made, they would have

For those of you opposing this patent, there's an interesting idea being discussed - creating a Kickstarter for killing patents; Essentially crowdsourcing efforts to fund attorneys to invalidate patents.

I think it's very intriguing, primarily because the biggest weakness I have seen with manufacturers who are the targets of patent lawsuits is that they all stand alone. This is what happened with OV insanity. OV picked off manufacturers one by one, which is amazing considering how much bigger and more powerful those collective companies are. Any means that allowed them to come together could really help pool resources to invalidate the underlying patents that drive these lawsuits.

john: what comment do you have to your idea if the patent has already undergone a re-examination and is valid. Would you agree that the patent may have validity and those infringing should pay treble damags because they have been on notice for years and refused to pay a fair royalty?

Undisclosed, have these patents in question already undergone a re-examination? Feel free to share re-examination numbers or other details.

More and more, trolls that do not contribute anything to the industry or field of technology related to their held patents, are starting to lose - largely because of this.

Wi-Lan out of Canada for their wireless internet patents

Alcatel-Lucent and their eCommerce patents (old Bell Labs stuff)

Soverain Software and their 'online shopping cart' patents

What has Hawk contributed to either the technology or the industry it's used in?

Answer: Big Fat ZERO

A manufacturer suggested looking at and using a site named TrollingEffects. As a Rackspace post explains:

"It lets users anonymously submit and search demand letters they’ve received from purported patent trolls; study them; learn ways to encourage Congress to fix the nation’s broken patent system; and, most importantly, it teaches users how to win."

Receiving a patent is a cruel promise to a small business. The large companies know that it takes millions to defend a patent and just run over the small guys.

The big guys don't like "Patent Trolls" as they can't be counter sued for patent infringement. They are not in the industry and are a "Non-practicing Entity".

Now we have the advent of the "Patent Terriorist". These patent owners sue the end users for a small amount. If a manufacturer fails their responsibility to protect their customers and take a liscense, then that leaves only the SELLER or end user to pay a "reasonable royalty."

Patent infirngement includes Making, Using OR Selling of infringing products or methods.

This is very INTERESTING:

Aimetis Corp. v. Hawk Technology Systems, LLC

Case Number: 1:2015cv20728
Filed: February 20, 2015
Court: Florida Southern District Court
Office: Miami Office
Presiding Judge:
Nature of Suit: Patent
Cause of Action: 15:1126 Patent Infringement
Jury Demanded By: None

Henry, thanks.

Here is the Aimetis complaint against Hawk. Hawk sued an Aimetis client, Aimetis has countered by suing for judgment to confirm that Aimetis does not infringe Hawk's patents.

Related, Hawk has filed ~20 more suits since Dec 2014, screenshot:

Looks like Aimetis finally found some inspiration.

The inspiration appears to be the fact that Hawk sued one of Aimetis' end users:

Hawk’s identification of Aimetis’ video surveillance products in the claim chart to De La Salle indicates that Hawk considers Aimetis’ products to be material components of the alleged infringement of the ‘462 patent by De La Salle, and that Aimetis is at a minimum inducing and/or contributing to infringement of the ‘462 patent through the sale of its video surveillance products.

Which, IMHO, means that Hawk and Aimetis will settle quickly, for an undisclosed sum. Just like the other declaratory judgments brought against Hawk, by Milestone, Avigilon, and Genetec to name a few.

If history is repeated the result will be

  1. Hawk will agrees not to sue any Aimetis end user
  2. Aimetis will stop any reexamination of the patent '462
  3. De La Salle will not have to pay anything.
  4. Hawk will sue other end users of whoever they have not settled with yet.

Here a statement from the legal firm Jones Day who represented Genetec in their case:

Jones Day represented Genetec, Inc. in an action seeking a declaration that it did not infringe, and had intervening rights in, Hawk Technology Systems, LLC's U.S. Reissue Patent No. RE 43,462, claiming to cover video storage and display technology.

Genetec further sought a declaration that the '462 patent was invalid.

Jones Day resolved the matter for Genetec, ensuring its integrators, distributors, and customers were protected from Hawk's ongoing infringement litigation efforts.

Guess who is representing Aimetis? Jones Day...

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