How Oregon's Top Wildlife Official Got Sued Over His State's Hunting App
An end-run on sovereign immunity
|Joe Mullin||Feb 18|
What if you could get a patent on a new government program? Then, you could ask for the government to pay you royalties just for running that program. Nice work, if you can get it.
Oregon resident Iiley Thompson is the named inventor on U.S. Patent No. 10,257,651, “Mobile electronic device for identifying and recording an animal harvest.” Shortly after his patent issued in 2019, Thompson’s lawyers sent a letter to the Oregon Department of Justice, suggesting that the Oregon government take a license to his patent.1
Thompson claims that the Oregon Department of Fish and Wildlife’s MyODFW app, which allows hunters and anglers to complete their licensing paperwork on a mobile device, infringes his patent.
Claim 1 describes:
Entering animal harvest data (i.e. how many fish of a certain type you caught) into a computer
Uploading the harvest data, together with location data, to a second computer (operated by someone else)
Checking the data against the maximum allowed by the user’s license
In other words, Thompson patented following state laws, and filing the appropriate paperwork, but you know, connected to a powerful computer network. Claim 2 describes the same system, but specifies a mobile device as the first computer and a server as the second.
On January 22, Thompson filed a lawsuit claiming that MyODFW infringes his patent. But he didn’t sue the state or any of its departments—he sued Curt Melcher, the Director of the Oregon Department of Fish and Wildlife, personally.
Making it Personal
Because of a legal concept called sovereign immunity, you generally can’t sue a state government, or any of its departments, for patent infringement. When I saw the Thompson v. Melcher case as I was going through this year’s first patent lawsuits, it struck me as a possible attempt to do an end-run on sovereign immunity.
I ran this hypothesis by Joshua Landau, patent counsel at Computer Communications & Industry Association, who agreed that it did look like a way to put legal pressure on a state when you can’t sue the state. He pointed me to a 1908 Supreme Court case called Ex parte Young, which suggests just this method to get around sovereign immunity. Plaintiffs can sue a state official who they believe is in violation of a federal law. In this case, because Thompson is barred from arguing that the State of Oregon is violating his patent, he’s saying Melcher personally has contributed to the infringement of his patent.
The Ex parte Young route doesn’t provide a way to get damages, only an injunction, and indeed Thompson doesn’t ask for damages in his lawsuit. If Thompson’s extremely broad claims are valid, in my view, that would basically mean shutting down the MyODFW app.
"It certainly looks like an attempt to put pressure on the state, both through legal expenditures, and by threatening to enjoin a service they provide," Landau said. "Suing an individual official is a plausible strategy to try to get around state sovereign immunity in some cases, but there are significant open questions."
Among those questions would be whether or not Melcher has a significant enough connection to the allegedly infringing app. Melcher is a longtime public servant who has served as ODFW’s director since 2015.
Patenting A Government Service Is Pretty Bad
Regardless of who is being sued, Thompson’s patent on e-tagging wildlife is very problematic in and of itself. Most government services aren’t really “inventions.” So there really shouldn’t be patents on collecting benefits, or getting a certain type of state-granted license, or reporting your taxes. And because of the Alice v. CLS Bank Supreme Court case, similar “do it on a computer”-style patents should be banned, as well. We shouldn’t be seeing patents that cover “requesting benefits plus a powerful computer network” or “sending your paperwork to the government oh but on a smartphone.”
But we do see them all the time, because it’s a broken system. Patent examiners have, on average, 19 hours to prove applicants like Iiley Thompson should not get a patent.2 Applicants get an unlimited number of do-overs, as long as they can keep paying for them.
Thompson’s patent application was filed in 2015. At that date, it was utterly predictable that government services like hunting licenses would continue to move online, as they already had been for many years.
And it wasn’t just predictable in a general sense—it was specifically predictable that Oregon regulators would move their hunting licenses to smartphones. They were already moving other ODFW services to smartphones, and were being as public about it as possible. By late 2014, about a year before Thompson filed his patent application, the Department linked smartphones to its hunting map. This was reported in The Oregonian, the state’s largest newspaper. By mid-2015, ODFW had come out with a fishing-specific app, which was reported in the Klamath Falls Herald and News.
So it’s hardly shocking that in March 2016, ODFW got started thinking about how they could improve their licensing process. The timeline for Oregon’s creation of electronic licensing is laid out in this ODFW PowerPoint.
Notably, Thompson never actually created his own app, at least not one that’s ever been made publicly available. As his complaint states, “Thompson has never offered nor sold, and has never authorized nor licensed any other to offer or sell, a system or method covered by the claims of the ‘651 patent.”
Thompson runs a footwear business in a town just south of Portland, and has an extensive resume of work in that industry, including stints at Adidas and Nike. I asked Thompson to talk about his case to get his side of it, but he declined an interview. I also emailed the public information office at the Oregon Department of Fish and Wildlife, but didn’t hear back.
That’s all for this week. Due to various life things that I did not foresee, the newsletter is out on Thursday this week, but I’ll be back to Wednesdays next week. My next post will go through a couple dozen NPE lawsuits that have been filed in the last month.
In other news, I’m excited to have a DocumentCloud account for Letters Patent. For those interested in looking at the legal documents associated with the cases I’m covering, it should be a nicer reading experience.
Legal Documents from this post:
Image: Drawing from U.S. Patent 10,257,651
Patent demand letters frequently do not make explicit “demands,” but rather couch the language in terms of making an “offer” to license or buy a patent. But, it’s generally understood to be a demand for payment. It puts the recipient officially on notice, which can have other effects, like increasing damages. More examples of demand letters are at trollingeffects.org.
Frakes, Michael and Wasserman, Melissa F., The Failed Promise of User Fees: Empirical Evidence from the U.S. Patent and Trademark Office (December 2014). Journal of Empirical Legal Studies, Vol. 11, Issue 4, pp. 602-636, 2014. For something free and more readable, see this 2014 piece in The Washington Post, “Inside the stressed-out, time-crunched patent examiner workforce.”