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2005 Emails: Battelle Confirms Pulver Exclusive License
Rights to the 3-Part PDAC/MDM Software
Then Initiates
“new code…new name...patent” Tactic to Evade/Escape his License
Critical
text is highlighted. Comments are inserted for clarification/emphasis.
Clicking on the exhibit number will open the linked document.
Gary Morgan was
commercialization manager for National Security Directorate at PNNL; Dorow,
Shoemaker & Thurman are software developers.
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The following 2007-12
updates provide helpful context to emails below.
March 2007: The RDADS patent application is published Its diagrams/screens
and text confirm that RDADS is the PDAC/MDM inventions as does Battelle’s not citing PDAC/MDM as prior
art. Side-by-side
comparison shows patent
application’s main control panel is that of MDM. The patent
application is further evidence confirming that RDADS is new name and derivative
version of MDM/PDAC.
January 2008: Depositions by Battelle staff [Gary Morgan, Steven Shoemaker & Dr. Ian Gorton (software expert)]
confirmed RDADS is derivative version to the 2002-2003 MDM/PDAC
software exclusively licensed to small business owner
Pulver.
Battelle-produced color screen
shots of 2004 PDAC are virtually identical to
the Mobile Data Manager screens.
April 2008: DOE-funded
counsel filed documents admitting that the 2004
PDAC/MDM versions were renamed RDADS.
June 2012: DOE-funded counsel admits in
court documents that the 2004 BlackBerry PDAC/MDM version was
commercialized.
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January 25, 2005 email
[Morgan to Dorow and Shoemaker
Subject: Pocket Data Access Components
[PDAC
Brochure Abstract for ERICA [publications system] is attached with
approvers including Morgan, Goodwin et al.,
and with Dorow
and Shoemaker as authors.]
“Steve:
This ERICA request was 6 months old.
Farris is not the guy, so I had them change to me and I’ve signed it
off.
Please send me a copy of the flyer. I’m checking
on our licensing situation for this.— RE Pulver. “
[Comment: Morgan was verifying [obviously with
legal] whether Pulver had exclusive license to PDAC [MDM] derivative
versions.
Note, in 2004, Branton [PNNL Lead
Attorney for Intellectual Property] confirmed to DOE’s
Inspector General [GLR-00007
re:
I04RS007]
that Battelle was legally obligated to the license with
Pulver that granted him worldwide exclusive rights to MDM and derivative
works.]
SVS-00037
Jan 26, 2005 email
[Morgan to Shoemaker]
“Steve, If you are talking about the same
MDC[M] pieces of code that were licensed to Pulver, then we’re still under
the agreement with him
that we
can only license any 2 of the 3 parts of this three part set. Thanks, Gary”
[Comment:
As late as 1/26/05,
Battelle commercialization and legal acknowledged that Pulver had worldwide
exclusive license
to the MDM/PDAC three-part set including derivative
[follow-on] products.]
SVS-00112
January 27, 2005
1:40 PM email [Shoemaker
to Dorow, Morgan et
al. Subject: PDAC White Paper Attach: PDAC #PNNL-SA-44024]
“All The PDAC
white paper has been thru clearance, so here is the new version with the
document number.
Thanks. Steve Shoemaker “
Page 3 of 5
Summary...“Standard handheld PDA’s
[Pocket PC, Palm O/S, BlackBerry, Tablet PC, and Smart pones] are
supported.
Page 5 of 5
“The Pocket Data Access
Components software currently exists as an advance prototype (beta
software) and has been demonstrated
to several external clients. PNNL [Battelle] is currently using the product
internally to support one of its largest projects [RPMP]. The
software has been
licensed in its current state and is available at this time for support of government
clients or external licensing...”
[Comment:
Confirmed by Battelle documents & testimony, Dept. of Homeland
Security’s Radiation Portal Monitor Project [RPMP] funded
enhancements to PDAC/MDM in 2004 resulting in versions that
operated on BlackBerry and
included more advanced search features. The
new version(s) resulted
in Battelle’s 9/28/04 PDAC white paper, an update to the 12/18/03 paper that stated PDAC was licensed
to Pulver.]
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KED-00926 [Battelle’s Smoking Gun Email]
January 27, 2005 1:40pm email [Shoemaker to Dorow, Gary Morgan et
al. Subj: PDAC/MDM whitepaper] [SVS-00112]
“All The PDAC white paper has been thru
clearance, so here is the new version with the document
number. “
January 27, 2005 1:41pm email [Morgan to Shoemaker and
Dorow Subject: RE: PDAC whitepaper]
“Why don’t you guy’s file a new IR and tell me that this is all “new code”…Gary Morgan“
[Comment: Morgan suddenly called PDAC“
new code” to circumvent Pulver’s exclusive MDM license. IR=Invention
Report]
January 28, 2005
7:19am email [Dorow to Morgan copy to
Shoemaker Subject: RE: PDAC white
paper]
“Gary,
Actually, that is already in the works since we have added/changed substantial
functionality. Kevin“
[Comment: Dorow stating “added/changed”
confirms that PDAC is derivative of MDM exclusively licensed to Pulver.]
January
28, 2005 8:14am email [Morgan to Dorow Subject: RE:
PDAC white paper]
“Cool we’ll process as new copyright and
new IP - so Pulver is toast.
Thanks, Gary [Morgan]– Sent from my
Black Berry
Wireless Handheld“
[Comment: Morgan is confirming that he has
effectively evaded/trashed Pulver’s exclusive license.]
January 28, 2005 8:18am
email [Dorow to Thurman Subject: RE: PDAC white paper]
“Had to share this with you—you’ve got to love the IP guys…Kevin [Dorow]“
[IP=Intellectual
Property - Commercialization/Ventures]
January 28, 2005 8:20am
email [Thurman to Dorow Subject: RE: PDAC white paper]
“Nice. Hope no
one ever subpoenas GM email records...“
[Comment: Thurman concluded that these emails
were potentially exposing Battelle to legal action.]
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GBM-00013
February
14, 2005 email [Morgan to Weil and Darling Subject: RE: Erica clearance of
PDAC document]
“Put this on our to do list under IT general – its new IP [Intellectual Property] and have
several interest coming around.
Kristine – need to track down the IR that
Kevin Dorow is writing up – so says Steve Shoemaker.”
[Comment: This
confirms that Battelle was marketing PDAC/MDM and attracting commercial
interest when it was renamed RDADS on 2/28/05.]
February 22, 2005 email
[Morgan to Dorow]
“New name - totally different please
New IP number driven from the NEW IR that you
write – use WP# F05040 for a few
hours to write the IR
Thanks
Gary Morgan“
[Comment: A “totally different” name request for
“NEW” invention report shows Morgan’s took further precaution to conceal
Battelle’s evading Pulver’s exclusive license to MDM and
derivative [subsequent] versions under any alias [e.g., PDAC, RDADS...].
Page
2 of 5
February 28, 2005 email
[Dorow to K. Darling, copy to Morgan
Subject: RE: Erica clearance of PDAC document]
“Kristine, I just
submitted the IDR on the e-IDR system—the tracking number is 1051 and the
title is Rapid Data Acquisition
and Dissemination System. [RDADS] Let me know if you need any other information. Kevin“
[Comment: This email, connecting PDAC with title of
“NEW” invention confirms the new name for PDAC was RDADS.
Morgan also verified this in his 2008
deposition.]
Pages
1 – 2 of 5
12:53
pm email [Morgan to Dorow
Subject: RE: Erica clearance of PDAC document]
“Ok, now the real question: Do you think there is any patentable material in our IR )which I
haven’t seen) ?? If so, we’ll
only have 1 years from your public exposure to patent in the US,
and we lose our foreign rights the minute you go public –
it’s your call. Gary”
1:15pm email [Dorow to Morgan Subject: RE: Erica clearance of PDAC document]
“Gary, I would say that the approach taken in
using a self-describing data format to dynamically generate a
custom-tailored
user interface on multiple types of devices / platforms is
potentially patentable. Kevin”
1:45pm
email [Morgan to Dorow Subject: RE:
Erica clearance of PDAC document]
“Oh wow – yes I’d agree can you delay
the publication until we file a patent?
Gary Morgan”
[Comment: They renamed PDAC to RDADS and cancelled
publishing the cleared PDAC[MDM] document [PNNL-SA-4424] until they filed a
patent on “new code” RDADS invention report [representing
2002 MDM inventions as 2005 RDADS].
Morgan confirmed this in his
deposition.]
KED-00060
March 8, 2005 [Page 1 of 16]
Gary
Morgan, Battelle software commercialization manager, openly stated
Battelle’s intention to commercialize RDADS
in
March 2005 as follows:
March 7, 2005
email [Amaya to Morgan]
“Hi Gary, Attached are the results of the prior art
search for RDADS. While there are
several patent that have components
of the invention, I did not find any so
far that had the combination of being device independent, database
independent, and
without involving programming. (I’ve been
in tough with Kevin on two of the patents that I found most interesting
which are noted in the text.) “
March
8, 2005 email [Morgan to Amaya copy to Dorow, Mark Goodwin, et al. Subject: FW: IDR March 9th
Agenda to Review (GM)
“Jodi, This is great! Thanks. I’m going to recommend patenting to the committee
this week and see what claims we
can get to
to protect Kevin’s nice work here. Mark, Dennis: _ I did this interview 1:1
to get it through quickly and see if we had any freedom
operate. I think if we can get some
claims around this, we could license
non-exclusively to many different companies.
Have you guy’s seen Kevin’s
demo?
[Comment:
Commercial licensing considerations caused Battelle to patent;
Morgan confirmed this in his 2008
deposition.]
KED-00062
March 11, 2005
email [Morgan to Shoemaker, White
& Dorow
Subject:
14714-E Rapid Data Acquisition and Dissemination System]
“The Technology
Commercialization Office has
established a committee to review the new invention reports that are
submitted by staff each month. The categorical designation are assigned by
the committee to each reviewed IR to help manage the spectrum of inventions
we receive and establish an action plan for inventions have strong business
or commercialization potential that should be protected.
The purpose of this memo is to provide you with the
results of the meeting held March
9, 2005 in regard to the subject IR [RDADS].
Decision:
Category 2cp: Active-Decision Made to Protect IP (Patent and
copyright)
A decision to
protect (via a patent and copyright) the contents of the Invention Report
has been made and the IP is actively
being
marketed – BUT ONLY under NDA – DO NOT
violate our right to patent by publicly revealing anything about this!!”
SVS-00035 [page 5]
April 11,
2005 Internal CISD
Newsletter
“Commercialization
Activities
- The Technology
Commercialization Committee decided to protect IP for the Rapid Data
Acquisition and Dissemination System
developed by Kevin Dorow, Steve Shoemaker
and Michael White with both a patent and a copyright. The Rapid Data
Acquisition
and Dissemination System (RDADS) provides a
fast and user-friendly way of sharing information in legacy databases to a
wide
variety of clients with no programming
involved. Through the use of Java technologies, RDADS can support
connectivity to virtually
any data source and can provide a custom
interface to the data on nearly any device (form PDAs
and cellular phones to laptops
and PC’s). The technology is actively being marketed to several different
potential customers.”
SVS-00016
April
4, 2005 email [Matheson to Dorow, Shoemaker & White Subject: Rapid Data Acquisition and
Dissemination System File No. 14714-E]
“The
Commercialization Manager has the responsibility of deciding for Battelle the potential commercial value of an
invention
and whether or not it is appropriate to file an
patent application at this time…Any input you could provide to the
Commercialization Manager about the potential commercial value of
this invention will be very much appreciated.”
[Comment:
Commercialization considerations were the go/no-go criteria to
patent RDADS; Morgan’s deposition confirmed this.]
KED-00082
April 12, 2005
email [Dorow to/from Turner]
Question
by Battelle’s Andrea Turner: “How
new or old is RDADS? Have we licensed it to anyone yet?”
Answer by Kevin Dorow:
“RDADS
development started around the January time frame of last year –it is being
actively used
by the RPMP project. There has been interest by
several external clients to license it, but that won’t
happen until the copyright
/ patent process is completed (in the next month or so)”
Question
by Battelle’s Andrea Turner: “Also,
who is the commercialization manager for this?”
Answer
by Kevin Dorow: “The commercialization
manager for RDADS is Gary Morgan.”
[Comment: Battelle assigns a commercialization
manager [dedicates resources] for RDADS which has already been
marketed to the
private sector via NDAs and as evidenced by the high interest in the IP
(See GBM-00013 above).]
April
13, 2005 email [Shoemaker to Andrea Turner Subject:
RE: More info about RDADS]
“Andrea The latest version of the technology is call
RDADS, it replaces the older PDAC. If
we could start using
the new
RDADS [name] when discussing the future work, that would be best.
Another old name was MDM mobile data
manager. [2003
TAP-funded MDM developed for and licensed to Pulver]
Thanks Steve Shoemaker”
[Comment:
In this email, Shoemaker attached 2003 MDM documents to
describe/identify RDADS.]
GBM-00007 [circa August 2005]
This
IR&D [Private] proposal shows that they are doing an IR&D
[private funding] investment project for RDADS.
Weyerhaeuser
and medical institutions are mentioned as commercial target
opportunities. Excerpt from last line
in
document: "Continued Marketing to key business
partners throughout FY2006"
2006-2008 Update: Click 4 – Battelle Concealing Commercial Investment
RDADS Venture from Court
SVS-00207
September
26, 2005 email [Shoemaker to Marr Subject: RE:
Help with Input]
“Tom, Here are a couple of items…
2. RDADS—patent
application submitted.
3. Assisted 3 small
business thru the TAP [technical assistance program] request dealing
with
Wireless security, emergency
responder…
Thanks Steve
Shoemaker”
[Comment: After calling MDM/PDAC
“new code” [RDADS], evading Pulver exclusive license and writing “NEW”
invention report, Battelle applied for a patent.]
RDADS
Patent Application Published - March 22, 2007
Multiple screen shots/drawings and detailed
description further confirm that RDADS is derivative work to MDM/PDAC.
See additional
documents and testimony confirming that RDADS
is derivative version of 2002-03 MDM/PDAC.
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