The Detroit News is reporting that Ford is in a legal battle to control key patents related to its Sync hands-free information system. John Berry, who was let go by Ford in July, developed Sync’s cell phone connectivity system, which allows features like 911 Assist, Vehicle Health Reports and Traffic, and Directions and Information Services. Ford wants Berry to sign off on the company’s application for patents related to these functions, but Berry won’t play ball. He says he’s “happy to license” the technology to Ford, but other automakers are rumored to be sniffing around as well. There’s plenty at stake in this squabble: if Ford loses these Sync capabilities, it loses one of its primary advantages in the marketplace. Not to mention its “anti-distracted-driving” leadership.
Berry had reportedly signed off on several of Ford’s patent applications, but when Ford terminated him without all of the compensation he says Ford promised him, he contacted his attorney. And he’s probably negotiating from a position of power. Ford’s exclusive rights to the Microsoft operating system underlying Sync have expired, which means Ford needs more of the add-on plugins that Berry developed to maintain its advantage and match the OnStar juggernaut. One of Berry’s plugins, which would allow users to operate smartphone applications through Sync, is one such crucial development.
Oops. Not one of Ford’s better ideas.
OTOH, if you develop stuff for a company while on company time, isn’t that stuff already company property?
but Berry won’t play ball.
OH, SNAP!
Maybe next time you will retain your employees and make sure their patent applications are filed before dumping (on) them.
Bruce
I’m not a lawyer, but I remember hearing about cases where someone would develop technology on company time that was not even related to the job he was doing.
That particular company still somehow won patent rights.
I’m not coming up with a company and a name though…
Normally when you are employed by a company, you sign papers that give rights to your inventions to the company. I guess an employee with a contract that specifically excludes inventions assigned to the company would we possible. Was John Berry a “normal” employee? Or did he have a special contract? Absent a signed invention assignment form, that would be a large revenue generator for the lawyers.
Classic Ford SOP…
Basically Ford needs him to sign (without going to court) and he wants compensation he feels he was promised (without going to court) and he is getting cocky b/c he feels that eventually he will get paid (and he probably will). I can’t recall hearing of a single case where patents developed when employed at a company or university didn’t belong to that company and university (as well as the inventor).
Since he feels that he is owed more money contractually, he was probably brought in for a project and the project was completed.
This sure sounds similar to Robert Kearns’ story in “Flash of Genius.”
James2 :
September 17th, 2009 at 11:56 am
OTOH, if you develop stuff for a company while on company time, isn’t that stuff already company property?
Usually, yes, especially if you’re an employee (vs. a contractor). I suspect that he has less legal leverage than he thinks.
Why would Ford fire the guy that seems to be responsible for the best idea they have had in ages? He singlehandedly accounted for how many Focus Sales in the last 12 months?
It will now cost Ford more (in legal bills if nothing else) than it would have cost to keep him on the payroll for a few more years. Whoever made the decision to fire him, needs to be fired.
Sorry for not clarifying… per the DetN story linked:
Already a well-known expert in the field of telematics, Ford first contacted him in 2006, gave him a sneak peak at Sync and asked him if he had any ideas about how to make it better.
At the time, Sync was limited to playing music and operating the driver’s cell phone. Berry said Ford was particularly keen on matching General Motors Co.’s OnStar system, which uses a call center to summon emergency personnel in the event of a crash. He explained how Ford could do the same thing with a driver’s cell phone.
A few months later, Ford hired him as a consultant.
“By the time Ford started paying me, we were well under way,” he said.
Ford ultimately made Berry an employee. His official title was director of product and business development for Ford Connected Services.
And if you develop an invention on company time (related to the company business), the monetary reward is usually a (small) standard amount – not a percentage of the profits derived – the company essentially gets all. If there was a contract that specified a greater amount, and the contract was legal, then the inventor would get more.
There was a another famous case before “Flash of Genius” involving machine vision and identification. The inventor sued nearly everyone about collecting royalties. The original patent was written in the 50’s and was revised over the years before the patent was issued – resulting in the controversy. A number of companies gave in and licensed the invention. Ford was one of the companies that fought (and won) their case against the inventor.
I would suspect after the “Flash of Genius” affair, that Ford would have their ducks in a row and not let inventions be in a legal quandry.
Edward Niedermeyer :
September 17th, 2009 at 12:46 pm
A few months later, Ford hired him as a consultant.
“By the time Ford started paying me, we were well under way,” he said.
Ford ultimately made Berry an employee. His official title was director of product and business development for Ford Connected Services.
I should have read the rest of the story before commenting. His contractor-then-employee status should make the legal ramifications interesting. And complicated.
I have three patents from my engineering career at Ford. As a condition of your employment, Ford is entitled to any patents granted for work you do on company time. Ford is not obligated to give you a dime (and that’s what they used to give you). Several years ago Ford initiated a program to encourage employees to seek patent protection for their work. They initiated a series of reward payments for: $250 for submitting a valid patent application; $750 if a patent was granted; and $2000 if the patented idea went into production.
That’s all Mr. Berry is entitled to and, if Ford has made those payments, they have met their obligations. There is no telling what would happen in court (considering how irrational some juries can be when it comes to cases against “evil corporations”).
Way to screw the one employee who is giving you a market edge, Ford.
I tried to be a good American many years ago and buy domestic vehicles. ALL of the domestic manufacturers deceived me, and ripped me off or played games with me on warranty work. I say to Mr Berry: Bend them over a desk and pound them where the sun doesn’t shine! Make them feel the pain that I felt when they would not repair my engine for what was clearly a warranty repair.I will NEVER buy another domestic vehicle for as long as I live, and have instructed my children to do the same. Ford was by far the worst of the lot, and it feels good to see karma catching up with them. I truly wish it was not this way, but they have STILL not learned their lesson.Rant over. It has been building for 25 years and I had to let it out.
MrDot :
September 17th, 2009 at 1:14 pm
Way to screw the one employee who is giving you a market edge, Ford.
Who says that he is not trying to screw them? Sounds like a court is going to determine who is in the wrong, unless Ford knuckles under and pays him off without goign to court. In that he started out as a contrator, this could be interesting. I don’t know, and I suspect neither does anybody else commenting, what the agreemtn was regarding any patents springing from his work as a contractor and later as an employee. It is very unlikely though, that Ford would not retain the patents springing from his work as a contractor and employee as part of the employment agreements with Ford.
Don’t know who is right in this controversy, but we all can be grateful Ford successfully fought the Selden Patent.
I would say that if he signed a contract regarding forfeiture of his rights to patents developed during his time as a Ford Employee, and Ford can prove that the products were developed during said period, then Ford is on the right side here.
To turn him from contractor/consultant to employee you don’t think Ford sweetened the deal adequately? Scratch that, I know they did as he made the switch. Either he got a fistful of cash upfront and is angling for more or he was stupid from the outset. Either way I can’t see how Ford isn’t in the right here.
Typical Ford.
Given that this guy was hired for the express purpose of developing intellectual property, it’s hard to imagine that the relationship wasn’t lawyered-up from the get-go and that there isn’t a contract that clearly spells out what each party’s rights are in this situation. It feels like our guy believes that Ford hasn’t kept its end of the bargain with him in some fashion or other, so that excuses him from keeping his end of the deal with respect to the ownership of the IP rights. IIRC, there is generally speaking a “work for hire” doctrine that holds that IP developed by an employee developed on company time belongs to the company, absent some contractual arrangement. So, if you’re a newspaper reporter, your newspaper — not you — owns the copyright of the stories that you write for the paper.
As others have said, apart from the interesting legal spat, this story begs the question of why FoMoCo terminated its relationship with the guy in the first place.
@tced2 :
You’re thinking of Jerome Lemelson
http://en.wikipedia.org/wiki/Jerome_H._Lemelson
He was the master of the submarine patent:
http://en.wikipedia.org/wiki/Submarine_patent
It’s partially because of his abuses of the patent system that in the 1990’s the US changed our patent system so that a patent’s life is measured from when it’s filed, instead of when it’s issued.
Legal Question:
If I enter into a contract does the other party’s refusal to honor a portion of a contract relive me on any obligation to fulfill my obligations under the contract?
For example – Part A1 of the contract says I agree to sign over my intellectual property to XYX B7 in exchange for being paid $x per year. Part 11i of the contract says if I am terminated XYX Inc is obligated to pay me a million dollars.
Does XYX Inc’s failure to live up to part B7 release me from my obligation under part A1 – even if the terms of A1 were fulfilled?
Ford needs his signature so the company can secure some valuable IP rights. He’s entitled to negotiate the best terms for that signature.
p71 aka DR Doom—“Typical Ford”
Sync has been a home run for Ford. I guarantee it has been a “tie-breaker” for many people as they have made their car purchase. While not “the” primary reason—-I think sync is a big reason why Ford has increased share month on month for the better part of a year.
So that said—-wouldn’t you try to protect the hell out of that asset ?
Sync has been a home run for Ford. I guarantee it has been a “tie-breaker” for many people as they have made their car purchase.
Good God I hope not. SYNC is terrible. I sat for 20 minutes in a Flex at the dealer at it was a joke. It couldn’t even understand simple voice commands.
SYNC is one reason NOT to buy a Ford…because it doesn’t work very well and it will eventually break and render the whole stereo useless.
P71 Dr Doom—I have sync and it works great.
The anger and emotion you experience by simply being in a Ford product must have caused issues with the voice recognition….sync needs a calm voice to work properly.
Also—95% of the sync reviews I have read have been positive. Most say it is the best system out there. That might be faint praise because every other system out there might suck—but just sayin.
I also won’t back off my statement that I think sync has sold plenty of cars for Ford and is a reason for their share gain
It’s time for the Truth: Ford has no ethics and Mr. Berry did not invent Sync.
In 2001 I filed a patent on a safety product that took a decade of Prototyping, evaluation, and research.
The device is a computer that accepts any portable consumer device using plug and play and allows the device to be controlled by the driver from the steering wheel or speech. The device monitor the car, the driver and the enviornment and if an accident is detected, it will automatically call 911 using the drivers own phone (No fee) and transmit verbal information to the operator and text, data and e-mail with telemetry and emergency information and medical information to a remote computer.
That device was discussed with Microsoft, but there were negative about it (Still have the e-mail), then was presented to Ford on many level, in person, as well as Motorola Automotive (Now Continental).
The device that is called sync is one of many pending patent and the emergency call as well as MyKey are also seperate patents that are still pending and they have been pending before Microsoft and Ford even got together.
Ford have no ethics and Mr. Berry, even if he invented this, he was late. I have the document in black and white in the U.S., EU and Japanesew patent offices and I have NDA’s and check sheet dating back to 1985, not to mention a prototype that’s at least 9 years old and another one that’s 20 years old.
If anyone is interested in licensing this techology from the real owner, please contact us at http://actplace.net. manaboulsi at actplace.net
Best regards
Mouhamad A. Naboulsi