Delivered-To: dfarber+@xxxxxxxxxxxxxxxxxx
Date: Wed, 24 Sep 2003 15:52:16 -0700
From: "Glenn S. Tenney CISSP" <glenn_ip@xxxxxxxxx>
Subject: Does Verisign's SiteFinder infringe a patent?
To: Dave Farber <dave@xxxxxxxxxx>
Dave, for the IP list if you wish.
The following post raises the possibility that Verisign's SiteFinder
service might infringe US Patent 6,332,158 (the patent can be found at the
USPTO at
http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO1&Sect2=HITOFF&d=PALL&p=1&u=/netahtml/srchnum.htm&r=1&f=G&l=50&s1=6,332,158.WKU.&OS=PN/6,332,158&RS=PN/6,332,158
).
This could make things even more interesting...
Glenn Tenney
http://new.icannwatch.org/articles/03/09/21/0419259.shtml
A Brief Analysis of the Sitefinder Patent
posted by michael on Saturday September 20 2003, @08:12PM
jberryhill writes "ICANN has referred the Sitefinder matter to the
Security and Stability Committee. Looking at the composition of that
committee, it is interesting to note that it includes two people from
Verisign and one person from Yahoo! (which recently bought Overture, where
the Sitefinder PPC advertisements come from). However, on the other side
of things, the committee includes Paul Vixie, who has released the BIND
patch to work around Sitefinder, and it also includes a person from Nominum.
It will be very interesting to keep an eye on Nominum's behavior in
response to Sitefinder, since the lead inventor on U.S. Pat. No. 6,332,158
is Chris Risley, the president of Nominum. It is not clear whether this
patent is assigned to Nominum, but perhaps someone who knows the other two
inventors, Richard Lamb and Eduard Guzovsky, might enlighten us.
So, what is U.S. Pat. No. 6,332,158, and why is it interesting?"
This patent, entitled "Domain Name System Lookup Allowing Intelligent
Correction of Searches and Presentation of Auxiliary Information" appears
to be a dead ringer for what Verisign is doing with Sitefinder. The
patent is based on a filing originally made on December 3,
1998. Apparently, a few days later they had some additional information
to add to the application, and they filed a second application on December
9, 1998 from which the patent ultimately issued in December 2001. For
those who care about prior art, the conservative "critical date" to use
would thus be December 3, 1997. The abstract reads as follows:
"A domain name server assists user's in selecting desired domains in the
Internet. A domain name query is sent from a resolver process, or
equivalent process, when the user (or a process on the user's computer)
wishes to obtain information. If the domain name exists, the domain name
server provides the corresponding machine address back to the user's
computer. However, when the domain name query uses a non-existent domain
name then a machine address for a computer that executes a domain
recommendation engine is returned instead of a machine address associated
with the invalid domain. The domain recommendation engine assists the user
(or process on the user's computer) in locating a desired domain name. The
domain name recommendation engine can take into account numerous factors
that assist in determining the intended domain, including common
misspellings, phonetic errors, sub-domain errors, past statistics on
website accessing by the present user and prior users. Auxiliary
information is provided to the user along with information to assist in
locating the intended domain. The auxiliary information can include
sponsorship information, referrals, advertisements, educational or other
information. The auxiliary information can be in the form of image, audio,
database of other types of information"
So far, so good, but what really matters are the claims - the numbered
statements at the end of a patent which define the combination of features
that is protected by the patent. The patent includes only one independent
claim. Now, with your filing fee at the patent office, you automatically
are entitled to file three independent claims, but most inventors pay too
little attention to the claims they are getting for their money. In order
to infringe this patent, then, you have to perform a method which includes
each and every one of the steps as set forth in claim 1:
1. A method for handling invalid domain name lookup requests in the
Internet, the method executing in a domain name server system responsive
to a target domain name request by a user computer, wherein the user
computer is coupled to a display screen, the method comprising the
following steps executed in the domain name server system
receiving a target domain name lookup from a user computer;
searching a master lookup table to determine a machine address associated
with the domain name;
determining that the target domain name does not exist within the lookup
table;
transmitting a machine address to the user computer, wherein the machine
address maps to a web server;
receiving a machine address request from the user computer based on the
target domain name transmitted machine address to the user computer;
in response to the received machine address, sending information to the
user computer to assist in that user's selection of a most likely domain
name that assumes a misspelling of the target domain name; and
displaying an advertisement on the user computer's display screen.
Of those seven steps, it is pretty clear that steps one through six are
being performed by Sitefinder. The .com zone is queried for a target
domain name, it is determined that the domain name is not there, the
address of sitefinder is sent back to the user, the user's computer then
queries sitefinder, and the user is sent information to assist in a most
likely domain name that assumes a misspelling of the target domain name.
The only question about whether Sitefinder falls within claim 1 of the
Risley Patent is whether Sitefinder performs the seventh step of
"displaying an advertisement on the user computer's display screen". Now,
thus far, the Sitefinder page itself does not contain an "advertisement"
in the sense that most people would think of one. Sitefinder does,
however, include a list of category links which lead to paid search
results that definitely are advertisements.
A curious thing about patent claims, and where people often run aground in
assessing infringement, is that you can do other things in addition to the
claimed elements that seem different from what is in the patent, but you
still infringe the patent as long as you perform the claimed
steps. Hence, in answer to the question of whether Sitefinder performs
step seven of the claim, I would say yes. Advertisements are indeed
displayed on the user's screen when they click on one of the category
links and receive the PPC search results. Those are definitely
advertisements, and the fact that some additional things occur prior to
the seventh step are not relevant to the fact that Sitefinder performs all
six steps automatically, and then some intervening thing happens prior to
performance of the seventh step. It is also not necessary for Sitefinder
to perform all seven steps every time a user hits it. For infringement,
it is sufficient for Sitefinder to perform the claimed method once.
Now, this is a somewhat superficial analysis, in that I have not read the
file history or delved deeply into the specification in order to determine
whether there is some language that may have been made during prosecution
that limits the claim to a particular meanining of any of the terms
therein. As a first order pass, though, Chris Risley and his friends
should certainly be contacting their attorney, in the event Verisign has
not already licensed this patent (which is a possibility). Additionally,
the Nominum representative on the Security and Stability Committee should
not do anything that amounts to an endorsement of the Sitefinder system,
by which consent to practice the patent might be imputed to Nominum (in
the event this patent is owned by Nominum).
As always, if you liked the trademark people, you'll love the patent people.
Cheers."