[IP] Claiming a Threat to Innovation, Group Seeks to Overturn 10 Patents
Claiming a Threat to Innovation, Group Seeks to Overturn 10 Patents
July 5, 2004
By IAN AUSTEN
A coalition of lawyers, researchers and software experts
formed by the Electronic Frontier Foundation will try to
overturn 10 Internet and software-related patents that the
group says are so sweeping they threaten innovation.
While most of the patents are held by little-known
companies, two industry leaders have also been named: Clear
Channel, which has patented a way to distribute recordings
of concerts within minutes after they end, and Nintendo,
whose patents include some concerning platform software for
hand-held games. The list also includes one individual.
"Traditionally, the Patent and Trademark Office has not
been able to give these kinds of patents as tough a look as
ones in chemistry, for example," said Jason Schultz, a
lawyer with the group.
The list of targets was drawn from 200 submissions
solicited through the Web site of the Electronic Frontier
Foundation, based in San Francisco. It includes patents
covering telephone calls over the Internet, streaming audio
and video, and online testing.
The foundation, which promotes "digital civil rights," is
not alone in questioning the patent process. A report
issued this spring by the National Research Council of the
National Academies called for, among other things,
improvements in the system for challenging patents.
One patent the foundation dismisses as "laughably broad" is
held by Acacia Research of Newport Beach, Calif.; as the
company describes it, the patent covers systems for "the
transmission and receipt of digital content via the
Internet, cable, satellite and other means."
Robert Berman, executive vice president of business
development and general counsel at Acacia, said the company
holds sweeping patent rights because it conducted extensive
research to pioneer the digital transmission of content. He
predicted the foundation's challenge would not succeed.
"Broad is not necessarily bad," he said. "If you've got a
broad patent and it's valid, that's a very strong patent."
The company has filed patent infringement lawsuits against
adult entertainment Web sites and, more recently, against
nine cable and satellite television providers.
As with all the patents on the list, Mr. Schultz said his
team of volunteers hopes to uncover evidence that other
companies had already developed the concepts covered by the
patent. If it finds such "prior art," as it is known, the
foundation will ask the patent office to invalidate
Acacia's patent. However, Mr. Schultz acknowledges that a
lack of documents can frequently make it difficult to
discover such evidence in the case of software and Internet
systems.
"A lot of software code is done, dumped and never
documented," Mr. Schultz said.
Another patent on the foundation's list covers a way to
make telephone calls over the Internet. Mr. Schultz said
the company holding that patent, Acceris Communications of
Toronto, had drawn the group's attention by filing an
infringement lawsuit against a relatively small service
provider, ITXC, rather than larger companies like Vonage
Holdings. Small companies rarely have the resources to
fight infringement suits, Mr. Schultz said.
The president of Acceris, Kelly D. Murumets, rejected the
charge that the company was pursuing only small rivals.
"Acceris has not targeted smaller players," Ms. Murumets
wrote in an e-mail message. "In point of fact, and only
after offering a license, Acceris filed a lawsuit against a
major player" in the industry, ITXC.
Ms. Murumets, like Mr. Berman of Acacia, said she was
confident the foundation would not find any reason for the
patent office to reject the company's claims.
Test Central, which operates a Web site called Test.com and
holds patents for online testing, is the only company to
have contacted the Electronic Frontier Foundation since the
list's release last week.
The testing patent is of particular concern to Mr. Schultz
because the company sent letters describing its claims to a
number of universities - suggesting it might eventually
seek licensing fees from nonprofit institutions.
James Posch, the chief executive of Test Central, said the
company had no intention of enforcing its patent against
nonprofit institutions. He said Test Central would try to
work with the foundation to develop a formal restriction
exempting nonprofit users from its patent.
"We recognize the good E.F.F. is trying to do," he said.
"We're a little bit concerned that they've been using a
little bit heavier a hammer than they needed to with us."
http://www.nytimes.com/2004/07/05/technology/05domain.html?
ex=1090010495&ei=1&en=9d68e51cba95c9bd
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