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FC: Analysis of British Telecom's claim to patent hyperlinks
From: Declan McCullagh <declan () well com>
Date: Thu, 22 Jun 2000 10:37:29 -0400
This is a splendid essay courtesy of IP. Some related links: BT on hyperlinks: Show me the money (2000-06-21 09:58:48) http://www.zdnet.com/zdnn/stories/news/0,4586,2591589,00.html Patent Seeks to Collect on Data (2000-06-21 07:28:10) http://www.wired.com/news/print/0,1294,37121,00.html BT claims a patent on hyperlinks (2000-06-20 15:14:08) http://www.msnbc.com/news/423325.asp?cp1=1 Company demands ISPs pay fees for hyperlink patent (2000-06-20 13:25:00) http://news.cnet.com/news/0-1005-200-2115385.html?tag=st.ne.1430735..ni -Declan **********
Date: Wed, 21 Jun 2000 19:05:38 -0400 (EDT) From: Gregory Aharonian <srctran () world std com> To: farber () cis upenn edu Subject: Re: IP: BT claims rights to hyperlink patent Dave, Here is my PATNEWS for today, arguing that the British Telecom patent has way too many problems to be much of a threat to anyone. Feel free to send it out over the IP list. Greg Aharonian !20000621 British Telecom patent: lachey, uninfringed and invalid? (Quick note: this week's Barron, 19 June 2000 issue, page 52, has a short article about how Microsoft's 1200+ patents will be split if the company is split.) Now that everyone inside and outside of British Telecom has had their fantasies of cashing in on BT's patent that is being asserted against Internet Service Providers, and the folks at Aurigin have nominated the BT patent for the "'Rembrandt' in the Attic" of the year award, and the press have made long term plans for something new to write about, let's hear from Greg's peanut gallery on why this patent's strength is up there with wet spaghetti. In short, this patent probably better qualifies for the "'Dogs Playing Poker' in the Basement" award. How will this patent (4873662, Information handling system and terminal apparatus therefor) be attacked? Three modes: laches (possibly but unlikely), noninfringement (probably) and invalidity (more probably). I don't know what British Telecom was doing in its past few years analysis of this patent, but it has major problems. First laches, which is lawyer lingo for the situation sometimes that if you wait too long to assert your patent, you can't. BT's patent issued in 1989, and the Internet took off commercially in the 1995 time period, so filing lawsuits in the year 2000 does indicate an inordinate amount of time to assert the patent. However, this is an unlikely attack mode against the patent, in view of the comment of one lawyer who gets PATNEWS: Greg, Yes, digging really old patents out of the closet to belatedly sue someone has become a lucrative "lawyer cottage industry", because of the above [the right to sue six years after a patent has expired for past damages] and also because: (1) the U.S. has never [stupidly, in my view] adopted a normal, real, "statute of limitations" or "statute of repose" law to prevent it [as there is for almost any other "stale claims" tort suit], and (2) the CAFC has made patent suit "laches" into a mere weak and case-confused "double bursting bubble", with a presumption of laches normally arising only after 6 years of KNOWING about the infringement before bringing suit. "Laches" only prevents collection of BACK-damages anyway. So if laches is out, let's turn to non-infringement. Is there anyone out there actually infringing the BT patent's claim? Using a simple analysis, the answer is NO. First, the view of another lawyer reader of PATNEWS: Greg, I read about this today as well and my first thought was that, if the patent is actually litigated, it is almost certain to make law in the means-plus-function claim interpretation arena as all of the elements are recited in terms of Section 112 means-plus-function format and there is literally no description of any equivalent embodiments other than the two preferred embodiments of dumb ascii terminals option A (having no local memory for storing the hidden addresses - claim 1 - which cannot be infringed by anything other than a dumb terminal) and option B (having a local memory for storing the hidden addresses in response to digital keyed input - claim 3). The question for the CAFC will be whether a PC today having more computational horsepower than the central computer described in this patent can be the equivalent of the dumb ascii terminal that is described as the "remote terminal means". My two cents would be that BT will have a tough time convincing a court that a PC of today is the equivalent structure to a dumb ascii terminal with two memories, no processor and only a memory control unit to manage the two memories. Sounds like bad news for BT. Additionally, the independent claims are written in the dangerous client/server mode, for which no one entity infringes. For example, claim 1 reads as: A digital information storage, retrieval and display system comprising: - a central computer means ................. - plural remote terminal means ................. - ..... [central computer means interacting with terminals] ...... Independent claim 3 has the same structure, and claims 2 and 4 are trivial dependent claims off of claims 1 and 3. But as has been questioned about (Internet) client/server patent claims, who actually infringes claim 1/3? Internet Service Providers as entities don't infringe the remote terminal means clause of the claim (their customers, being the remote terminals, are separate legal entities). Subscribers to ISPs while infringing the remote terminal means clause, don't infringe the central computer means. The suggestion for these type of split systems is to claim the central computer/server and remote-terminal/client separately, so that infringement can be asserted. Ironically, the BT patent does this, but for the wrong component. The remaining claims, 5, 6 and 7, claim the terminal apparatus and its interaction with the central computer, which certainly would be difficult to assert against ISPs, and pointless to assert against people with Internet accounts at the ISPs. So after having to narrowly interpret these means-plus-function claims, is there anyone infringing in its entirety whatever is left to be claimed? And if there is anything left to be claimed after the claims analysis, is what is left novel and unobvious in light of prior art not disclosed to the PTO? In short, is what is left a valid patent? In particular, is the concept of blocks of texts with pointers to other blocks of texts and with formatting information for the texts, are these techniques novel and unobvious? Most likely, NO. As many PATNEWS readers have pointed out, the British Telecom patent looks a lot like the writings of Ted Nelson's Xanadu hypertext project from the early 1970s (its history is documented at www.xanadu.net), which easily qualifies as prior art. What will haunt British Telecom is a paper not cited in the issued patent written by Nelson and others in 1969, but indirectly referred to by others to the extent that it should have been found. For example in Roy Rada's 1991 book "Hypertext: from text to expertext", he writes: In the late 1960s, the Hypertext Editing System was developed on a mainframe computer. At the time, the normal technology for editing on mainframes was batch cards. The Hypertext Editing System supported branching text and automatically arranged branches into menus. Authors could specify which branches to follow when printing was to occur. The Hypertext Editing System failed in the marketplace. In 1968 the Hypertext Editing System was demonstrated to staff at two major publishing corporations, who staff felt, however, that the Hypertext Editing System was too complex. The idea of sitting being a computer terminal and authoring and editing was more than the managers at that time were willing to believe. While the Hypertext Editing System failed in the marketplace, it was around long enough for at least one paper to be published that survives until today. In early April of 1969, the University of Illinois (ironically the home in the 1990s of the first Web browser, Mosaic) held the "Second University of Illinois Conference on Computer Graphics". One of the papers was presented by people from the hypertext group at Brown University (the future home of another hypertext system, Dynabook), one of the persons presenting the paper being Ted Nelson. The paper is titled "A hypertext editing system for the 360", and described a system with a IBM 360/50 mainframe running a hypertext system accessible by IBM 2250 dumb terminals. I first paraphrase the paper's description of links: Areas of text may be connected in two ways: by links and/or by branches. A link goes from a point of departure to an entrance point in another, or the same, text area. Links are optional paths embedded in the text. A point within an area may also be given a name (label) and later summoned by name to the screen. The user goes from area to area by "travelling" ("jumping") via a link or a branch, or by "getting" a label. The text is repositioned on the screen, so that an entrance-point is always at the upper left corner of the screen, and with as many text lines following it as will fit on the screen. Seems to me that this completely anticipates BT's claim language such as ".... in which plural bodies of information are stored at respectively corresponding locations, each of which locations is designated by a predetermined address therein by means of which a block can be selected ....". In this 1969 paper, we also read: He may "format" the text for ease of reading on the screen or for final output, specifying margins, number of columns, paragraphs, indentations, types of headings, underscoring, etc. ...... The formatting program permits the user to assign format codes to characters and strings within the text. which seems to anticipate words from the BT patent's abstract: " ..... The second part of the block could alternatively influence the format and/or color of the display at the terminal." Admittedly the block structure of the BT patent, and the text area structure of the 1969 paper are different, but not different enough to escape being obvious. And in terms of applications, the 1969 paper anticipated the future plague of the Internet: Explainers may be used to tell what kind of area a link or branch leads to, and so act as "teasers" or ADVERTISEMENTS. ==== So under this combined assault of laches, noninfringement and invalidity, my guess is that British Telecom is going to have a hard time asserting this patent against rich deep-pocketed ISPs who can afford to pay the best law firms to take these types of arguments and available prior art, and make much stronger versions of the above analysis. Greg Aharonian Internet Patent News Service www.bustpatents.com
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- FC: Analysis of British Telecom's claim to patent hyperlinks Declan McCullagh (Jun 22)