PATNEWS: British Telecom patent: lachey, uninfringed and invalid? (fwd)

[ngodava at cc.UManitoba.CA]

One more message from Gregory Aharonian on the British Telecom patent.

---------- Forwarded message ----------
From: Gregory Aharonian <srctran at world.std.com>
To: patent-news at world.std.com

!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