IP: Re:BT claims rights to hyperlink patent

[Dave Farber <farber@cis.upenn.edu>]

>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