U.S. PTO smashes JPEG patent (Linux-Watch) [LWN.net]

Linux-Watch reports on the rejection of the JPEG patent. "Another attempt to tie down a standard with a patent has gone down in flames. The U.S. Patent and Trademark Office has rejected a patent that Forgent Networks was asserting against the Joint Photographic Experts Group, better known as JPEG, images standard. In the reexamination proceeding initiated late last year by the PUBPAT (Public Patent Foundation), The PTO Office Action released yesterday a finding that the prior art submitted by PUBPAT completely anticipated the broadest claims of the patent, U.S. Patent No. 4,698,672 (the '672 Patent)."

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27 claims still allowed?

Posted May 27, 2006 16:30 UTC (Sat) by stevenj (guest, #421) [Link] (1 responses)

According to the article, 27 of the original 46 claims were allowed by the patent office. Does anyone know whether these remaining claims are still broad enough to prohibit JPEG implementations?

27 claims still allowed?

Posted May 28, 2006 15:56 UTC (Sun) by iabervon (subscriber, #722) [Link]

The Groklaw commentary suggested that, for the claims they didn't allow, they didn't allow them due to the existance of prior art that the people writing the patent knew about but didn't reveal, and that the standard response to such behavior is to punish the dishonest inventors by throwing out the whole patent, regardless of the merits of the other claims, because the application as a whole cannot be trusted.

If this is accurate, the rest of the patent is irrelevant.

"Don't try this at home"

Posted May 27, 2006 16:47 UTC (Sat) by stevenj (guest, #421) [Link] (1 responses)

At the recent FSF annual meeting, I asked Eben Moglen to comment a little more on this strategy of asking for ex parte re-exams. The reason I asked is that I've talked to patent attorneys about this sort of thing, and they generally cautioned against it.

The main risk of an ex parte re-exam is that the patent owner holds most of the cards in the process. After your initial request for re-exam, you are cut out of the loop, and the patent holder gets to make arguments back and forth with the patent office that you have no opportunity to rebut. (And we all know how feeble the patent office can be about rejecting specious software-patent arguments.) As a result, you can actually end up strengthening the patent, because any claims that survive the re-exam are presumptively valid in light of all the new prior art you submitted.

Eben agreed that there were definite risks to the process, and explained that PUBPAT is focusing purely on egregious cases where the prior art is extremely clear and the patent impact is large. But he also said, "Don't try this at home," since an incautious request for re-exam can end up worse than no re-exam at all.

Eben also pointed out that, even if at the end of the process the patent holder succeeds in getting the claims allowed, the request for re-exam does obtain a significant period of patent-immunity (as well as imposing a substantial expense on the patent holder). If I remember correctly, while a re-exam is ongoing, the patent holder can't prosecute patent infringement actions.

"Don't try this at home"

Posted May 27, 2006 19:21 UTC (Sat) by stevenj (guest, #421) [Link]

(For Moglen's exact comments regarding re-exam strategy, see the recording at time 1:23:51.)

Shakedown operation

Posted May 28, 2006 17:07 UTC (Sun) by man_ls (guest, #15091) [Link] (2 responses)

Where does this bit of news leave Sony and the others that already paid? Can they sue and get back the amounts they paid? It would be a good lesson for patent extortion shops, and maybe lower the value of patents everywhere.

IANAL, but ...

Posted May 30, 2006 4:10 UTC (Tue) by JoeBuck (subscriber, #2330) [Link] (1 responses)

... I think that the answer is "no". If an outfit threatens to sue you, and you settle, you settle for an amount that is less that the shakedown outfit would get if they went to court and won a full victory. There's always a chance that you pay someone off, when it turns out that the troll has no case.

So I'm fairly sure that Sony and anyone else is simply out the money. On the other hand, there is another class of shakedown artists, lawyers who sue corporate boards of directors any time a bad decision is made that causes the stock to drop. So, I suppose someone could sue Sony in the name of the stockholders for wasting money. But don't hold your breath.

IANAL, but ...

Posted May 30, 2006 10:47 UTC (Tue) by pmilne (guest, #34533) [Link]

There may be circumstances where a person who paid royalties could claim them back when a patent is knocked off its pedestal, especially in cases where the person receiving the royalties knew or should have known that there was material prior art that was not noted with the application. Even if a licence agreement clause precluded this, unconscionable conduct by the licensor may void such a clause.

A patent troll who purchased such a patent and who unaware of such a situation could however possibly retain payments up to such time that he was made aware or became aware of the problem with the patent.

The legal aspects with respect to this are pretty complex but if the stakes are big some disgruntled licensee will no doubt try it on.