USPTO reexamines Forgent JPEG claims
By
Mike Tomkins
(Wednesday, May 31, 2006 - 14:41 EDT)
A press release on the website of PUBPAT (the Public Patent Foundation) caught our eye today.
According to the release, the not-for-profit organization has successfully requested the United States Patent and Trademark Office to reexamine U.S. Patent No. 4,698,672. Commonly known as the '672 patent, this controversial document first came to public attention in mid-2002. At that time, the patent's current owner, Austin TX-based Forgent Networks Inc., began aggressively pursuing companies using the JPEG file format in their products.
Forgent claims that the JPEG image compression standard uses technology described by that patent, although its original creator never attempted to prevent any infringement of its patent by software and hardware using the JPEG format. The company says that the '672 patent is instrumental to its having earned some US$105 million in revenues over the last three years. Over 35 licensing deals are said to have been signed so far, including one with Sony Corp. - alone estimated to have been worth in the region of US$16 - 18 million.
PUBPAT's press release states that the USPTO has "rejected the broadest claims of the patent", upon finding that "prior art submitted by PUBPAT completely anticipated" these claims. The organization goes on to claim that the USPTO agreed that "it would have never granted Forgent Networks' '672 patent had it been aware of the prior art". PUBPAT goes on to comment that the prior art "was known by those who filed the application that led to the '672 patent, but none of them told the Patent Office about it, despite their duty to do so."
Of course, there are always two sides to every story - and where PUBPAT's press release might lead you to believe the entire patent had been dismissed, the competing press release from Forgent might seem to suggest that the company triumphed in finding "a majority of the claims in [the patent]" confirmed by the USPTO.
The truth, it seems, is somewhere in the middle ground between hyperbole from either side. To be fair, it is at least revealed in Forgent's release, which states that the USPTO has upheld 27 of the 46 claims in the '672 patent - meaning it has also rejected 19 (over 40%) of the claims in the document. Forgent states that it will "vigorously defend" the rejected claims - not surprising given the licensing fees it has generated thus far.
The company is in the process of pursuing legal action against some 30 companies including industry giants such as Apple, Canon, Dell, Eastman Kodak, Fujifilm, Hewlett-Packard, IBM, Matsushita, Microsoft, Toshiba, and many other instantly recognizable names. A veritable Who's Who of successful, high-tech business. There's no question - a lot is at stake.
Of one thing we're almost certain. This story is unlikely to come to its final resolution any time soon - and in the meantime, a lot of money is going to be spent in the courts, fighting over what was once believed by the general public to be a free and open imaging standard. We've said it before, and we'll say it again - the patent system needs overhauling to prevent situations like this arising in the first place.
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