TCS Daily


Getting Framed

By Robert Lee - March 27, 2003 12:00 AM

My 97-year-old Aunt Sis is not five feet tall. She plays golf on a 54 par executive course in front of her apartment building. Twelve months a year. In the winter when it snows she uses orange balls. Tee off is at 7 a.m. Don't be late. She carries a putter, a sand wedge and a 5 iron. If a foursome or even a twosome does not know how to efficiently get on and off a green, she simply veers and skips that hole. She hits every ball 125 yards out and straight.

Her mind is as clear, short and to the point as her golf game. "Watch the little things," she warns. "That is the test of character. The big things follow the little things."

Recently a little thing popped up that gives one a glimpse into the corporate ethos of SBC, the second largest regional Bell operating company. It didn't pass Aunt Sis' test.

First, some background.

In a browser window you move from page to page by clicking on links that are usually along either side or the top or bottom of the window. In the early days when you hit these links the whole page would repaint. Then web page creation software came out with easy commands that let you repaint just part of the page (they called these lesser areas frames). In this way you can navigate from page to page but have the "table of contents" of page choices stay stationery. Millions of sites in the world work like this.

Now for the little thing that popped up.

In January one of those millions of sites, a small online retailer of toys and educational materials, MuseumTour.com, received a letter from SBC lawyers that had nothing to do with their phone service. The SBC lawyers stated that they had reviewed MuseumTour's site and found that it had violated their patent. What patent? SBC claims to own the concept of frames.

According to MuseumTour.com: "The letter suggests that any website which has static, linked information (top banners, menus, bottom banners) which are displayed while other sections of the page are displayed as non-static (the area where products appear on most websites) infringes upon the patents they hold."

Apparently SBC feels that if people who own websites care to paint a whole page it is OK with them, but if they want to paint just part of a page they have to pay.

The letter did not threaten MuseumTour.com with legal action. Instead it offered them royalty terms based on their revenue. SBC offered them a "Preferred Rate" (10% discount to the standard rate). These annual rates ranged from just over $500 to over $1.5 million, depending on revenue.

Curious, I contacted well-known Boston patent attorney Bruce Sunstein, of Bromberg and Sunstein. Bruce was recently named one of the five best intellectual property lawyers in Boston by Boston Magazine (Oct. 2002) and the only one cited for patent prosecution skills. He is also patent counsel for Dean Kamen, inventor of the Segway™ human transporter. His practice involves technologies, including bioinformatics, electronic circuits and systems, computer hardware and software, communications and speech, biomedical devices, bio-pharmaceuticals, and mechanical devices. He is also the older brother of Laura, with whom I went to high school. Here is his response:

Dear Bob:

The effort of SBC in getting money by licensing its patents to the use of frames in a web browser follows a path somewhat similar to that taken by attorneys in licensing the patents of Jerome Lemelson, a prolific patent holder who, late in life, made millions by licensing and sometimes litigating his patents. The actual letter of SBC to one of its targets is reproduced at http://www2.museumtour.com/sbc.html.

One of the tricks is to make the royalties so low that in most cases it is cheaper to pay than to litigate. Another trick sometimes employed is to first go after only relatively small companies that are not likely to challenge the patent in question. Yet another trick is not to threaten suit, but rather to offer a license. If you merely offer a license, you have not threatened your target with infringement, so the target cannot initiate litigation against you for patent invalidity.

In examining patent applications the Patent and Trademark Office (PTO) has the job of determining whether the invention qualifies as new and non-obvious. Because there is no such thing as a list of new inventions that the PTO can refer to, the PTO can tell if an invention is new only by looking at things that are old and comparing them with the subject of the patent application. Of course, there are a nearly infinite number of things that are old, and it is essentially impossible to consider everything that counts as old. Thus although the PTO does a search of things old (the prior art), and the applicant is also required to disclose all prior art known to the applicant that is close, one cannot be assured that all prior art is always uncovered or considered. So any patent that has been issued can be invalidated if close enough prior art is later uncovered.

Actually, it is possible for a patent to be invalidated without litigation. For the sum of $2,520, one can request re-examination of a patent based on prior art that should have been considered but was not. (If you want a say in the re-examination process, however, the fee goes up to $8,800.) There are a number of important instances in fact in which the Patent and Trademark Office (PTO) instituted re-examination of a patent on its own, when important prior art was not considered. One example is the Compton's New Media patent 5,241,671, for information search technology widely used on CD ROMs, which was invalidated by the PTO on re-examination.

While I have not studied them in detail, nor looked at their procedural histories - things that need to be done to evaluate the patents in a thorough and formal manner - the particular patents being offered by SBC (here and here) are not in my view likely to survive re-examination by the PTO because there is a considerable amount of close prior art that does not appear to have been considered.

See, for example, and see particularly the prior art link one of the contributors made to http://www.webhistory.org/www.lists/www-talk.1994q4/0658.html. This appears to be exactly what is covered by the SBC patents.

Because SBC seems to have been smart enough not to have initiated litigation, my bet is that it will eventually say good night to this particular project without too much embarrassment. While other commentators suggest that episodes like this are evidence that the patent system is broken beyond repair, in my view, the fact that apparent errors of this sort can often be corrected for relatively short dollars suggests that the system mostly works fairly well.

Regards,

Bruce


So there you have it, MuseumTour.com, from no less than Bruce Sunstein. Don't sweat it. Apparently the Patent Office, unlike the FCC, corrects its mistakes and is unlikely to let this stand.

Take note, SBC. I have applied to the Patent Office for a patent on not punching oneself in the nose. From now on everyone who does not punch himself in the nose is going to have to pay and pay plenty. And you are first, SBC.
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