According to its Web site, IBM’s portfolio exceeds 40,000 active patents,1 3,125 of which were issued by the USPTO in 2007 alone.2 While there is no doubt that the subject matter and breadth of the inventions described in this vast portfolio span well beyond the confines of the information superhighway, if only a tenth of these have some connection to the Internet (not to mention the hordes of other companies filing web-based patent applications), one wonders what innovation is left for the world wide web. What is left to invent now that the concepts of the electronic wallet,3 social network surfing4 and Internet telephone service5 have now been covered?
Perhaps, though, such a question too quickly assumes that the relatively recent rise of the Internet age introduced any true innovation at all. Although they are now relegated to the “history” of the computer age, prior proprietary systems like Prodigy, CompuServe and AOL offered their customers the opportunity to communicate, shop, book travel and bank using networked computers. While the hardware was admittedly rudimentary and the access speed was much slower, the content—and the basic commercial concepts—were much the same as we see used on the Internet today.
This advisory first briefly explores the history of such systems before turning to the specific problems with, as well as the corresponding solutions to, using this type of prior art in challenging the validity of Internetbased patents.
Early European Advances
A recent article on the Radio France Internationale Web site noted that a French precursor to the Internet called Minitel is still in operation today as a result of its remaining widespread use.6 Although the primary use of the system today—telephone directory assistance—is remarkably mundane, at its introduction in 1982, the system was revolutionary for its time. Indeed, a 1990 article published in the Globe and Mail described Minitel as offering 12,000 services, including financial services (monitoring stocks), shopping, games, advertising and the ability to post comments on popular television shows.7 The system was also in the early stages of offering much more sophisticated applications, such as the launch of the Integrated Services Digital Network (ISDN) in 1987, and the ability to transmit photos and x-ray images for both commercial and medical use.8
Rather than a personal computer, Minitel initially ran on a dedicated “videotex” terminal. A 1985 article, titled “The Inevitable March of Videotex,” described such systems in the following way:
In its potential to deliver vast amounts of information at the user’s request, videotex has no equal. The interactive method of communicating text and pictures between a central computer and home receivers can eliminate the delays and costs associated with print on paper, be it a business letter, a news story, or a magazine article like this.9
Like the early articles discussing the Minitel system, this article went on to describe the capabilities of such systems as including the distribution of news, banking and booking hotels.
The early Minitel system relied on, and arguably owed its success to, the free distribution of terminals by the French government to access the system. In the United States, however, where similar commercial attempts put the onus on the customer to pay for access, success was limited. Some systems provided access over a user’s television, but an expensive decoder was required. Others, like Minitel, utilized proprietary terminals, but the high price tag for the specialized terminals kept consumers away.
In fact, two factors appear to have contributed to the growing popularity of such systems in the United States: (1) the continued recognition by entrepreneurs that such systems could be immensely profitable and, perhaps more importantly, (2) the rise of the personal computer.
Coming to America: Prodigy, CompuServe and AOL
The relative unfamiliarity of some of the earliest attempts to introduce Videotex to the U.S. market betrays the lack of success of these first systems. Despite their status as pioneers, names like Keyfax, Viewtron and Covidea are unknown today.10 Other systems, however, although no longer existing in their initial forms, reached such an audience that their titles remain familiar even today. Prodigy, CompuServe and AOL succeeded where previous systems had failed.
Unlike the Internet today, Prodigy, CompuServe and AOL were proprietary systems. For example, each time a user “logged on” to the earliest version of the Prodigy system, rather than connecting to a public “web” of inter-connected computers and servers, the user accessed a private “web” of dedicated Prodigy servers, and the servers of other companies with which Prodigy had a relationship. The majority of the content available to users of the Prodigy system was created and controlled by the company, its clients and its subscribers.
Despite differences in the technical details, however, these systems provided similar information and included much of the same functionality as the Internet today. Using the Prodigy system as an example, a user in 1990 could get the news, manage money, shop, book flights and hotels, play games, send electronic mail and post commentary on bulletin boards.11 Merchants and other advertisers could target their commercial messages to individuals based on profile information stored on the Prodigy computers. And Prodigy could charge members for subscriptions and usage, clients for sales commissions and sponsorships, and advertisers for the actual counts of ads viewed, clicked upon and responses to offers.
Interestingly, one of the primary drivers of revenue on the Internet today—advertising—was also one of the main profit centers for Prodigy.12 A January 1990 U.S. government report regarding the implications of new communications technologies commented on the sophistication of Prodigy’s advertising capabilities:
Advertisements are included within other messages along the lines of a newspaper ad, but with a number of key differences. First, the ads are presented as “ticklers” that viewers may ignore or pursue further by request. Second, the ads can be stored so that they are only offered to viewers whose personal profiles meet the target requested by the advertiser. Third, the advertiser can be charged based on the number of viewers that actually choose to see the ad.
Prodigy had a distinct advantage over today’s Web sites, as each of its users was registered, and therefore did not enjoy the anonymity held by Web surfers today. Despite the benefit of universal registration, however, Prodigy was successfully employing the basic pay-per-click business model that propelled Google to dizzying heights of success—but they were doing it nearly two decades earlier.
Predecessor Systems as Prior Art
Knowing that sophisticated online systems existed well before the rise of the Internet is only half the battle in formulating a legitimate challenge to a duly issued U.S. patent. The real challenge comes from proving that such systems included each and every element of a given Internet-based patent claim—a challenge that is not made any easier by the fact that some of these systems are foreign, many are relatively undocumented and most, if not all, no longer exist in their initial form.
The Language Barrier
As evidenced by the Minitel example above, some of the earliest successful videotex and pre-Internet systems were not offered in the United States. Therefore, the “known” or “used” exceptions to patentability described in 35 U.S.C. § 102(a), and the “public use” or “on sale” bars to patentability of § 102(b), are not available to this type of “foreign” prior art.13 As a result, and as described in § 102, the use of “foreign” prior art to challenge the validity of a patent is limited to patents or printed publications.
This poses a particular problem for locating and citing relevant prior art references. It is a basic tenet of patent law that, in order to prove anticipation, each element must be described in a single reference.14 Validity challenges based on obviousness pursuant to 35 U.S.C. § 103 provide additional latitude, but each element must still be described with sufficient detail for a patent examiner or court to recognize that the claimed invention is not new.
Unfortunately, the most readily available publications—public interest articles discussing the emergence of new and exciting technologies—generally do not describe the specifics of the technology with sufficient detail to guarantee that all the claim elements will be addressed. For example, the article described above discussing Minitel and other videotex systems generally addressed the type of information available to users of the Minitel systems, as well as the relative fiscal success of the commercial endeavors behind each system. However, the article did not describe the system architecture, databases or communications infrastructure. This makes it difficult to use such prior art to invalidate a patent that includes such underlying elements as a part of an apparatus claim.
Similar problems exist for the use of documents describing the capabilities of domestic systems. When these systems were emerging, journalists were simply more interested in the basic concept, the commercial success and the potential for the future, as opposed to the details of the underlying technology.
How Can One Use What Is No Longer There?
Unlike foreign systems, domestic systems can be used to show that a given invention was “known” or “used” (§ 102(a)), or in “public use” or “on sale” (§ 102(b)). However, the fact that many of these systems no longer exist in their original form makes this difficult. In the absence of an archived system, a patent-challenger is left piecing together publicly available documents that suffer from the same deficiencies noted above.
Moreover, due to the rapid evolution of personal computers, as well as the databases, servers and communications systems that allowed for online interactions, much of the remaining media (to the extent it is still readable at all) exists in formats that are not compatible with current systems and computers.
While this problem is not wholly insurmountable due to the existence of forensic computer consultants that specialize in resurrecting old data, it is still a significant obstacle to convincing a jury that the patented subject matter is not new.
Find a Guide
The solution to both the problems with the insufficiency of publicly available articles and the extinction of the underlying systems rests with the people that built these Internet-predecessors in the first place. Indeed, a cottage industry has sprung up to address the flurry of Internet-based patent law suits.
Two such pioneers that now consult on patent cases and technical projects were on the ground floor of the Prodigy system that was conceived in 1984, and which had amassed over a million enrolled users by 1991. One half of this consulting team was loaned to the Prodigy Services Company by his employer, IBM, in 1985 (IBM founded Prodigy with Sears and CBS). As one of Prodigy’s earliest employees, he participated in the architecture, design and implementation of the Prodigy service, acting as lead engineer and development manager for portions of the network and its application layers. The other consultant was hired by Prodigy as a staff analyst in 1985, and worked there until 1996, focusing on everything from architecture and design implementation to the development of the shopping applications available to Prodigy members.
Consultants like these can be helpful in a myriad of ways. First, they are not only experts in the relevant technology, but their expertise is relevant to the time-frame at issue. Such knowledge is not only beneficial to the extent it enables them a greater ability to explain the prior art, but it also provides a unique perspective on the concept of “ordinary skill in the art,” the standard by which a court makes an obviousness determination.15
Perhaps even more importantly, however, is the fact that not only are such consultants able to speak to the structure and capabilities of the Prodigy system as it existed in the mid to late ’80s and early ’90s, but like similar consultants they are still in the possession of thousands of contemporary documents describing the system operation, architecture and hardware. When the system itself is unavailable, such design, engineering and specification documents are the next best thing.
Predecessor systems can be valuable sources of prior art in defending against the assertion of Internet-based patents. They are even more valuable, however, with an experienced guide to describe the architecture of the system, explain its capabilities and authoritatively compare it to the patent at issue.
This article is reproduced from IP Law 360, August 12, 2009. http://ip.law360.com.