When a company called EMG Technology filed a patent lawsuit against Apple last week over “the way the iPhone navigates the Internet,” it had the stench of a patent troll. The suit was filed, a month after the patent was issued, in the Eastern District of Texas, known as troll country among patent attorneys because the courts there tend to rule favorably for patent owners.
EMG Technology is based in Los Angeles, and appears to have been formed solely for the purpose of filing this lawsuit. One of the inventors named on the patent and EMG “managing member” Elliot Gottfurcht is a Los Angeles real estate developer. Apple, of course, is also based in California.
Then there are the actual claims of patent No. 7,441,196. With the help of M-CAM, an underwriter of patent insurance, I uncovered some patents (listed below) that pre-date EMG’s and that might be considered prior art. Apple’s lawyers should take a look at them. Some of them are even owned by Apple. Others are owned by IBM, Microsoft, Sony, and Sun Microsystems.
Before we get to those, what about EMG’s patent? The claims in that patent describe the ability to manipulate, zoom, scroll, and view Web content on devices other than a laptop. But the central and primary claim has to do with a way to convert HTML Web pages into XML data that can then be displayed partially on different devices, including mobile phones.
I’m no lawyer or patent expert, but my initial reaction was that these seem like overly broad claims (they cover everything from TVs to Web appliances to cell phones) with lots of precedents. It is very difficult to display an entire Webpage on a small screen, so engineers have figured out various ways to display parts of those pages.
EMG does not specify in its suit which of the patent’s 76 claims it thinks Apple is infringing on. But in the press release announcing the lawsuit, EMG’s lawyer highlights the claims covering “the display of Internet content reformatted from HTML to XML on mobile devices” and “technology for manipulating a region of the screen for zooming and scrolling.”
I asked M-CAM to run EMG’s patent through its Patently Obvious database, which compares claims across millions of patents. And they came up with 250 instances of possible prior art not mentioned in the EMG patent. When an inventor files a patent, he is required to list all other patents you are aware of that could have an impact on your claims. One way to get a patent application past an overworked patent examiner is to list a ton of related prior art, but omit the critical ones that could invalidate the patent.
One key patent omitted by EMG is No 6,535,896: “Systems, methods and computer program products for tailoring web page content in hypertext markup language format for display within pervasive computing devices using extensible markup language tools.” It is owned by IBM and was filed on January 29, 1999, which is prior to the November 15, 1999 date that is applicable for the EMG patent. The abstract for the IBM patent describes what it does this way:
Content portions of a requested Web page are converted to an XML format and then modified using an XML content-tailoring tool. Other content portions of the Web page are masked so as to be “hidden” and are, thus, not converted to XML format. The masked portions of the Web page are then unmasked, combined with the modified content portions, and transmitted to a client device for display therewithin.
That sounds very similar to parts of the first claim of the EMG patent:
1. A method of navigating the Internet, comprising: displaying on-line content accessed via the Internet, the on-line content reformatted from a webpage in a hypertext markup language (HTML) format into an extensible markup language (XML) format to generate a sister site, . . . navigation options to change between layers of the simplified navigation interface from general to more specific in each deeper layer; receiving a user selection of one of the navigation options; forwarding the selected navigation option across the internet to a server providing the simplified navigation interface; receiving a next deeper navigation layer of the simplified navigation interface corresponding to the selected navigation option
You don’t see IBM suing Apple for patent infringement (even though it is suing Apple for stealing away one of its key employees). It kind of makes you wonder how EMG’s patent get approved by the U.S. Patent Office in the first place.
But this lawsuit just illustrates a bigger problem with the patent system. Since the budget of the Patent Office, which is derived from filing and maintenance fees, is tied directly to how many patents it approves, it has an economic incentive to approve as many as possible. This system needs to be changed. (Anyone on Obama’s team reading this?).
Below is some other prior art (patents 6249844, 6339780, 5815142, 5481296, 5621456, 5594509, 5524195, 6344861, and 7334192) that Apple’s lawyers might want to take a look at.
“The suit was filed a month after the patent was issued in the Eastern District of Texas,[...]”
Patents are granted by the USPTO in DC.
Whereas, infringement lawsuits tend to be filed in the District Court for the Eastern District of Texas.
That is what the sentence says. I added commas to make it clearer.
Schonfeld:
Here’s some better advice. Tell your boss that when being sued, he should pay for his own legal counsel and not piggyback onto someone else’s representation.
Until then, shut the F up, and get back to work at the Deli counter.
Actually the Patents are granted by the USPTO in Alexandria, Virginia and not DC
this is why I come back to TC, the comments.
Alexandria is considered part of the DC metro area, so the OP is still correct.
Hey Dorian Peters, you fracking dumbass,
What part of that don’t you understand????
“The suit was filed…in the Eastern District of Texas, known as troll country….”
It’s called Tyler, Texas. Troll Country.
“Patents are granted by the USPTO in DC. ”
Really? No shit. Wow.
Read the sentence… “The suit was filed…. in the Eastern District of Texas”… true the sentence can be ambiguous, but it is not incorrect.
Hi Eirik – Just wanted to comment on the following:
“But this lawsuit just illustrates a bigger problem with the patent system. Since the budget of the Patent Office, which is derived from filing and maintenance fees, is tied directly to how many patents it approves, it has an economic incentive to approve as many as possible. This system needs to be changed. (Anyone on Obama’s team reading this?).”
Up until very recently, Congress used to take ALL the fees generated by the PTO and give back a portion to the patent office. The result was an under-resourced PTO as filings started increasing. This helped generate many of the quality issues people complain about. I think Congress stopped doing this recently and there’s a law pending that would prevent them from doing it.
Second, the PTO gets fees from filings, extensions, number of claims, petitions, etc. So they don’t merely survive on grant fees.
The Patent System has changed a lot the past five years. It is substantially more difficult to obtain a patent and to commercialize a patent. Many of the changes were needed (the old obvious standard was very weak, but the new one is somewhat vague) and more changes are in the pipeline. The pendulum has swung from overly pro-patent to being more anti-patent. Where it lands is uncertain, but I’d be careful about gutting the patent system too much.
That said, the US PTO includes a lot of patent examiners who are somewhat independent and all gov’t employees. They have placed more emphasis on quality but likely have a ways to go and will never be perfect. If EMG’s patent is invalid (regardless of whether they are a “troll” or practicing the invention), they will likely lose. Apple’s no pushover so I assume they won’t rollover easily.
Are you joking? Bullshit patents, such as this one, are granted every day of the year. Nothing has changed, and nothing will change. What, you work for the patent office or something?
Wow, great research Erick.
as I’ve said before, Patents suck !
If one person, who admits is no lawyer or patent expert, can find all this potential prior art, it seriously calls into question the judgment of those who created this shell corporation. Even before the classic discovery can be performed, it can already be argued that the alleged holders have no case.
And besides the prior art, I’m sure one can argue that the idea of mobile web browsing (and its display techniques) is not unique as several other organizations – including the likes of cell handset manufacturers who used WAP for basic browsing – came up with the concepts almost at the same time.
Apple, who’s popularity and profitability is similar to Google’s, is an easy target for a shakedown lawsuit like this. I’m sure Apple ask the patent be invalidated for the above (and many more) reasons.
Personally, I’d like to see IBM, Sun, Sony, Microsoft, and Apple join forces and counter sue this extortionist out of existence.
Sadly, with the current patent system, it doesn’t matter whether a patent has merit or not. Once it’s been granted, courts must respect them.
Look at what happened to RIM when it lost that $600M judgment against NTP,
Erick – Not true. Patents are presumed valid but can be found invalid or unenforceable by courts. Patents are frequently invalidated by courts.
You do realize that in the RIM judgment, parts of NTP’s patent application (the original one) pre-dated all the prior art that RIM used in its defense?
You do also realize that parts of the NTP patent were not upheld because they invalidated by prior art, and that RIM was found not liable of infringing the patent as to those claims?
Boring! You’re way out of your league. Stick to writing crappy tech articles… Oh wait, you just did. Nevemind.
Agree with shoneyisweak, this post shows you don’t know much about patents.
First, patent filing fees are paid whether or not the patent is issued so there really is not a mismatch of economic incentives to approve them. Anyone who has dealt with the patent office will attest that in the last few years it has become increasing difficult to get claims issued because examiners now have better tools to prior art searches. Second, the “patents” are not the descriptions that you recite above but rather the specific claims granted. Just because something “sounds similar” in the abstract, description or preferred embodiment does not mean that the actual claims are at all similar. Third, the courts do not “have to respect” patents. There are 2 basic defenses on patent litigation; invalidity and non-infringement. A defendant can cross complain that a patent is invalid and the judge can agree and the patent goes down in flames.
Love your company reporting, save the brain cells for that rather than patent prior art analysis.
1. Patent holders also pay maintenance fees, which increase over time. You only pay those fees if your patents are issued.
2. I excerpted the abstract for the IBM patent because it summarized several claims. Read the claims, they say the same thing. The excerpt from the EMG patent is from the claim. The analysis M-CAM did was based on the overlap of claims, among other factors.
3. If companies want to invalidate a patent, they often find that they have to go back to the USPTO. Again, look at RIM vs NTP. RIM actually got most of the claims invalidated, but it didn’t matter.
I just had a couple of comments.
As to your second argument, it’s quite reasonable to compare to the disclosure of a earlier filed patent to an issued patent for validity purposes. If the earlier patent disclosed what is in the claims of the patent EMG asserts, those claims are anticipated.
As to your third argument, courts do have to respect patents in some respect. Once granted, patents do have a presumption of validity which gives them some force in a court of law. However, this can be overcome, as we know.
PWNED
Prior art doesn’t disqualify a new utility.
The claims are describing the exact same thing: reformatting Web pages from HTML to XML so that they can be viewed and manipulated on mobile screens.
I didn’t say say it didn’t. My statement stands.
It was just a FYI comment. BTW, I wished you happy thanksgiving on my Android and you didn’t reply. I don’t wanna say you’re a snob or anything.
BTW, you can use my employment in SoCal at a tech firm as a meter. If I can stay employed at a good salary with Canadians blasting me left and right everytime I tell the truth about their French-azi country, so should other people.
My tips are to
A. show up to work on time.
B. wear clean clothes
C. do your job
D. Don’t wear flip flops
With those simple steps I have managed to stay employed in a deep recession.
oh and E. pull all your money out of the stock market. No matter how much it dips up, it’s going down.
Well, Happy Thanksgiving back to you. I didn’t see your message.
Oh, sorry. I take it back you’re not a snob.
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I worked as a Patent Examiner for the USPTO. Some things in the article are true but some are incorrect. (sorry for the long post.. but read on if you are or going to be involved in the patent system.)
-Incentive to approve-
This is totally incorrect, although I do understand why anyone would think this. PTO, budget wise is doing excellent. The PTO, actually used to GIVE 10% of its money to fund the federal gov’t. They stopped doing this in 2004.
As an examiner, I get the same credit for allowing a case, as a I do rejecting a case. In fact, I have to do 20X more work if I have to allow a case. Why? Because I don’t want my patent with my name on it showing up on TECHCRUNCH or NYTIMES or WSJ. If i reject an allowable patent…I make one guy mad. If i a allow a rejectable patent…I make the whole world mad. So, you can clearly see there is little incentives for me to allow a case.
But we do make most of our money from allowance fee and maintenance fee. Since an applicant pays more if the application gets allowed, that means each patent application that is reject is subsidized. Applications should NOT be subsidized!!! In fact, the PTO should raise the fee for applications so that big companies file some what important cases and so we can catch up on the 700k cases we are behind.
-Patent Trolls-
I think Erick wrote a great article about Nathan Myravold. This needs to be stopped. Unfortunely, this can only be done thru congress(so don’t count on it). One of the problems in the PTO, there is unifed rules for all patents (tech, bio, and etc). So when you have comprehensive laws that cover everything under the sun, your bound to have problems. There was legislations in 2007 to cap patent awards. But since drug companies usually spend millions to innovate, they lobbied against such legislation (and won). Unlike tech, which anyone can just file an idea and get a patent (real estate developer in this case).
-Required to list all other patents-
This is also incorrect. The law does require you to file all prior art but think about this for a second. If you are spending tons of money to file a patent, your not going to give me the prior art that I can use against you. Plus there are thousands of patents on each topic…are you going to let your lawyer take the time to file each of those patents? What most applicants do is file no prior art and act like the applicantion is new. This actually works out great for both parties!
I looked thru this case, the lawyer filed 283 patents as prior art. I can almost gurantee you the pto examiner didn’t spend more than 5 second per patent. We have pretty good database that is faster to search through then look at 283 patents that a lawyer filed….just to waste my time (if it was any good, he woudn’t file it).
So are they lying? Nope, they are protecting their client interest. The ONLY time they file relevant prior art, which I can use against them… is that if they filed a patent in UK and UK Patent office cites a prior art, they have to let us know in the pending US application. If they dont’t…then they can get in trouble because only then we can PROVE they are hiding information. But at that point, they all follow the rules. So to sum up, 99% of applicant prior art are completely useless and we mostly pay attention to prior art that an actual employees of patent office around the world files for that app.
There was rules setup that for every prior art applicant files…they have to provide a summary. That way they won’t file BS 283 patents (which no one reads)…insead file maybe 10 best current related art and EXPLAIN why they are relevant.
-Is it a valid patent-
I do not know…I have to do research on it. But you are wrong in understanding the patent (not your fault, blame the lawyer for writing it like this). A regular person, would look at the pictures and read the abstract and think that is the patent that they are filing. This is correct in theory but not in reality. Since the lawyer makes many amendments to the claims, the final product is totally different thent the actual original claims and abstract (this is intentional). Also, they “recycle” the abstract, pictures, spec all the time.
So for this case, the genearly idea maybe “content reformatted from HTML to XML” but that is not the actual invention. So alot of people will get mad (only reading the abstract), that someone got a patent for this case but this is NOT the invention.
To understand what the invention is you have to read the CLAIMS. But most people will read claim 1 and get lost and go back to the abstract and think that is the invention. Most importantly, EVERY single limitations in the claims must be met thru prior art or be allowed. Same is true with the lawsuit…apple MUST infringe on all limitations of claim 1 or else they are not liable.
I quoated the part I think might have patentable weight and why EMG got the patent. You found art on the basics but not the actual stuff they are going after. If you can find the stuff below, send that to apple but I don’t think you will (at least not on one patent, might need to combine several patents). This will take some core researching…and not as simple as running it thru M-CAM…I’m not sure what M-CAM is…but it sounds like it matches keywords to find similar patents. You found the haystack (”content reformatted from HTML to XML”), now you need to find the needle (which is the quoted part below from claim 1)
Hope this helps!!
“the simplified navigation interface displayed in a form of a two-dimensional layer of cells from a plurality of layers and a plurality of cells, the two-dimensional layer in a form of a navigation matrix, each cell is a division of a screen and exclusive to a separate single navigation option associated with a specific unique input, the on-line content formatted to be displayed in one or more of the plurality of cells and formatted to be selected for navigation by one or more of the unique inputs, navigation options to change between layers of the simplified navigation interface from general to more specific in each deeper layer; receiving a user selection of one of the navigation options;”
“So for this case, the genearly idea maybe “content reformatted from HTML to XML” but that is not the actual invention. So alot of people will get mad (only reading the abstract), that someone got a patent for this case but this is NOT the invention.”
That’s an embodiment of the utility.
Dude, approve my patents. They’re up for opposition. I E-Filed them for $425 each.
I actually moved while my patents made it through the publication process. How do I change my address with E-File?
Link please Mr. PTO man?
Do I absolutely have to get an agent to do this for me or no?
Appreciate the insight, Former PTO Worker.
Below are the first two claims from the IBM patent. They describe the same thing as the EMG claim you quote, a Webpage being broken up and the parts being displayed in layers or portions via XML on a smaller screen:
“1. A method of tailoring Web page content for display via a client device, wherein the Web page contains first and second content portions in HyperText Markup Language (HTML) format, the method comprising the following steps:
receiving a request from the client device for the Web page;
converting the first content portion from HTML format to XML format;
masking the second content portion from view of the content tailoring tool;
modifying the converted first content portion for display within the client device using a content tailoring tool in XML format; and
converting the modified first content portion from XML format to HTML format.
2. A method according to claim 1 further comprising the step of transmitting the Web page containing the modified first content portion to the client device for display therewithin.”
Dear Mr. Schonfeld,
I am afraid that you still have not understood “Former PTO worker’s” point entirely. You can not simply abbreviate:
“the simplified navigation interface displayed in a form of a two-dimensional layer of cells from a plurality of layers and a plurality of cells, the two-dimensional layer in a form of a navigation matrix, each cell is a division of a screen and exclusive to a separate single navigation option associated with a specific unique input, the on-line content formatted to be displayed in one or more of the plurality of cells and formatted to be selected for navigation by one or more of the unique inputs, navigation options to change between layers of the simplified navigation interface from general to more specific in each deeper layer; receiving a user selection of one of the navigation options;”
to:
“Webpage being broken up and the parts being displayed in layers or portions via XML on a smaller screen”
and then just say you found it in the prior art. You have to match each and every feature in EMG’s claim to the prior art. And if you cannot find all the features in the claim in a single reference (whether in patent claims, a specification, or anywhere else doesn’t make much difference), then you have to prove why it would have been obvious to the skilled person to combine the knowledge from several different references.
Of course, this works both ways: the patentee also has to show that the presumed infringer’s product or method replicates each and every feature of at least one of their patent claims. “Close enough” just doesn’t cut it.
He’s arguing the right thing the wrong way; he should be arguing that the transformation is obvious to a person of ordinary skill in the art (here, basically any programmer).
Furthermore, he should also be arguing that the smaller screen is merely one possible implementation of the prior (IBM) patent, and thus the new patent is invalidated on the grounds that it is already covered by the IBM patented.
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Come on guys! This is an interesting blog which you can get for free. What’s wrong with you all. Thank you for keeping us updated Erick
Sidenote: “Gottfurcht” translates from German into English as “Fear of God” – god had some trouble with an apple as far as I remember
Erik and the patent examiners – thanks for the wonderful and insightful discussion.
Just to add a few extra haystacks – remember prior art need not be other patents. An academic publication, and existing product and many other things are prior art, patented or not.
My father in law successfully defended a patent lawsuit against an Italian company (at least till later appeals). The prior art he found (his client was being sued for patent infringement) was a 100+ year old mechanical device made by a Swiss company. It hadn’t been patented, but was physically, and funiitonally similar enough to the patent;s claims.
In the end the higher courts let the patent stand, but it gave the company several extra months of business
Totally off topic:
Haha, now I understand why people kept writing test, I’m liking this fb connect thingy.
On topic:
The fact of the matter is that this guy who is suing Apple isn’t in the phone business, not even in tech, nor was he just about to launch his own similar product. He just wants money, without offering any independent utility. And this is where I’m going to agree with Erik that he is a troll, regardless of the legality.
Software patent are up in the air anyway after Bilski see http://www.dech...cuit_Bilski.pdf
Things I would expect to see for a case to really hold water.
1. EMG presented the technology to Apple prior to apple having started down the iPhone path, and Apple said GTH.
2. Some evidence showing Apple stole the technology from them (like the took the LISA from Xerox).
The fact that two companies came up with two similar methods of doing something digitally leaves me cold. The implementation is what matters in the end. Does EMG have a product that does this or just ideas jotted down on paper. This is similar to the guy who patented the iPod navigation system. What? I am sorry, but I was using the iPod navigation system back in 1981. A menu of items you pick from taking you to a sub menu.
If you are going to refer to the U.S. District Court, Eastern District of Texas, as a “troll county,” and state that the rulings favor the patent owner, you need to quote your sources and do a little deeper searching. Perhaps you looked into some of the verdicts/rulings reported through findlaw.com or something or perhaps you may have even searched Lexus or Westlaw. Those articles and databases do not have the entire record.
Secondly the U.S. District Court for the Eastern District of Texas is not a “county.” Dah……….
So, though I enjoyed reading your article, I agree with one of the above posts suggesting that you leave the legal stuff to the experts.
Someone actually thought the U.S. District Court for the Eastern District of Texas was a county? lol!
Which patent?
http://www.goog...ents?as_q=Achex
Mike didn’t co-author any of the AChex patents including the one that was co-assigned to Western Union.