Forgent Networks Responds to JPEG Patent Rejection
Posted by Sachin Garg on 2nd July 2006 | Permanent Link
Forgent’s famous JPEG patent was recently rejected by Patent office as a result of PUBPAT’s request.
In press releases after the ruling, both PUBPAT and Forgent claimed victory. Which ofcourse confused most of us.
PUBPAT’s press release said:
In the reexamination proceeding initiated late last year by the Public Patent Foundation (”PUBPAT”), the USPTO has rejected the broadest claims of the patent Forgent Networks is asserting against the JPEG standard.
and Forgent’s press release said:
Forgent Networks announced that on May 25, 2006, the USPTO issued its first office action, a non-final action, confirming a majority of the claims in United States Patent 4,698,672. The action upholds 27 of the 46 claims of Forgent’s patent. Forgent will vigorously defend the remaining claims that were not initially upheld in this first office action.
Both parties seemed equally optimistic back then, but a more recent press release by Forgent has a different tone:
“We are shocked and disappointed at the outcome of the claims construction ruling,” said Richard Snyder, chairman and CEO of Forgent. “We find it difficult to reconcile the outcome of the ruling with our continued belief in the patent and our case. We are currently weighing our options and will decide our course of action in the near future.”
The 30 companies they are litigating against can probably breath easier now.
Another major development during this period was where the court has ruled that the principles of equity apply, meaning that a court considering slapping an injunction on the infringer must consider how much damage is really being done. This is bad news if a company that owns a patent only has it for the purposes of suing other people.
July 3rd, 2006 at 11:49 pm
Anyone knows which claims were rejected and what is the exact implication of this on those under litigation by Forgent?
July 4th, 2006 at 3:23 am
Check http://www.pubpat.org/672OA060525.pdf for details on the rejected claims.
I am not sure what the “exact implication” of this will be, but Richard Snyder’s “shock and disappoint” can be taken as a hint. Let us know if you reach any conclusion after studying the rejected claims.
July 6th, 2006 at 8:47 am
Is no one willing to spill the beans on “Now what happens to the money already paid to them?”
July 6th, 2006 at 2:58 pm
Here’s the sad truth. If somebody like Sony signs an agreement to license the 672 patent, they are probably out of luck. The patent is still valid, it just isn’t as powerful as it once was.
A ruthless negotiator would include a clause that said they get their money back if pertient sections of the patent were ruled invalid, but Sony probably wasn’t feeling too ruthless after losing $25M in a court case.
I speculated a bit on my home page, but the truth is, those agreements are private contracts, and so nobody but the priniciples knows if they are going to be able to back out. Expect some lawsuits, and expect Forgent to drop the 30 or so they have in process.
July 7th, 2006 at 10:56 am
Any money you have paid for past infringment is gone. However I am pretty sure the law makes it illegal to make have someone pay for future, even by prior agreement use if a patent is ruled invalid.
July 7th, 2006 at 11:37 am
But was it *infringement* in the past? The patent was still wrong, it just wasn’t proved that it was.
I am not an expert on law (I am not even a beginner), but it will be hard for me to believe that they can now keep the money they gathered over an invalid patent. They got into a contract selling what was never their, seems like a crime to my _untrained_ eyes.
Or is it ok to use a potentially invalid patent to earn money unless someone proves otherwise? Maybe I can file for some ‘whatever’ patents and if they granted, make some quick money till the ‘office action’ invalidating them comes, it will take an year or two for anyone to get that done which will be enough time to make atleast some quick bucks.
July 7th, 2006 at 2:10 pm
Stop saying “invalid patent”. That is not what the patent office said. They ruled that certain claims in the patent were not valid, but much of the patent is still in force.
That’s what makes this not a slam dunk. The patent is still good, so you can’t just say “I want my money back, the patent I licensed was ruled invalid.” Sorry, that is not what happened.
July 8th, 2006 at 4:27 am
Sorry, my mistake.
What if I replace “invalid patent” in my above comment with “invalidated claims”?
July 8th, 2006 at 1:07 pm
>What if I replace “invalid patent” in my above comment with “invalidated claims”?
Then you’re right on the money, but that is why the legal question is murky!
It is also why Rob’s comment number 5 is probably completely off base. (Although I get the feeling he’s feeling his way around in the dark on this.)
July 9th, 2006 at 8:18 pm
Two questions:
1)Has anyone ever said how this patent effects Linux distributions which support JPEG and provide graphics programs which allow creation of jpegs?
Forgent hasn’t sued any Linux distributions that I know of. Are they ok or not?
2)What happens next? If 27 claims were upheld, does that mean the USPTO will issue a new patent based only on the 27 upheld claims?
July 10th, 2006 at 8:08 am
The reason there are two different reactions in the two press releases is they are reacting to two different events.
The earlier press release was about the USPTO office action that decided some claims were invalid.
The later press release relates to a more recent court ruling in San Francisco. This “claim construction” ruling defines all the disputed or ambiguous language in the patent claims, so later the court can decide if any claim is infringed. In claims where the 672 patent says “digital signals” and “processed signals” the court decided that means video data (since that is what the patent is really about), leaving open the tantalizing possibility that still image applications do not infringe those claims.
Just another step in the battle. If you read Microsoft’s original complaint (once and maybe still available on Forgent’s web site), there are about 4 other compelling ways to fight 672:
“…[672] is not infringed, is invalid
and is unenforceable, in whole or in part…”
“…CLI/Forgent’s statutory unfair competition, fraud,
negligent misrepresentation, equitable estoppel and patent misuse.”
“Forgent’s campaign to enforce the ‘672 patent stems from a history
of deception, delay and improper behavior.”
“CLI engaged in a pattern of misleading conduct, silence and
misrepresentations about the purported relevance of
the ‘672 patent to the JPEG Standard…”
Delightful reading.
July 10th, 2006 at 10:48 am
Thanks for the info L, that helps clarify things.
I don’t know what type of court issued the ruling in San Francisco, so the coverage of the ruling is uncertain. However, if the court does indeed rule that the patent only covers “video data”, then it would seemingly be a lot easier for licensees to countersue for refunds.
As for Don’s comment on Linux, you are in the same situation that you were in with Unisys and the GIF patents. It’s hard to pin down who you sue for a Linux distribution. You could go after commercial vendors like Red Hat, and possibly get something. But they might try to pass the buck to the software developers, perhaps with success. And it would be awfully hard to get any money from GIMP - the best you could do there is get a cease-and-desist, in which they remove JPEG support from the package. Then you’d have to download a plugin from overseas to get it to work.
But it doesn’t seem likely now, Forgent has much bigger problems to deal with, they’re not going to waste time on Linux.
July 12th, 2006 at 10:01 am
Thanks L, I wasn’t aware of the court ruling and it’s background. Do we have more information on this? (and apologies for my misinterpretation of press release)
Anyway, this surely translates into more good news for the open standard.
July 22nd, 2006 at 3:48 pm
It looks to me like the claims central to JPEG have all been rejected. The rejected claims cover the RS codes used in baseline and progressive mode, which represent nearly all JPEG images in use today. In JPEG, an RS code represents a run of R zero DCT coefficients (in zigzag order) followed by an S-bit coefficient. For example, RS=32 represents 3 zeros followed by a 2 bits representing one of the values (-3,-2,2,3). R and S can range from 0 to 15. The RS codes are Huffman coded in a 256 entry table.
Patent 4698672 claims 1, 6, 12, 13, 25, 30, 36, 39, and 42 all seem to be slightly different wordings of claims covering RS codes (a run of first values followed by a second value or other value). All of these claims were rejected. I don’t believe the other claims apply to JPEG. The patent office upheld extensions of these claims where the “second value” or “other value” represents an amplitude, but not a sign. However, the S in RS represents a range of numbers, not an amplitude. For the case of S=1, the next bit represents a sign (-1,1) but these claims were rejected also.
This will all be moot when the patent expires on Oct. 27, 2006 (20 years after filing). The patent was already granted more than 17 years ago.
July 22nd, 2006 at 11:59 pm
If the claims no longer apply to JPEG, then its obviously over and we will probably see them paying back.
But if it is still valid, this brings another point. Can they continue to sue others after patent expiry on the basis that others were using the patented technology when the patent was valid?
July 23rd, 2006 at 12:26 pm
Sachin, I don’t think so, when the patent is invalidated, it’s the same as if it was never valid in the first place. It’s not like amending a law - in that case somone who broke the law before modification or expiration can still be prosecuted. Invalidating the patent is like waving a magic wand that goes back in time and erase it forever. This is because it was invalidated on the basis of prior art, and that prior art was there before the patent was.
The only thing they can continue doing is to pursue back claims for damamges on the currently valid portions of the patent, and Matt makes it sound like there’s not much there to go after.
August 26th, 2006 at 5:32 am
[...] The “claim construction” ruling and Pubpat initiated claim invalidation seems to have taken its effect. [...]