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Much Ado About IM Patents

Microsoft is the new recipient of just the latest in a string of patents protecting instant messaging and related technologies. As a result, the patent landscape is as muddy as ever when it comes to IM.

The new Microsoft patent, 6,631,412, covers a "System and method for activity monitoring and reporting in a computer network." Specifically, that means a method by which an IM network can determine whether a user is typing, and relay that message to others.

The method described works like this: the monitoring system periodically checks to see if a user is typing on their keyboards during an IM session with others. If the user has typed between checks, an update is delivered (and the intended recipient sees a notification to that effect.) If not, the system does not deliver an update. After a set amount of inactivity on the part of the sender, the recipient's computer also erases the notification, if one had been previously generated.

Of course, similar systems are found as part of most of the major IM clients and networks. AOL Instant Messenger conveys the fact that user John Smith is composing a message with "JSmith is typing..." while Yahoo! Messenger displays "JSmith is typing a message." MSN Messenger, meanwhile, shows the notification "JSmith@hotmail.com is writing a message."

It's a rather innocuous feature, but because of its ubiquity, certainly would seem to beg the question of whether Microsoft has gained some small manner of leverage in the hotly competitive instant messaging market.

Naturally, the major parties in consumer IM are keeping mum about their take on the patent's potential impact. AOL declined to comment, while Yahoo! didn't return requests for comment by press time.

In declining to comment on the patent or its planned uses, a Microsoft spokesperson pointed out that the company files "hundreds of patents in numerous areas of technical innovation," and wasn't interested in commenting on this particular win.

Indeed, the impact -- and validity -- of U.S. Patent No. 6,631,412 is likely to be up in the air until it's tested in court, or leveraged to woo licensing revenue from other companies.

But neither development seems especially probable. That's considering the sheer number of important-seeming patents held by the major IM players -- and the fact that they've never been used to coerce major rivals into paying licensing fees or been called into question in a formal legal challenge.

Patents a'Plenty

The new Microsoft patent is actually a continuation of an earlier patent, 6,519,639, which covers a similar system material in more detail. Continuation patents typically are used to expand the scope of an original patent, potentially to cover new inventions or to make broader claims.

Microsoft also has a bevy of other IM-related patents and applications up its sleeve. In July, the U.S. Patent and Trademark Office published a Microsoft application covering a system for translating instant messages.

Filed in December, 2001, the patent application covers a method and system that enables two or more IM users to chat with each other using different languages. During the session, the chatters' clients exchange user profile information that specifies their preferred language. At the same time, a content translation application (located at each user's client, or reads the users' profile to translate messages from the source language to the recipient's language -- before it's seen by the recipient. Because the message is translated prior to delivery, the destination device receives the message according to the destination language.

Microsoft also owns "Inter-enterprise messaging system using bridgehead servers," (6,604,133) awarded in August -- a patent that could have important on the industry bearing now that a market is developing for enterprise-grade instant messaging systems, especially gateways.

The patent protects a firewall-friendly way of transmitting real-time messages from a user outside a company to an internal recipient. The messages can bypass the firewall because they include the address of a bridgehead server, exposed through the firewall, and information identifying the recipient client. When a bridgehead server receives a message, it resolves the address of the messaging server to which the recipient client is assigned, then forwards the message appropriately.

The messaging system described means that the external sender does not need to know the address of the behind-the-firewall messaging server, nor do they require direct access to the messaging server to establish real-time communication with internal users.

In fact, this patent is based on yet another owned by Microsoft -- which happens to be one of the earliest patents in the IM space.

That patent, "System for immediate popup messaging across the Internet" (5,943,478), was filed by Boston-based Flash Communications in April, 1997. (Flash's products, since its acquisition by Microsoft in 1998, eventually became the guts of Exchange Instant Messaging, while its personnel went on to spearhead Microsoft's "Greenwich" initiative and firms including Cordant and IMlogic.)

The Flash Communications patent covers a system for sending "immediate popup messages between Internet users." Described is a user interface, a method and infrastructure for continuously tracking and reporting the online status of users, the infrastructure comprising servers and client software, and a method for communicating to users behind firewalls.

The Granddaddy of IM Patents?

But Patent No. 6,449,344, held by AOL Time Warner, could hold the most clout among IM patents, since it covers an instant messaging network, contact lists, and distribution of "presence" information, which indicates users' availability to chat and receive messages. America Online received the patent in December.

It also predates the similar patent Flash Communications patent owned by Microsoft. Like Flash's patent, which was filed about four months later, the AOL patent originated with a startup, the Israeli IM pioneer Mirabilis. In 1998, America Online acquired Mirabilis, which brought to market the first public IM sensation, ICQ, along with its intellectual property.

The AOL/Mirabilis patent specifically protects a system of point-to-point communications involving users at a network of terminals. Users log on to the system with a unique identification code that remains the same regardless of their IP address, and can chat with other users logged on at the same time. The concept of presence comes into play when each member automatically alerts the network when they log on or off; the network, in turn, provides availability information to other users.

The patent also protects contact lists, or as AOL refers to them, "Buddy Lists." Those are described as "a predefined list of users whose connection status the user wishes to know." Patent No. also 6,449,344 describes the practice of alerting users when members of their contact list log on, and of enabling users to limit who may receive their presence information.

Of course, features like contact lists, presence, and IM networks are common to all of the major public IM platforms.

America Online also recently received another patent, No. 6,539,421, that protects a "messaging application user interface" -- one that enables sending and receiving of messages to a subset of IM users, and for auto-completion of partially entered IM handles (for interfaces in which one needs to specify an address each time before sending messages.)

The patent, which was filed in Sept. 1999, means protection for the little-known and short-lived TiK implementation of AOL Instant Messenger. TiK came about in late 1998, when America Online -- facing pressure to open its IM network -- released under the GNU Public License an open, ASCII-based protocol called TOC, which provided for a limited version of AIM's functionality. In connection with TOC, AOL released TiK, a Tcl/Tk 8.0 instant messaging client -- but discontinued its support just months later.

While the patent details features specific to TiK, it also notes that those features are "optional implementation features." As a result, other IM systems, including AIM, might be within the scope of the patent.

The text of the patent specifically describes "a messaging application user interface [that] has an input element for receiving electronic messages and an output element for displaying electronic messages." It also provides for a UI that maintains "a subset of the plurality of potential message recipients, the subset being determined using a predetermined criterion," which might apply to Buddy Lists, an AIM (rather than TiK) convention.

Drawing Conclusions

So what's this all mean? Nothing -- probably. AOL has owned a patent that governs many of the fundamentals of instant messaging for almost a year, and has yet to make a public move with it.

That's even as competitors rev up their own efforts to monetize their IM networks with new consumer and business offerings. Additionally, AOL has said to federal regulators that the growths of Yahoo! and MSN Messenger have cut into its lead in the IM market.

Consequently -- and based on reports from sources close to AOL -- it's seems likely that America Online would turn to its early Mirabilis patent only to defend itself from legal challenges brought against it by a competitor. And Microsoft, having recently settled a longstanding anti-competition lawsuit with AOL, seems an unlikely candidate to start a war of patents with the most recent addition to its arsenal.

Yet, it's worth keeping in mind that AOL recently had to prove to the Federal Communications Commission that it was not "dominant" in the public IM market, and thus, incapable of asserting a monopoly. In return, AOL gained the right to deploy advanced, broadband-based services like videoconferencing over its network.

Now that it's showed that it can play well with others, however, there's a new possibility that AOL will pursue a first-strike strategy against rivals.

Still, it's notoriously hard to forecast an outcome in the busy intersection of law and technology, particularly when giants like Microsoft are involved -- witness cases ranging from Apple's "Look and Feel" suit, to the company's torrent of anti-monopolistic legal battles in years past. And the major parties have resisted legal action even during the interoperability squabbles in 1999 and 2000. Instead, from all appearances, the IM patent situation looks like it could remain murky for quite some time.

Christopher Saunders is managing editor at InstantMessagingPlanet.com.