PubPat Claims ‘Prior Art’ on JPEG Patent

The Public Patent Foundation (PubPat) asked the U.S. Patent and Trademark Office to re-examine a patent covering the JPEG format.

PubPat Executive Director Dan Ravicher said he’s identified an earlier patent, known as prior art, which should have disqualified the patent from being issued. He filed his request with the Patent Office on Wednesday.

Forgent , which develops and licenses intellectual property, also owns the earlier patent, known as the Tescher Patent — as well as five others that are related.

Forgent said its data compression technology covered by the ‘672 Patent is central to the display of JPEG images.

Forgent acquired the ‘672 Patent when it bought Compression Labs in 1997. Compression Labs was awarded the patent in 1986, but never collected royalties or asserted its rights. In 2002, long after JPEG had become an industry standard as well as a technical one, Forgent began demanding licenses.

Patent applicants are required to disclose any prior patents they’re aware of that relate to the technology they seek to patent. However, Ravicher said, in order for a patent to be rejected during re-examination on this basis, someone would have to prove not only that the applicant didn’t knew about it and disclose it, but also that the applicant intended to deceive the Patent Office.

“The first two are easy. The hard thing is always intent,” Ravicher said.

Instead, Ravicher’s request to the USPTO focused on disqualifying the ‘672 Patent because of the prior art. The earlier patent has expired.

PubPat is a not-for-profit legal services organization that represents the public interest by educating the public, advocating against bad patents and unsound patent policy. In June 2004, it asked the USPTO to re-examine Microsoft’s patent on the FAT file format. It also publicly criticized Sun Microsystems , after it began releasing code to its OpenSolaris server operating system under its Common Development and Distribution License (CDDL). PubPat argued that the OpenSolaris release was unclear about the use of Sun’s patents with the technology.

Forgent is in litigation with 30 companies for infringement related to the patented JPEG technology. In April, Microsoft became the latest target.

Forgent also is suing 15 other companies for infringing another patent covering playback during recording.

But not every company chooses to fight. Research in Motion licensed the technology in October.

Ravicher’s re-examination requests compare each of the elements of the ‘672 Patent with those of the Tescher Patent, showing the relationships to prove that the tech covered by the latter should have been obvious, given the former. Such a process typically takes 40 to 80 hours of work by an expert, often with the help of other experts.

The USPTO typically takes from two to five months to decide whether it will re-examine a patent; the entire process can take from 18 months to 10 years, Ravicher said.

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