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[nobody]

Any of you patent experts want to venture a guess which part of the claims will be struck down?

http://www.geek.com/news/geeknews/2004Jan/gee20040120023507.htm

[eric stasik]

nobody,

Yeah, I read about this somewhere else. It appears to be great fodder for the people who like to slag the patent office. Without looking at the prosecution history and doing an independent prior art search it is impossible to accurately determine if the patent is valid or not, but let's take a quick look at it and see what it claims.

There are two claims, one independent and one dependent. The independent claims reads:

1. A method for assigning URL's and e-mail addresses to members of a group comprising the steps of:

assigning each member of said group a URL of the form "name.subdomain.domain"; and

assigning each member of said group an e-mail address of the form "name@subdomain.domain;"

wherein the "name" portion of said URL and said e-mail address is the same and unique for each particular one of said members such that an only difference between said URL and said e-mail address for said member is that in said URL the "@" symbol of the e-mail address is replaced with a "." and wherein said "subdomain" portion of said URL and said e-mail address is the same for all members of said group.

So first of all, one can say that the article is wrong. The patent is not claiming the entire WWW naming scheme, only a specific species and a very narrow one at that.

The URL, or universal resource locator, is a subset of the URI, or universal resource indicator. It is a direct descendent of the DNS (domain naming system) introduced by the University of Wisconsin. The DNS allowed TCP packets to be directed to a domain name, which would be translated by the server database into the corresponding IP number. (From hence the common abbreviation TCP/IP). This was introduced by the Internet Activities Board (IAB) in 1983 (when the Internet was still ARPANET).

This patent was filed in 1999… not much prior art is cited… without seeing the prosecution history it is hard to say how the applicants (one of whom is a patent attorney) argued that the claim should be allowed.

My guess – and this is only a guess – is that if the patent is valid (and it may well be) then it is probably not infringed by the WWW, and if it is infringed then it is in all likelihood not valid.

You see claims cannot be read independent of the specification and prosecution history (as I am boldly doing here.) The applicants may well have argued to the examiner that their patent was different from the existing URL which forecloses them from making the analogy now to argue infringement. This is called prosecution estoppel and is something which must be considered before drawing any conclusions. Without looking at the prosecution history, one can only blindly guess as to what the real scope of the claims is.

In short, the reactions of non-patent people to patents issued by the USPTO are often way off base and totally without merit. The cries of “another stupid patent” or “idiots at the patent office” is 99% of the time made by idiots who themselves know nothing about patents or how to even read them. It is sad that many of these comments come from programmers and engineers whose livelihood depends on a strong, well-functioning patent system.

This is not to say that the patent office does not make mistakes (it is a government bureaucracy after all) but they are actually rather infrequent. They do a far better job than they are given credit for.

Let’s watch and see how this plays out. My bet would be that the patent holders will not get very far trying to assert this patent against the WWW.

Of course I should not have to say that this is not legal advice, it's not advice at all, it's just a quick reaction to your question.  

Regards,

[M. Arthur Auslander]

Dear Eric,

Why get succored in to the detail that you have posted. This is a forum not a legal aid society.

My objective is to help inventors protect themselves against a waste of time, money and worry.

I try to get the client to focus on whether or not there is LIKLELY  value in getting a patent and to get claims broad enough to sustain THAT value.

This includes filing application of dubious breadth only when appropriate.

[eric stasik]

Mr. Auslander,

You of all people should be able to tell the difference between legal advice and engineering observations.

Legal aid if for lawyers to give. Engineers such as myself can only provide information.

What "suckered" me into replying was the article. I am on something of a personal crusade to change the public's increasingly negative perception of the patent system.

Do you have any idea of the poor perception which the patent system has among many engineers? Are you aware of the large number of young engineers in the F/OSS community who HATE the patent and copyright system and want to see it abolished? Have you read any of the books or articles by Lawrence Lessig, Richard Stallman, Yochai Benkler, or Bruce Perens? The recent debate in Europe over the EU directive on software patents was an eye-opener for me.

These people are intelligent (Lessig is a professor of law at Stanford, Benkler at NYU School of Law) organised, vocal, and are having an increasing influence in politics. They are each to varying degrees anti-patent and anti-copyright.

Call me an idealist, but I actually believe that the patent system provides a social benefit. It is not simply there to make patent attorneys wealthy.

If left to the AIPLA, who fat, dumb, and happy, seem oblivious to the public's increasingly negative perception of their profession, in a few years inventors will have no where to turn to protect their ideas because patent and copyright laws will be so weakened as to be ineffectual.

Providing education and information is the way to combat this trend and that is the reason I take the time to post on this board.

This is a forum for the discussion of all things related to  patents and I cordially invite more people to participate.

Everyone is welcome, even trolls.

Regards,

Eric Stasik

[M. Arthur Auslander]

Dear Mr. Stasik,

We are having the coldest weather, ever or at least in a century. You have warmed a warmer very cold day in New York.

The reality as I see it is that patents are too easy to get. There are also many praticioners that  that focus on getting patents, and making big money only for themselves. Too many worthless patents are issued to naive inventors who have nothing of value.

For the commercial client even weak patents may be a valuable commercial tool. For the individual inventor a weak patent may be a narcotic. It can't be sold and can be avoided legitimately, but might be a tool to go into business with.

I believe that without a world patent system, with all its weaknesses and abuses, world economics would be even more chaotic and more easily abused.

I feel very naive with the Reality Check®. There is no rush of clients to save time, money and worry, the way I would like to be able to do. It has hardly been worth the filing fee.

By the same token, ELAINE's Workshop®, E arly L egal A dvice I s N ot E xpensive™ have been commercial failures, even though I would not do without them.

It has always been my hope that I could put the intellectual property law and reality into a working combination so that inventors and businesses could maximize opportunity and get the most out of the law holistically.(sp)? That is, also using trademark and trade secrets to fill the gaps in the patent system. Niave on my part but I sleep well at night and keep busy.

[eric stasik]

Mr. Auslander,

Welcome to global climate change. It's always cold here in Scandinavia. 10 degrees colder won't make a bit of difference. We're used to it. Breaking through the ice in the summer to go swimming might take some getting used to, but the water will be just as cold as it always is. The ice skating will be better though...

What keeps me warm is many layers of fleece, a very thick down parka, and my passion about what I do.

I, as you, believe in the social benefit of the intellectual property rights. I am greatly concerned about the attitudes forming among many engineers and programmers. All of these young programmers working to develop free software haven't yet understood that giving one's work away for free is self-defeating.

Yet the real danger is that they want to tear down centuries of IPR because it interferes with their downloading. It is a dangerous social movement which must be opposed which is why I have become something of a evangelist.

Thus I am glad that you share a passion for IPR, even if perhaps we see this from different directions.

Regards,

Eric Stasik

[M. Arthur Auslander]

Dear Mr. Stasik,

I never expected to get a resonse to quickly. I had to rush out to a meeting and looked at the forum out of curiosity. My last recollection of Sweden was a ferry to Malmo in the summer. The weather was very pleasant some years ago.

I do not believe that the wild rebellion of youth will destroy the system. Maturing add perspective to materiality. A mature programmer, has more material need and cannot afford NOT to awaken. It may be possible for them to aid the growth for the best good of all concerned.

My feeling is that creativity will survive and mature and the rewards can be tempting.

[JimIvey]

Great answer, Eric!  I'll just augment briefly.....

The original poster asked which "parts" of the claims will be invalidated (struck down).  This is a common misperception in the /. and engineering communities.  Patent claims are indivisible -- they are infringed or declared invalid in their entirety.  One cannot infringe "part" of a claim and "part" of a claim cannot be declared invalid.

To break it down a little (and don't take this as a formal, legal interpretation of the claim), here's what I'd have to do to infringe.

I already have an e-mail address of jim@iveylaw.com.  I have similar e-mail addresses for other people I work with.

I would have to create domain names of jim.iveylaw.com and a corresponding domain name for at least one other "member" of my "group."  Note the plural use of "members".  I haven't done that, so I don't infringe.

It wouldn't surprise me to learn that many years ago, someone set up e-mail addresses such as www@domain.com and ftp@domain.com.  That might be invalidating prior art, assuming the domain name equivalents also existed -- www.domain.com and ftp.domain.com.  Then again, that may not be for each of a number of "members" of a "group."  Perhaps such prior art might bring the claims into the realm of "obvious" in view of the aligned usage of e-mail addresses and domain names.  Then again, perhaps not.  I could probably easily argue both sides of this issue here -- perhaps that's why I do what I do....  ;-)

While I don't think the claims are quite as broad or, accordingly, as dubious as the article and original poster think, they are quite broad and somewhat dubious.  If I had written the case, I would have had additional claims, perhaps pulling the "name" portion from a database of members of the group and/or including a user-interface in which the "name" portion is created in response to signals generated by a user by physical manipulation of one or more user input devices (to get around pure algorithm criticisms).  These would be a little narrower, deviate more substantially from a www@domain.com style e-mail address, and still apply directly to the target market as I understand it.

But, hey, they didn't ask me.... ;-)

Regards.

[nobody]

All that said, if you go to the patent and read the summary of invention, it is very clear to me that the inventor is way off base in suing Network Solutions.

Such databases are NOT for members of a profession who don't know each other to contact each other or interact.

Even if the "invention" as worded in the abstract and summary was novel in the least in 1999, the claims taken broadly enough to sue Network Solutions were not.
This seems like an attempt to sue Network Solutions through the back door and it looks sleezy to me. Sorry.

[eric stasik]

nobody,

the summary isn't the important part here. it's the claims.

the claim recites "A method for assigning URL's.."

this is precisely what network solutions does: they assign URL's based on requests from the public.

it may be that they are not direct infringers, but it appears there is a colourable argument that they could be contributory infringers. (a contributory infringer is someone who does not infringe all of the claim, but through their contribution enables the infringement.)

mr. ivey's remarks are (as usual) right on the money. 2 claims in a patent is, for me, often a strong indication that it's a weak patent, poorly drafted and prosecuted. that the inventors (one of whom appears to be a patent attorney) did not add other species of claims raises a big red flag. especially for a patent such as this filed in 1999. you would have to be living in a box under the motorway to not imagine there could be loads of prior art which could be used to invalite two relatively broad claims!

mr. auslander, i am sorry i do not share your optimism. your remarks reflect the AIPLA's laisse faire "all is well" attitude.

all is defintely not well. when august professors of law at america's leading law schools are leading this opposition, it cannot be dismissed as the benign exuberance of youth. their writings against patents and copyrights are compelling. in the wee hours of the morning when my brain gets dull, i almost find myself agreeing with them.

the recent directive to amend EU patent laws to explicitly extend patent protection to software was all but defeated as a result of intensive lobbying from the F/OSS community. arlene mccarthy, the UK commissioner who sponsored the directive in the EU parliament remarked that she had never seen such opposition to an EU directive. ever. she apparently took a leave of absence after the debate to regain her sanity.

one does not need to totally remove patents and copyrights in order to be successful in weakening them. a positive public perception, especially in the US where juries decide these things, is vital if the system is going to work. the downloading culture which does not see copyright infringement as wrong also undermines the system of intellectual property protection.

these attitudes must be changed. if it becomes common practice for people to not respect the law, there is little lawyers and judges can do to reverse this.

kind regards,

eric stasik

[Allen R. Sampson]

Many strange and interesting replies, but one missed.

I'm new to this forum, ran across it as I am stuggling to determine a new structure for one or more new corporations to handle IP.  Not a lawyer or patent agent, just someone transitioning into IP creation and marketing.

The point missed - the gentleman has no claim to damages from any internet registrar.  They register individual domain names, not subdomains.  The patent in question (from what has been said, I didn't bother to read through the application) hinges on the matching of a sub domain (subdomain.domain.TopLevel) to an email address (subdomain@domain.TopLevel).  Although one could argue that due diligence may not have been taken by the examiners - there must be some example out there of previous use, the www example was a good possibility - that can be understood as seeking out such examples could be a daunting task and beyond the range of a normal examination.

Where this patent will run into trouble, and the only place they will find any potential traction, is in finding any domain owners who tie a subdomain to an email address in the way specified in the patent.  Frankly, it's not worth the time and effort to track down.  Once they do, it would be simple for an offender to comply - just don't tie a subdomain and email address in this way.

If the patent holder were to try to press for any damages, the patent could probably be easily striken, but the patent holder by then would have lost considerable cash.  He's a nusance, a fool who doesn't understand the system and thinks he can use it to make a quick buck.

Actually, the basic idea had some merit, but not as proposed.  If you have an internet account with an ISP, you probably have an email address of username@domain.toplevel and can probably have a web page that would be accessed as www.domain.toplevel/~username.  Some people may prefer the form username.domain.toplevel for a web page.  That combination would cross the bounds of this patent.

The telling part is the patent holder taking on the domain registrars, where his patent can't have any damages.  This wasn't a plan to improve the net, only to try to make a quick buck by a cheap extortion.  Had any ISP been using this scheme and the holder sued for damages, the ISP would have the oppotunity to prove that it, or another entity, had used such a scheme previous to the filing.

The dependent claim is interesting, though (I finally took the time to look at the claims).  I'm not aware of any registrar doing it, but it would seem to point to an idea to register a domain in order to use it as a registry of services in a particular area.  For example, the law firm of Moe, Larry and Curly P.C. might want to advertise, and receive email, as MLC.Lawyer.Com and MLC@Lawyer.com, lawyer.com being owned by some entity that sells the opportunity (anyone check on the domain holdings of this patent holder?).

Having said that, one of the responses to the geek.com article had a very good prior art example that could be used by anyone running a foul of this joker.  RFC 1034 does mention one previous useage "HOSTMASTER@SRI-NIC.ARPA is represented as a domain name by HOSTMASTER.SRI-NIC.ARPA".

In short, this guy is just wasting his time and money.  Let's let him do that, OK?  It will hopefully result in his staying out of the patent system with his schemes in the future.

In the end, you have to expect to defend your IP at some point.  This is not a game where the issuance of a patent ensures success and fame, rather hard work and the possibility that there may be some financial gain somewhere down the road.  This guy is headed down a different raod.

[M. Arthur Auslander]

Dear M. Samson,
I don't regard this forum as a place to engage in intellectual games, nor even the place to get free legal advice. It is a place for individuals and professionals to get a better outlook on what is happening and what can be done.

[JimIvey]

Dear Mr. Sampson,

For what it's worth, I prefer to avoid impugning motive to participants in the patent system.  I've seen many people file patent applications on things they intend to take to market and to offer as a competitive service, only to fail to obtain financing.  This typically leaves them without any business built around their ideas.  However, the barriers to entry (in the form of patents) still exist.

However you want to see it, there is a fair amount of satisfaction and vindication in seeing an industry grow around your idea -- especially in an arena where you felt you weren't taken seriously.  While you may see these as "schemes," "jokers," and such, it's not typically how these cases start out.  While some notable cases seem laughable and acts of desparation (SCO comes to mind), I believe true "shake-down" strategies are relatively rare

In all fairness, I don't see this particular patent as providing an earth-shattering technical epiphany.  And, I don't know any of the specifics of any attempts to enforce the patent.  There may be a sound and legitimate reason for going after a domain registrar, even if I don't immediately see it myself.

Another 20,000 Turkish lira on the topic....

Regards.

[nobody]

Mr. Sampson's interpretation seems on point to me. It seems like a legal professional doing a simple risk/reward analysis of using the patent system to defend such a patent and then filing the patent.

I wonder how many non-lawyers believe that the infamous one-click patent merits a monopoly at all. It makes a mockery out of real invention.

[JimIvey]

Re "One-click" patent:  Have you read it?  What part of it is a mockery?  Most people who have expressed opinions on that particular patent haven't read it and don't know what it really covers.

Regards.