Patent Office Has Problems With Infamous JPEG Patent

from the oh,-look-at-that dept

One of the more infamous patent problem situations has been Forgent's claim with a patent that they say covers JPEG image compression. This was a perfect example of a company that clearly had done nothing to help bring about JPEG image compression. The company had found a random patent they had bought from another company, and then retroactively figured it applied to JPEGs. Even the company admits that this patent was a lucky "lottery ticket" to riches -- which is not what the patent system is supposed to encourage at all. Still that didn't stop them from going around suing companies and pressuring others to pay for a license they probably didn't need. Last year, a group found some prior art on the patent, and convinced the USPTO to review it. Today comes the news that the patent office has done an initial rejection of some of the broad claims at the heart of the patent. Forgent still gets the chance to respond, and this process is far from over. However, the interesting part is that the examiners believe the original patent filers knew of the specific prior art, and did not disclose it to the USPTO as required. It's yet another argument for having a better system for helping the USPTO understand the prior art and obviousness of a patent before the patent has been issued and can be used to divert money from actual research and innovation to legal fights.


Reader Comments (rss)

(Flattened / Threaded)

  1.  
    identicon
    Ben, May 26th, 2006 @ 12:24pm

    hmmm

    Isn't there a law in place that makes it so you can't sue if the company creating a product has been doing so for a certain period of time. If i've been making software using JPEG imaging tech for 3 years and they haven't sued me yet should i be off the hook?

     

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  2.  
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    Iron Chef, May 26th, 2006 @ 12:32pm

    I agree with you, Mike...

    Patents are not Lucky Lottery Tickets, and shouldn't be seen as such. Once upon a time, Patents allowed individuals and small businesses to stand on their two feet and take on companies for stealing their ideas. Now, companies are in the business of amassing large patent portfolios with their sole purpose of suing individuals, and smaller companies, the system is turned upside down from what I believe was it's original intent.

    Granted, Original art is an important piece to the entire patent process... But to own an idea that would eventually be invented anyway for the sole purpose of suing, is not what I believe congress had in mind when they created the USPTO.

    Just a thought, but maybe included in the application for a patent, the USPTO should take into consideration the person/company's ability to implement said idea.

    Companies like IBM who dedicate an entire business unit, or touting having a huge IP portfolio should probably do something with it, or pass the IP off to those who can actually make use of the IP.

    http://www.ibm.com/ibm/licensing/patents/portfolio.shtml
    http://att.sbc.com/gen/corporate-ci tizenship?pid=5882&phase=check

     

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  3.  
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    Sean, May 26th, 2006 @ 12:33pm

    Who Says I Had to Invent It?

    I like your coverage of patent issues on this site, but you always point out that "a company that clearly had done nothing to help bring about..." To which I say, "so?".

    If I invent something, and sell the patent to someone, then why should they be faulted for not having been the ones to invent the product?

    The same goes if someone else did all the hard work, and I bought the patent from them. Why does that make me a bad guy?

    Why would Forgent be bad guys for buying a patent from the people that *did* invent the product?

     

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  4.  
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    anonymous coward, May 26th, 2006 @ 12:36pm

    couldn't companies that paid now sue the patent holder for fraud, if they knowingly witheld prior art?

     

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  5.  
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    Mike (profile), May 26th, 2006 @ 12:43pm

    Re: Who Says I Had to Invent It?

    Sean, you're talking about a different situation. I'm not saying that whoever buys a patent shouldn't be able to use it. I'm saying that this industry developed entirely *independently* of this particular patent. It was only after the whole industry had developed that Forgent retroactively decided the patent must apply to JPEGs. That's the problem. The patent didn't put in place any incentives to create JPEGs because it wasn't noticed until way after.

    So the complaint is that the patent was bought, but that it was applied broadly retroactively on those who actually did innovate.

     

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  6.  
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    Ben McNelly, May 26th, 2006 @ 12:47pm

    Ah...

    This kind of stuff makes me laugh and cry at the same time..

    -> Some interesting news about what M$ is doing ovet the whole JPEG thing...

     

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  7.  
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    Rocket Scientist, May 26th, 2006 @ 12:55pm

    Ah the smell of a non problem...

    Just another example of the patent office working as it should, like the well oiled machine that it is - contrary to the whining of chicken little.

    If prior art exists, it exists, and should be brought to the forefront by interested parties. Sorry Mike we don't need a Blue Ribbon panel to investigate every patent application that is filed. If the patent was obtained based on art that was withheld by the applicant the patent can be invalidated. I hope Forgent kept their receipt...

    Long before any meaningful resources can be "extorted" the prospective strength of a patent can be easily determined - like this situation proves.

    Note to chicken little, er I mean Mike: the sky is NOT falling...

     

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  8.  
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    Ben, May 26th, 2006 @ 1:04pm

    Re: Ah the smell of a non problem...

    Umm... Mike's right, some 3rd party had to dig up the prior art, not the USPTO, and that 3rd party had to convince the USPTO to review the patent. apposed to the USPTO observing a companying abusing a patent that never should have been granted in the first place.

     

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  9.  
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    Mike (profile), May 26th, 2006 @ 1:07pm

    Re: Ah the smell of a non problem...

    Just another example of the patent office working as it should, like the well oiled machine that it is - contrary to the whining of chicken little.

    Well oiled machined, huh?

    I'm sure the companies that have paid over $100 million over the past 19 years since the patent was first granted feel that the system is working just great for them, don't they?

    That's $100 million that could have gone to research, but instead went into the pockets of a company that did nothing actually related to the industry and hold a patent that quite likely will be shown to be invalid.

    Well-oiled? I don't think so.

     

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  10.  
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    Rocket Scientist, May 26th, 2006 @ 1:09pm

    I'm with Sean - so what?

    Your right Sean, so what. Its a simple property rights transaction. But Mike doesn't see it that way. He doesn't understand how patents are property rights. He probably lives in a commune.

    The answer is that this site is hostile to any kind of patents or bold assertions of property rights. They think anyone who makes a product should have the right to sell it regardless of whether it infringes a patent or not. Mike doesn't believe that patents should confer an exclusive right, yet this is often the heart of patent protection.

    These guys are a bunch of "silly" Marxist deconstructionists masquerading as people who might know something. The so-called economic arguments they make, make little or no sense when you pick them apart.

    The best economic argument supporting patent grants arise from Nash equilibrium analysis among the competitors (probably too complex for Mike).

     

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  11.  
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    John Joda, May 26th, 2006 @ 1:10pm

    Poor guy who invented the wheel

    People are always taking credit for inventing rather than innovating. We are lucky that this system did not exist when people started making and using tools.

    I can just see the cavemen lawyers come along with a grunt to let someone know that they may not use a rock to break open a nut, because their client thought of it first.

    Maybe there are no inventors, only innovators.

     

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  12.  
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    Rocket Scientist, May 26th, 2006 @ 1:12pm

    Can fix stupid

    I sure wouldn't pay 100 million for a fraudulently obtained patent. They probably are like you, so ignorant about patents they just paid without even checking it out...

    Anyway if 100 million companies paid $1 each to settle, what's wrong with that? It would have cost the patentee $2 each to sue them. You carry on as if suing on a patent is costless - you moron.

     

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  13.  
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    Rocket Scientist, May 26th, 2006 @ 1:14pm

    We need a better system

    For keeping moron bloggers off the Internet.

     

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  14.  
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    Joe Smith, May 26th, 2006 @ 1:15pm

    Re: Ah the smell of a non problem...

    Long before any meaningful resources can be "extorted" the prospective strength of a patent can be easily determined - like this situation proves.

    NTP "extorted" $612 Million from RIM, with the knowing assistance of the courts, even as the Patent office was invalidating the patents. Maybe you don't consider 612 million dollars to be meaningful resources?

     

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  15.  
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    Ben, May 26th, 2006 @ 1:16pm

    Re: I'm with Sean - so what?

    what are you smoking? The patent owners in this case did absolutely NOTHING to help make JPEG popular. why should the be able to make money off of other peoples work? JPEG was basically open source that no one could claim until this company looked at a patent and saw how they could apply it to JPEG, even tho it wasn't created for JPEG. It would be like if i found a patent that could claim writing information to metal disk using magnets. does that mean that i can now go out and sue everyone who ever made hard drives? even tho i did nothin to support the development and spread of the device?

     

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  16.  
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    Ben, May 26th, 2006 @ 1:18pm

    Re: We need a better system

    But then we'd never get to hear from you again. And that would be down right horrible.

     

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  17.  
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    Rocket Scientist = Fry Cook, May 26th, 2006 @ 1:19pm

    Well Oiled Machine?

    Let me get this straight, Rocket Scientist: you claim that the USPTO's recent initial rejection offsets the fact that Forgent's patent has been enforceable for nearly 19 years, and the fact that they have been able to collect over $100 million in royalties from "infringers" during the past couple of years?

    Woah. Remind me never to get on one of your rockets. You obviously have no concept of equality -- a very fundamental principle in physics and mathematics.

    The Patent system IS BROKEN. And this is GREAT evidence in favor of that thesis. The patent should have never been granted, and it should have been easily invalidated years ago. The USPTO doesn't have the capability to be a watchdog on this kind of abuse, and never will. The whole system needs a massive overhaul.

     

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  18.  
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    Jed, May 26th, 2006 @ 1:30pm

    On Nash Equilibria and elementary Market Economics

    Genius boy Rocket said, "The best economic argument supporting patent grants arise from Nash equilibrium analysis among the competitors (probably too complex for Mike)."

    Unwarranted ad hominem attacks on Mike aside (a sure sign of a weak mind), this post reveals just how little Rocket Scientist knows about the free market.

    And here's what he's missing: free markets don't work in the presence of monopolies. Monopolies, in fact, are the protagonists of free markets. Monopoly power is identical to Marxist centrally planned power. When one entity has monopoly power, they can set prices arbitrarily, set production levels arbitrarily, allocate resources arbitrarily, etc. And no matter how smart that entity is, it can't respond to changing market forces (supply and demand) as quickly as the free market can. It is inherently less efficient. Monopolies decrease overall wealth, consolidate existing wealth into the hands of the few, and punish consumers with less choice, higher prices, and poor service.

    Patents are a government regulated monopoly power. They are handed out by a government beauracrat. They are inefficient, and communistic.

    So from all this, we can clearly see that Rocket Scientist is a closet lover of Marx, Engels, Lenin, Trotsky, and all the rest. He doesn't want markets that compete, he wants monopoly power.

    As for nash equilibria -- he probably doesn't even know what that is. It certainly doesn't apply to the patent system, which is a system that is easily gamed by individual players (such as forgent). There is no nash equilibria in our patent system, no disincentives for cheating.

     

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  19.  
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    Sean, May 26th, 2006 @ 1:40pm

    Re: Re: I'm with Sean - so what?

    "The patent owners in this case did absolutely NOTHING to help make JPEG popular. why should the be able to make money off of other peoples work?"

    Umm.. because the people that *did* do all the work sold them the patent, free and clear.

    I can understand being angry when someone comes along and patents something like right-clicking... something people have been using forever, and some company realizes that no one ever patented the idea, so they patent it and get rich. They had nothing to do with the invention, or idea. That's messed up.

    But when I invent something and sell the patent to someone else, where is the problem in that? And I don't see how it matters if the person had the patent for 10 years, and just now decided to dust it off and start using it, after the product became popular. They have the patent, it's their right.

     

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  20.  
    identicon
    Sean, May 26th, 2006 @ 1:54pm

    Re: Re: Who Says I Had to Invent It?

    "Sean, you're talking about a different situation. I'm not saying that whoever buys a patent shouldn't be able to use it. I'm saying that this industry developed entirely *independently* of this particular patent."

    That may be true, but in my opinion, the tone of the article is "Oh geez, here's another evil company trying to make money off an invention they had nothing to do with."

    And of course it doesn't matter if they had anything to do with it or not, they own the patent, and they bought the patent free and clear.

     

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  21.  
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    Mike (profile), May 26th, 2006 @ 2:02pm

    Re: Re: Re: I'm with Sean - so what?

    Umm.. because the people that *did* do all the work sold them the patent, free and clear.

    But that's just the thing. The people who sold them the patent, *didn't* do anything related to JPEGs at all. To go back to that argument makes no sense.

    You're confusing the two issues. One is whether or not patents can be sold. I have no problem with that whatsoever. Sell them all you want.

    The other is whether or not this patent actually had anything to do with the innovation at hand -- and even the patent owners admit that it did not.

     

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  22.  
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    Brad Eleven, May 26th, 2006 @ 2:10pm

    re: Who Says I Had to Invent It?

    Nothing wrong with buying a patent (or any other rights to property, ideas, etc.) from the owner.

    The problem comes when the patent is used for money-making lawsuits. See also THE SCO GROUP.

    It's patently (heh) ludicrous for the ownership of a patent to be referred to as a lucky lottery ticket, even in jest. Now, if they'd called it a Lucky License to Sue ... well, at least they'd have been talking straight.

    I'm sure it's legally OK to do this. I'm saying that it's morally reprehensible, and that the law has major problems.

    But you knew that.

     

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  23.  
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    Search Engines WEB, May 26th, 2006 @ 2:20pm

    What Evidence is there on Prior Knowlege

    However, the interesting part is that the examiners believe the original patent filers knew of the specific prior art, and did not disclose it to the USPTO as required
    _________________________________________

    What specific evidence is there that there was Prior Knowlege on the part of Compression Labs which obtained the patent in 1986?

     

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  24.  
    identicon
    Ben, May 26th, 2006 @ 2:37pm

    Re: Re: Re: I'm with Sean - so what?

    Sean, I agree that, had the company that was originally awarded the patent done anything at all to promote it's development, i wouldn't have a problem with them selling it and Forgent having claim to the rights it entails. You're right that had either company actually put forth an effort in helping the growth of the product then they would be justified in claiming royalties from infringers.

    But you're wrong that the selling company did anything to promote JPEG in any way. Forgent took a patent that they bought, not knowing that it could apply to JPEG, and kept it. Through some reasoning they went back and examined it and discoverd it could apply to the existing JPEG technology, hence the "Lottery Ticket" reference.

     

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  25.  
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    Ben, May 26th, 2006 @ 2:39pm

    Re: Re: Re: Who Says I Had to Invent It?

    That isn't was patents are supposed to be for. They are supposed to insure that the person who came up with the idea that was patented gets compensated for that patent. It not supposed to be a legal Monopoly on that idea.

     

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  26.  
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    Ben, May 26th, 2006 @ 2:47pm

    Re: What Evidence is there on Prior Knowlege

    http://www.groklaw.net/article.php?story=20060526105754880

    This is the referenced page with all the info. All it states is that PUBPAT, the company who discovered and submitted the prior art, says Compression Labs (the original applicant for the patent) had the prior art but with held that information when submitting the patent application.

     

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  27.  
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    Sean, May 26th, 2006 @ 2:50pm

    Re: Re: Re: Re: I'm with Sean - so what?

    "But you're wrong that the selling company did anything to promote JPEG in any way."

    I personally don't see how that matters. It's my right as a patent holder to enforce, or not enforce the patent. If I want to wait 10 years to enforce the patent, after the invention has "blown up", and gained world-wide popularity, that's certainly within my rights.

    If other people want to make the product popular while I hold the patent, that's not my problem.

     

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  28.  
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    Mike (profile), May 26th, 2006 @ 2:54pm

    Re: Re: Re: Re: Re: I'm with Sean - so what?

    If other people want to make the product popular while I hold the patent, that's not my problem.

    It certainly is a problem if the point of the patent system is to promote the development of new and innovative products (which is what the system is supposed to do). In the situation you've described the opposite happens. People don't develop because someone else is sitting on the patent. It makes actual innovation *less* desirable.

    So, you might not have a problem with it, but it does go against the purpose of the patent system -- and that's a problem.

     

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  29.  
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    Sean, May 26th, 2006 @ 3:20pm

    Re: Re: Re: Re: Re: Re: I'm with Sean - so what?

    I don't think we'll ever see eye to eye on this one. I understand your point, and 9 times out 10, I agree with Techdirt's views on the latest patent issues.

    I also agree that the patent they hold probably doesn't cover the technology they claim it does, but I don't think we should be on a witch hunt for everyone who wants to make money using the patents they own. That is also the reason for patents.

     

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  30.  
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    Anonymous of Course, May 26th, 2006 @ 4:16pm

    Re: We need a better system

    I spent most of Thursday searching though patents.
    The company I work for wondered if something I've
    designed would be patentable.

    What I found was interesting. There are patents
    issued within the last four years for things that
    were clearly prior art even in the 1970's. I printed
    some of them we all had a good laugh.

    But it's not funny. The system is broken. Again
    I call for some sort of peer review to fix one of the
    more serious faults.

    It's just too easy to get a patent today. Defending
    it may be another matter. So the system degenerates
    until protecting whoever has the most money becomes
    its function.

     

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  31.  
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    Tim Arview, May 26th, 2006 @ 9:09pm

    What you ought to do is...

    ...patent a better patenting system and license it to the patent office.

     

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  32.  
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    ehrichweiss, May 27th, 2006 @ 2:08pm

    Re: Re: Re: Re: Re: I'm with Sean - so what?

    "I personally don't see how that matters. It's my right as a patent holder to enforce, or not enforce the patent. If I want to wait 10 years to enforce the patent, after the invention has "blown up", and gained world-wide popularity, that's certainly within my rights."

    Actually, no, it's not within your rights to do so. You cannot choose not to enforce a patent only to wait for it to become embedded in the system so you can collect even more. There are clauses specifically against those actions in the patent system already..it's fucked but not THAT fucked.

     

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  33.  
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    anonymous Coward, May 28th, 2006 @ 9:24am

    It's way to easy to get a patent these days. I believe they should of set the patents up to where if a company is bought out, that new company can't go on a suing frenzy to collect on lawsuits just because they now own the patent.

    Somewhere among the patents, is a patent that some fool got for how a person sits in a swing and actually swings in the thing. Something to do with the side to side swinging motion. That tells you just how bad Patents have gotten out of control. The Patent office is too quick to issue a patent without first doing some research, and using some good old fashion common sense. Next is the owner of the patent going after least expecting individuals and company's for nothing else but that crazy Patent that either sounds lame, or everyone is guilty of abusing it for years and years. Which amounts to total BS. If your a company, you know damn well what Patents you own the rights too. If you want to protect them so bad, then you should have so many months to protect your patent. If you don't the patent should be voided, or at least the lawsuits should be thrown out. The is total abuse of a Patent system. Plain and simple. Next they should do is if you do sue, the amount you can collect stops when the first lawsuit is issued. make it public, then small business can remove the crap Patent from their works, and save their butts. After all most of the patent owners go after the little guys, they are more prone to pay than to fight it. Which is what these lawsuits are all about. No one can tell me otherwise I don't care what the rule book says. Read the papers, watch the news. Who has a patent that is twenty or so years old, then as soon as the patent is doing so good along comes someone claiming ownership and crying lawsuit?

     

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  34.  
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    anonymous Coward, May 28th, 2006 @ 9:28pm

    RE: Patent Office Has Problems With Infamous JPEG

    If the Courts have the info that the Patent Office is considering dropping this patent... Then why don't the Courts tell them they are dropping the Law suits until after the Patent Office decides what they will do? Why don't the Businesses use this in Court to have the case against them dropped? Our legal System is crap if they allow this to continue.

     

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  35.  
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    Joe Smith, May 29th, 2006 @ 12:56am

    Re: RE: Patent Office Has Problems With Infamous J

    Then why don't the Courts tell them they are dropping the Law suits until after the Patent Office decides what they will do?

    Because the courts are the problem. This argument was made by RIM in the NTP litigation and the Judge toild them they were wasting his time even making the argument. There should be a good housecleaning on the Judges who hear patent cases.

     

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  36.  
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    Stupididness, May 29th, 2006 @ 5:21am

    Patent the next level of stupidity

    I suggest that TechDirt patent the next level of stupidity. I'm talking hardcore stupid, known affectionately as Stupididness. TechDirt has every right to this patent due to the constant Patent Troll hate speech and their crybabyThis, crybabyThat, my patent system is broken rhetoric. They just don't understand that there are those great "idea men" that happen to be lousy business men. The patent system gives them a chance to earn a living from their God given talent. If anything, the process needs to be simplified. You know, there's a 13 year old girl somewhere right now that just thought of the most unique way to prevent child abductions, but people like you make her think that every idea has already been taken, so she doesn't mention the idea to anyone. This JPEG company did help further the JPEG standard. If it didn't, then simply excise the patented section from the JPEG process and it should work just the same.

    I'm going to get you, TechDirt. I'm going to expose your patent propoganda if it's the last thing I do!

     

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  37.  
    identicon
    Stupididness, May 29th, 2006 @ 5:33am

    Patent = +innovation

    Of course the patent system leads to an increase in innovation. If your product infringes on an existing patent and you can't afford to license it, what do you do? Give up and apply at Subway? No, you think your way around the patent, often times coming up with something better. Microsoft is releasing an alternative to JPEG: the photo member of the Windows Media family. Perhaps they grew tired of the JPEG license fees. Now they've created a better compression system than what JPEG offers (although I'm not sure if they've added transparency and animation capabilities like GIF //fools//). How many keyboards have you had to replace, as your free flowing patent tears splash about while you type? Why not...INNOVATE!...and offer some reasonable suggestions on how to improve the system, one of which is NOT to make it harder to get a patent. I could see shorter protection periods, limits on licensing fees, tax incentives to reduce licenses, free licenses for business that make less than X amount per year. What ideas do you have?

    You know, I've been up for 3 days straight, and I'm extremely hungry, yet my Think still runs laps around your Think.

     

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  38.  
    identicon
    Joe Smith, May 29th, 2006 @ 10:07am

    Re: Patent the next level of stupidity

    This JPEG company did help further the JPEG standard. If it didn't, then simply excise the patented section from the JPEG process and it should work just the same.

    But that assumption goes straight to the heart of the problem. There is no indication that the Forgent patent had any causal connection with the development of the jpeg standard. Heck, it appears that the developers of jpeg did not know of the Forgent patent and Forgent (and the earlier owers of the patent) did not know that there might be some connection between their patent and the jpeg standard. In fact, it appears thatall they have in common is that they both use a Fourier transform to approximate data - not exactly a new idea.

    The patent system is only constitutional so long as it actually, on balance, promotes the useful arts. No one should get a patent for an idea that any competent engineering team would have developed in a short period of time once the problem was posed to them.

     

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  39.  
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    Mike (profile), May 29th, 2006 @ 6:42pm

    Re: Patent = +innovation

    Of course the patent system leads to an increase in innovation. If your product infringes on an existing patent and you can't afford to license it, what do you do? Give up and apply at Subway? No, you think your way around the patent, often times coming up with something better.

    That assumes that innovation is entirely separate from everything else that has come before or will come after, which is simply false.

    Microsoft is releasing an alternative to JPEG: the photo member of the Windows Media family. Perhaps they grew tired of the JPEG license fees. Now they've created a better compression system than what JPEG offers

    Considering that the Forgent patent is extremely broad, it's quite likely they'll consider Microsoft to be infringing as well... highlighting why your solution is anything but.

     

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  40.  
    identicon
    Scott Brison, Nov 29th, 2006 @ 6:34am

    Patent

    The patent system gives them a chance to earn a living from their God given talent. If anything, the process needs to be simplified. You know, there's a 13 year old girl somewhere right now that just thought of the most unique way to prevent child abductions, but people like you make her think that every idea has already been taken, so she doesn't mention the idea to anyone.

     

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