Infamous Niro JPEG Patent Smacked Down Again

from the and-again-and-again-and-again dept

Lawyer Raymond Niro, for whom the term "patent troll" was apparently first coined, has been known to use the fact that he represents a company called Global Patent Holdings (GPH) to his advantage. GPH owns patent 5,253,341, but looking at it there won't do much good. You see, Niro and others claimed that the patent covered pretty much anyone running a web server, leading to quite a few legal battles, including one against a guy, Greg Aharonian, who called it a "bad patent." For claiming that, he got sued for patent infringement. In fighting the patent, it was re-examined, and all 16 of its claims were rejected... but a 17th claim was added and allowed to stand.

Since then the patent has been asserted against a wide range of organizations, including some resort in Florida and the Green Bay Packers. Niro appears to claim that any site using a JPEG image violates the patent. Not only that, but in cases where the patent has been asserted, Niro has been known to go for something of a sympathy play, by noting that the inventors (or the widow of one inventor) named on the patent are "old and feeble" (yes, they called them feeble) and made almost no money in 2006 (even though the filing was in 2008 -- some noted that their 2007 income was conveniently left out).

With so many cases involving this patent underway, the USPTO agreed to re-examine the one claim (claim 17). And, with that re-exam going on, a judge on one of the cases put the case on hold until the re-exam is done. While GPH protested, claiming that the patent had already been re-examined (and that the re-exam process took too long), the judge pointed out that there's only one claim left (so it should be faster) and that this particular claim had never been re-examined, since it was added during the last re-exam.

Last summer, the USPTO gave an initial (non-final) rejection of the patent, in rather strong language. Not surprisingly, GPH/Niro have pushed back, but in early June the USPTO appears to have smacked down the patent all over again in this rather lengthy ruling, which you can see below:

90008972 The smackdown here is rather complete. On top of reaffirming the 19 reasons for rejecting the remaining claim, the examiner added more reasons to reject it for being obvious and anticipated by other inventions. Also, it appears that GPH/Niro tried to do something similar to last time, in that they also submitted some new claims to be added (claims 18 - 21), but the examiner smacked those down as well, as attempts to "broaden the scope" of the patent. On top of that, the rejects scolds GPH/Niro for mischaracterizing what the patent office has said and even using a "biased" expert witness with "flip-flopping declarations."

This is, still, a non-final rejections, but it doesn't look like GPH/Niro has been able to make up any ground at all on this particular fight, and, in fact, seems to be getting pushed further and further back with each try. This particular patent expires in March of 2011 anyway, so unless Niro is able to pull a proverbial rabbit out of the hat to convince the USPTO that this patent is vaild, it's not looking very good.

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JPEG Patent's Single Claim Rejected (And Smacked Down For Good Measure)

from the a-good-first-step dept

We've been covering the ongoing saga of an old patent we've referred to as the "JPEG Patent." This actually isn't the first patent we've called the JPEG Patent, because multiple people claimed to hold patents over the technology that goes into a JPEG image. But, this one was rather special. The patent had been used, repeatedly, by lawyer Ray Niro, against a wide range of opponents, including a patent system critic. The end result was a drawn out review process where all of the original claims were rejected, but a single new claim was added to the patent, which Niro insisted covered JPEGs on a website.

Earlier this year, the Patent Office agreed to re-examine that claim. On top of that, a judge overseeing one of the lawsuits involving the patent decided to put the suit on hold pending the outcome of the re-exam. Of course, the re-exam will take some time, but the initial re-exam came out recently and it does not look good for this patent:

The one remaining claim was rejected on 19 different grounds, and then the examiner went on for over 40 pages, explaining in great detail, why the claim (and, thus, the entire patent) were not valid. Kinda makes you wonder why it was approved in the first place, but that's a different discussion for a different day. This is, of course, just the initial re-exam. Niro gets to respond, but given the amount of detail that goes into rejecting a single claim, he's got quite an uphill battle.

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Owner Of Infamous JPEG Patent Tries To Line Jump The Re-Exam Process

from the shot-down-by-the-uspto dept

You may recall the infamous "JPEG patent" we've talked about recently. It's the one that patent attorney Ray Niro, about whom the phrase "patent troll" was initially coined, has used to sue all sorts of critics or companies he doesn't appear to like. The history of the patent in question is incredibly questionable. It went through a seven year re-exam once before, where all the claims were rejected. However, a single new claim was allowed instead, which is the basis of all of these lawsuits. Back in March, however, the Patent Office agreed to re-examine that one claim, noting that the earlier re-exam didn't count, because this claim was new and was merely "examined" rather than "re-examined."

With that re-exam going on, a judge put the cases involving that patent on hold until the re-exam was complete. So what did the patent holder do? It tried to convince the Patent Office to allow it to completely jump the line, passing a bunch of other patents that were being re-examined. Luckily, the USPTO turned down the request, noting that the circumstances involving this patent don't seem all that different than the circumstances facing many of the patents it's reviewing.

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Judge Puts JPEG Patent On Ice

from the ray-niro's-gotta-wait dept

The infamous and questionable JPEG patent held by Global Patent Holdings (GPH) and used to threaten just about anyone online (including the Green Bay Packers, CDW, a resort in Florida and others) who happened to have a JPEG on their website has been put on hold for a while. While the folks behind it somehow got Forbes to write a puff piece making it sound like the patent holder was the victim, if you look at the details, it was clear that this was an abuse of the patent system. It was a questionable patent from the beginning, and an earlier review of the patent had every claim thrown out. However, during that process, the patent holder tried adding a ton of other claims -- one of which the USPTO actually allowed to go through. It's that single remaining claim that's being used to sue lots of folks. However, with the USPTO recently agreeing to re-examine that one claim, those being sued have asked the court to put all of the cases on hold until the re-exam is done. As we've pointed out, all too often, judges refuse to wait for the Patent Office to re-examine a patent -- which is a big problem, since so many re-exams result in rejected claims.

However, that's not the case here. Last week, the judge ruled that it made sense to stay the case until the re-exam was complete. GPH protested this move, noting that the patent had already been re-examined before, and that process took many years during which GPH couldn't enforce the patent. However, the court reasonably responded on a few different points. First, it noted that while the length of the re-exam last time was quite long, with only one claim it shouldn't take as long this time. Second, it pointed out that while it's true the patent was re-examined once before, since this claim is a new claim, it was not re-examined -- only examined. Finally, and most importantly, the court noted that if the courts had not waited, a bad decision likely would have resulted, as they would have had to assume the later rejected claims were valid.

"a significant amount of time and effort in claim construction and other litigation would have been wasted if we had forged ahead without the benefit of the PTO’s examination (and subsequent rejection) of those claims."

This should, effectively, keep GPH from filing any more suits on this patent until the USPTO has a chance to review the remaining claim. While other lawsuits can be filed, a quick pointer to this ruling should hopefully keep those cases from going anywhere until the USPTO has reviewed the patent. Oh, and by the way, the judge appears to not have been even remotely swayed by the totally unrelated fact that the original inventors of the patent were old and feeble, which GPH had used in trying to get a sympathy vote. It was so inconsequential the judge doesn't even mention it in the ruling.

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Forbes Paints JPEG Patent Holder As A Victim

from the oh-those-poor-patent-attorneys dept

You may recall the highly questionable "JPEG patent" that was used to threaten the Troll Tracker a few months ago. It's a patent that's been in dispute for quite some time, and has been used by its holder against a random assortment of companies. While every claim in the patent, but one, has been rejected, it's still being used to go after a variety of companies that display any JPEG images on their websites. Luckily, the USPTO has agreed to re-examine the patent yet again, but that isn't halting the various lawsuits already in progress -- which include a rather ridiculous ploy of going for the sympathy vote by playing up how the original inventors are old and "feeble."

Forbes is now running an article about the history of this patent, though, oddly, they seem to take it at face value that the patent is obviously valid and that everyone who has a JPEG image should pay up. In fact, the article suggests that the patent holder (a patent attorney who got the rights from the "old and feeble" inventors) may be cheated out of the money he's owed by all these unfortunate re-examinations. Forbes doesn't seem to have any problem with someone who is doing absolutely nothing productive, yet can get a steady stream of money for a patent that really has nothing to do with JPEG images, but was merely applied to JPEGs after the fact. And, of course, Forbes seems to ignore that this is hardly the only such case. Remember, it was just a few years ago that another company, Forgent, claimed it had the patents on JPEG images and everyone owed it money. There's a serious problem here, and Forbes coverage, portraying the patent attorney who has the rights to this patent as a victim is doing a real disservice to those who are actually trying to innovate.

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Patent Office Agrees To Review Infamous JPEG Patent

from the well,-that's-good dept

Last month, we noted that there was some effort being made to get the Patent Office to do a re-exam of a patent that attorney Ray Niro had been using to go after any site that had a JPEG image. While the patent itself had been re-examed before, one claim had been left intact, which Niro has said covers anyone using JPEG compression. It appears that the effort to get the USPTO to look into the patent once again has succeeded, though it's a long and rather involved process that won't come to fruition for quite a long time. The request includes a long list of prior art on that one particular claim, which the Patent Office admits it did not look at earlier and that raise substantial questions about the patentability of the remaining claim in the patent. This is rather good news.

On a side note, we first came across the story of this patent thanks to the then-anonymous Patent Troll Tracker blog. A few weeks back, the author of that blog revealed himself (after being told anonymously that the news was about to leak in an unflattering manner) as a lawyer working on IP issues at Cisco. It's too bad that he felt the need to reveal himself, but it's even worse that he has since taken down the blog entirely. It had a lot of excellent background information, which is all gone now, and the lack of updates is a real loss. It was the only source that was providing insight into some of the shadier activities of certain patent holders and patent attorneys. It's a world that needed more light shined upon, not less. It's a true shame that it's been lost to the world, much to the detriment of those trying to show how the patent system is being regularly abused.

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Will Infamous JPEG Patent Get A Re-Exam?

from the about-time dept

We've already talked about how Ray Niro, a well-known patent attorney, has been filing lawsuits over a patent he claims covers any website with a JPEG image. He's been known to particularly target his critics. It appears that all of the attention this patent has generated, has resulted in at least one party filing with the Patent Office to request a re-exam of the patent. While the patent has already gone through a re-exam in the past, and only this one claim survived, it would be nice to get it completely rejected.

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