Legal Issues

by Mike Masnick


Filed Under:
gph, jpeg patent, patent

Companies:
gph



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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  1. identicon
    Andrew D. Todd, 1 May 2008 @ 5:31pm

    The Patent Office Could Get There First.

    Suppose that the Patent Office was to give absolute priority to processing matters pertaining to patents in which the Federal Courts had taken an interest. The time the Patent Office actually spends on a patent action is on the order of hours. The customary delay is nearly all in the backlog. Even allowing for unavoidable delays, it ought to be possible to process priority patent actions in days or weeks, by putting them at the front of the waiting line. Only a tiny fraction of patents become involved in litigation, and processing those patents first would not materially slow down the other work. There are only several hundred federal judges, and they have many other things besides patents to deal with. There are a vastly larger number of patent examiners. The Patent Office ought to be able to outrun the Federal Courts, and reach its definitive position before the Federal Courts have time to do anything. A Federal Judge has to give priority to more serious matters, such as Habeas Corpus in federal criminal cases involving serious prison time (eg. alleged drug dealing). It should not be very hard for the Patent Office to get ahead and stay ahead. An efficient government organization manages its affairs so as to give priority to cases involving external review, so as not to be caught holding untenable positions in public.

    There are certain types of patents which have a very low likelihood of ever being commercialized, eg. home machines for compacting or recycling garbage (*). The patent office is likely to be flooded with applications for patents covering such machines. Inventing such a machine is the normal husbandly reaction to being asked to take out the trash, and there are literally millions of possible inventors. Some kind of reasonable allocation of priorities would mean that patent applications got processed with a speed commensurate with the likelihood of their becoming the foci of legal disputes.

    (*) Garbage is... well... garbage. Low value is inherent in the definition, and therefore a machine handling garbage would have to handle hundreds of tons of garbage to have any chance of showing a profit.

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