On Wednesday, the Public Patent Foundation filed a formal request with the U.S. Patent and Trademark Office to revoke a data compression patent that Forgent Networks Inc. is asserting against the JPEG image standard.
In recent years, JPEG has become the default file format for photo-quality images. It is commonly used in publishing, graphics and digital photography
Several years ago, Forgent acquired a data compression patent, U.S. Patent No. 4,698,672, with its purchase of CLI (Compression Labs Inc.) In the past eighteen months, Forgent began aggressively suing companies that sell or offer services using JPEG on the grounds that the businesses are infringing its patent.
Some of these companies, such as Sun Microsystems Inc. and Google Inc., have counter-sued Forgent on the theory that CLI defrauded the PTO (Patent and Trademark Office). These companies claim that CLI had lied to the PRO about their being prior art and patents to its own.
Now, PUBPAT (Public Patent Foundation) has joined the fight. PUBPAT has submitted previously unseen prior art showing, it claims, that the patent, which was issued in 1987, was not new and should be revoked.
"CLI is using the 672 patent to harass anyone that implements the [JPEG] format," states PUBPATs Request for Ex Parte Reexamination of U.S. Patent No. 4,698,672. "CLIs aggressive assertion of the 672 patent is causing substantial public harm by threatening this international standard on which the public relies."
"Forgent Networks is a classic example of the new and rapidly growing trend of patent holders that do nothing more than sue people who make products or services available to the public," said Dan Ravicher, PUBPATs executive director.
"Unfortunately, the patent system allows for such perverse behavior because it cares more about patent holders than it does the public," concluded Ravicher.
Will PUBBAT be successful in this attempt?
Charles Chad Wieland III, an attorney at the national law firm of Buchanan Ingersoll PC, says that it may. "It could (knock out the patent), particularly because the U.S. Patent and Trademark Office applies a lower standard than the courts in determining whether the claims should be sustained
Still, "Third-party requests for reexamination of patents are not that common because the process heavily favors the patent holder, and the third-party requester (PUBPAT in this case) has a very limited role." Indeed, "Ultimately, Forgent Networks patent could reemerge from the PTO stronger than it was before because a court would be hard pressed to second guess the PTOs determination of patentability over the same grounds covered in the reexamination process," said Wieland.
"Historically, only around one-third of patents are knocked out by reexamination requests, although improvements in the process have made it more effective in recent years," noted Steve Maebius, a partner at the Washington, D.C., office of the law firm Foley & Lardner.
Whatever the decision, it wont be a quick process—3except by courtroom standards.
"The Patent Office conducts the re-examination proceedings with special dispatch. However, it still may take over a year for the Patent Office to decide on patentability," said Robert C. Bertin, a partner with Swidler Berlin LLP.
That could only be the start of the matter though.
"If an Examiner at the Patent Office finally determines that there is no patentable subject matter in view of the prior patent submitted by PUBPAT, Forgent may appeal the result to the Board of Patent Appeals and may appeal that result to either the Court of Appeals for the Federal Circuit or to the U.S. District Court for the District of Columbia."