Comment David & Goliath (Score 1) 158
The following is a summary of over three years of patent litigation.
Understanding the Hill '490 Patent
And
The Potential Impact on the Dot Coms
By
Charles E. Hill, CEO
Charles E. Hill & Associates, Inc.
6435 Castleway W. Dr., Suite #141
Indianapolis, IN 46250-1940
(317) 849-9808
Patent #5,528,490 (The Hill '490 Patent)
Patent litigation case (IP97-C-0434-M/S Charles E. Hill & Associates, Inc. vs. CompuServe, Inc.) is beginning its fourth year through the judicial system. The subject of this case is the Hill '490 patent which was filed April 10, 1992 and issued June 18, 1996.
Understanding the Time Relationships
The time line shown below is crucial to understanding how the Hill '490 patent and Web software intertwine.
1. June 12, 1991 - Tim Berners-Lee introduces his www browser at a computer seminar hosted by CERN. It is text only and links to and retrieves external text documents.
2. November 1991 - First production model using the technology of the Hill '490 patent was installed.
3. April 10, 1992 - Hill '490 patent filed.
4. August 18, 1992 - The technology of the Hill '490 patent was evaluated in CompuServe's product development laboratory at Columbus, Ohio and certified as compatible with their communications network.
5. April 1993 - Version 1 of the "Mosaic" browser from NCSA was introduced. This included the integration of text and graphics. There was no updating feature.
6. February 11, 1994 - The W3C introduced the concept of the conditional GET command and the "Last Modified" date that is being used as a revision level for HTTP. This implemented the updating feature.
7. June 18, 1996 - Hill '490 patent issued.
8. March 1997 - Patent infringement complaint filed against CompuServe, Inc.
The technology in the '490 patent was developed as a result of a requirement for distributing data sheets by USEM, a division of Emerson Electric. The unique features of the software were the division of data into subsets of "constant' and "variable" data, the updating of the "constant" data on the client server, the integration of the "constant" and "variable" data at the client server, and the use of a map to define how this integration occurs.
The division of data into subsets of "constant" and "variable" data significantly reduces bandwidth requirements. In the specification of the '490 patent it was estimated that you could expect an 80% reduction. The document "Saving Bandwidth Using the Technology of the Hill '490 Patent and the Resultant Economic Returns to the ISP" describing the network savings that CompuServe is presently benefiting from suggests a savings from 58% to 94% or over $300 million during fiscal 1999 alone. This document is available upon request by calling 1-800-805-6531.
These features are all duplicated in the Web browser and server software. The "constant" data is typically the graphics files (.jpg, .gif) which are stored on the client server. The defining specification for Web software is the HTTP specification. In that specification, there is a command called the "Conditional GET". This command causes the revision level of a graphic file to be checked and if there is no later version, the local stored version is used. The HTML, .asp, or Java Script is downloaded each time. These files cause the variable data, typically text, to be downloaded each time as well. These files also contain the mapping features that control the integration of Web page graphics and text.
As noted from the above time lines, the original browser by Tim Berners-Lee was only capable of downloading text files. This was disclosed at a computer seminar June 12, 1991.
Marc Andreessen and associates at NCSA, and the University of Illinois added graphics and the integration of text and graphics to Tim Berners-Lee's browser in April 1993 and introduced it as "Mosaic".
It was not until February 1994 that the "Conditional GET" command was introduced by the W3C. By adding this feature, the browser software duplicated the steps of claim 1 of the '490 patent.
The Hill '490 patent, although filed in April of 1992 did not issue until June 18, 1996. By that time, Jim Clark had financed the startup of Netscape and Jim Barksdale did a brilliant job of marketing its browser, Navigator. Microsoft then developed their browser after licensing "Mosaic" technology from Spyglass, Inc. which had earlier purchased the licensing rights to "Mosaic" from the University of Illinois and NCSA. Microsoft began dominating the browser market by giving away its "Internet Explorer" with the purchase of its software.
Additional Time Lines of Interest.
1. 1994 - Spyglass purchases licensing rights to "Mosaic" from University of Illinois.
2. 1995 - Microsoft licenses "Mosaic" technology from Spyglass and uses that technology to develop Internet Explorer.
3. 1995 - 1996 - AOL and CompuServe license Microsoft's Internet Explorer and integrate it into their respective software packages.
The above time lines are factual. The Web software came after the Hill '490 patent application.
The Litigation History
During the summer of 1992, CompuServe representatives visited the Hill offices multiple times. There was interest expressed for a joint marketing effort in which CompuServe would provide the network communications and Hill would supply the electronic commerce application software.
During August 1992, CompuServe evaluated Hill's software in their Columbus, Ohio product development laboratory for compatibility with their communications network. Certification was given on August 18, 1992. Shortly thereafter, all communications were terminated.
Starting in late 1994, IBM showed an interest in the Hill technology. Several phone discussions, a demonstration during December 1994 and another demonstration during August 1995 took place. Although the IBM representative expressed a genuine interest in the technology during the August 1995 demonstration all communications were terminated shortly thereafter.
Communications with IBM and CompuServe were re-established during the period when the Hill patent was being issued. CompuServe management refused to meet for any discussions. The patent litigation complaint against CompuServe was filed during March 1997.
Discussions with IBM were eventually assigned to its legal staff. These communications ceased in September 1997 due to the litigation with CompuServe.
CompuServe filed a counter suit charging that the Hill suit was frivolous. Motions have been filed to dismiss their counter suit.
Since the June 18, 1996 issue date of the Hill '490 patent, four additional patents (#5,754,864; 5,761,649; 5,970,471; 6,029,142) have issued with others awarded and pending. Hundreds of cited references submitted by CompuServe and IBM as prior art have been reviewed by multiple patent examiners during the prosecution of these patents with none acknowledged as prior art. These additional patents add claims in the area of software piracy, updating, image overlays and data requests.
The Markman Hearing was held on January 6-7, 1999. The purpose of the Markman is to allow the Judge to determine the meaning of specific words used in the patent claims. . CompuServe's 400+ slide presentation was not allowed to be admitted as evidence during the hearing. CompuServe also failed to have an expert witness testify. Yet, CompuServe stated to the press that they won the Markman completely. Mr. Hill contends that the issues were mainly decided in his favor as a result of the preponderance of admissible evidence offered by his attorneys and his expert witness. The judge's ruling is contained in a 56-page document that is available from the court.
CompuServe has filed summary judgment and other motions, which has delayed the trial date for approximately two years. Delays of this type are common when large companies are litigating with small companies. Hill believes CompuServe has virtually no chance of winning any of its motions.
Settlement conferences ordered by the Court, were held on November 10, 1999 and March 23, 2000. The settlement discussions broke down when CompuServe was unwilling to offer damages commensurate with the network savings it is believed they are presently benefiting from as a result of the technology of the '490 patent.
The Court has recently reset the trial date from April 10, 2000 to January 22, 2001. The Court's official reason for the delay was due to various open motions. However, Hill believes the excessive delay was punishment for his refusal to accept CompuServe's offer at the March23rd settlement conference.
Information on this litigation can all be found on the Court site listed below.
http://www.insd.uscourts.gov/caseinfo.
Other Observations
1. AOL paid over $10 billion for Netscape and its technology. Netscape's technology came from NCSA and "Mosaic" which is believed to be infringing on the claims of the '490 patent and follows in time the '490 patent.
2. AOL subsequently sold and/or bartered the Netscape technology to Sun Microsystems.
3. According to press reports, Mr. Andreessen received options from AOL worth over $100 million when they purchased Netscape.
4. AOL has never reported this litigation in any of its SEC filings. In their January 14, 2000 8-K filing they specifically state that neither they nor any of their subsidiaries have any pending litigation that could materially affect their business.
5. CompuServe did not report in their original IPO prospectus that this potential patent infringement existed although Hill's legal counsel had advised them of it.
6. It is questionable whether H&R Block advised WorldCom of this litigation when they sold CompuServe to them for $1.2 billion.
7. WorldCom may not have advised AOL of any of this litigation when they swapped assets in February of 1998.
8. As reported by their respective SEC filings, AOL and CompuServe both integrated Microsoft's Internet Explorer into their respective client software.
Many leading companies such as AOL, IBM and Microsoft have been advised of the '490 patent and the possible infringement of their applications. Ultimately, the court will decide this land mark case and its potential impact on e-commerce activities.
C.E. Hill, March 31, 2000
Link to sites with information on Hill patents:
http://lpf.ai.mit.edu/Patents/ipns/ipns-19990421 .txt
http://www.cs.arizona.edu/people/collberg/Teachi ng/620/1999/papter.html
http://www.udayton.edu/~lawtech/cle99-hayes.htm
Understanding the Hill '490 Patent
And
The Potential Impact on the Dot Coms
By
Charles E. Hill, CEO
Charles E. Hill & Associates, Inc.
6435 Castleway W. Dr., Suite #141
Indianapolis, IN 46250-1940
(317) 849-9808
Patent #5,528,490 (The Hill '490 Patent)
Patent litigation case (IP97-C-0434-M/S Charles E. Hill & Associates, Inc. vs. CompuServe, Inc.) is beginning its fourth year through the judicial system. The subject of this case is the Hill '490 patent which was filed April 10, 1992 and issued June 18, 1996.
Understanding the Time Relationships
The time line shown below is crucial to understanding how the Hill '490 patent and Web software intertwine.
1. June 12, 1991 - Tim Berners-Lee introduces his www browser at a computer seminar hosted by CERN. It is text only and links to and retrieves external text documents.
2. November 1991 - First production model using the technology of the Hill '490 patent was installed.
3. April 10, 1992 - Hill '490 patent filed.
4. August 18, 1992 - The technology of the Hill '490 patent was evaluated in CompuServe's product development laboratory at Columbus, Ohio and certified as compatible with their communications network.
5. April 1993 - Version 1 of the "Mosaic" browser from NCSA was introduced. This included the integration of text and graphics. There was no updating feature.
6. February 11, 1994 - The W3C introduced the concept of the conditional GET command and the "Last Modified" date that is being used as a revision level for HTTP. This implemented the updating feature.
7. June 18, 1996 - Hill '490 patent issued.
8. March 1997 - Patent infringement complaint filed against CompuServe, Inc.
The technology in the '490 patent was developed as a result of a requirement for distributing data sheets by USEM, a division of Emerson Electric. The unique features of the software were the division of data into subsets of "constant' and "variable" data, the updating of the "constant" data on the client server, the integration of the "constant" and "variable" data at the client server, and the use of a map to define how this integration occurs.
The division of data into subsets of "constant" and "variable" data significantly reduces bandwidth requirements. In the specification of the '490 patent it was estimated that you could expect an 80% reduction. The document "Saving Bandwidth Using the Technology of the Hill '490 Patent and the Resultant Economic Returns to the ISP" describing the network savings that CompuServe is presently benefiting from suggests a savings from 58% to 94% or over $300 million during fiscal 1999 alone. This document is available upon request by calling 1-800-805-6531.
These features are all duplicated in the Web browser and server software. The "constant" data is typically the graphics files (.jpg,
As noted from the above time lines, the original browser by Tim Berners-Lee was only capable of downloading text files. This was disclosed at a computer seminar June 12, 1991.
Marc Andreessen and associates at NCSA, and the University of Illinois added graphics and the integration of text and graphics to Tim Berners-Lee's browser in April 1993 and introduced it as "Mosaic".
It was not until February 1994 that the "Conditional GET" command was introduced by the W3C. By adding this feature, the browser software duplicated the steps of claim 1 of the '490 patent.
The Hill '490 patent, although filed in April of 1992 did not issue until June 18, 1996. By that time, Jim Clark had financed the startup of Netscape and Jim Barksdale did a brilliant job of marketing its browser, Navigator. Microsoft then developed their browser after licensing "Mosaic" technology from Spyglass, Inc. which had earlier purchased the licensing rights to "Mosaic" from the University of Illinois and NCSA. Microsoft began dominating the browser market by giving away its "Internet Explorer" with the purchase of its software.
Additional Time Lines of Interest.
1. 1994 - Spyglass purchases licensing rights to "Mosaic" from University of Illinois.
2. 1995 - Microsoft licenses "Mosaic" technology from Spyglass and uses that technology to develop Internet Explorer.
3. 1995 - 1996 - AOL and CompuServe license Microsoft's Internet Explorer and integrate it into their respective software packages.
The above time lines are factual. The Web software came after the Hill '490 patent application.
The Litigation History
During the summer of 1992, CompuServe representatives visited the Hill offices multiple times. There was interest expressed for a joint marketing effort in which CompuServe would provide the network communications and Hill would supply the electronic commerce application software.
During August 1992, CompuServe evaluated Hill's software in their Columbus, Ohio product development laboratory for compatibility with their communications network. Certification was given on August 18, 1992. Shortly thereafter, all communications were terminated.
Starting in late 1994, IBM showed an interest in the Hill technology. Several phone discussions, a demonstration during December 1994 and another demonstration during August 1995 took place. Although the IBM representative expressed a genuine interest in the technology during the August 1995 demonstration all communications were terminated shortly thereafter.
Communications with IBM and CompuServe were re-established during the period when the Hill patent was being issued. CompuServe management refused to meet for any discussions. The patent litigation complaint against CompuServe was filed during March 1997.
Discussions with IBM were eventually assigned to its legal staff. These communications ceased in September 1997 due to the litigation with CompuServe.
CompuServe filed a counter suit charging that the Hill suit was frivolous. Motions have been filed to dismiss their counter suit.
Since the June 18, 1996 issue date of the Hill '490 patent, four additional patents (#5,754,864; 5,761,649; 5,970,471; 6,029,142) have issued with others awarded and pending. Hundreds of cited references submitted by CompuServe and IBM as prior art have been reviewed by multiple patent examiners during the prosecution of these patents with none acknowledged as prior art. These additional patents add claims in the area of software piracy, updating, image overlays and data requests.
The Markman Hearing was held on January 6-7, 1999. The purpose of the Markman is to allow the Judge to determine the meaning of specific words used in the patent claims. . CompuServe's 400+ slide presentation was not allowed to be admitted as evidence during the hearing. CompuServe also failed to have an expert witness testify. Yet, CompuServe stated to the press that they won the Markman completely. Mr. Hill contends that the issues were mainly decided in his favor as a result of the preponderance of admissible evidence offered by his attorneys and his expert witness. The judge's ruling is contained in a 56-page document that is available from the court.
CompuServe has filed summary judgment and other motions, which has delayed the trial date for approximately two years. Delays of this type are common when large companies are litigating with small companies. Hill believes CompuServe has virtually no chance of winning any of its motions.
Settlement conferences ordered by the Court, were held on November 10, 1999 and March 23, 2000. The settlement discussions broke down when CompuServe was unwilling to offer damages commensurate with the network savings it is believed they are presently benefiting from as a result of the technology of the '490 patent.
The Court has recently reset the trial date from April 10, 2000 to January 22, 2001. The Court's official reason for the delay was due to various open motions. However, Hill believes the excessive delay was punishment for his refusal to accept CompuServe's offer at the March23rd settlement conference.
Information on this litigation can all be found on the Court site listed below.
http://www.insd.uscourts.gov/caseinfo.
Other Observations
1. AOL paid over $10 billion for Netscape and its technology. Netscape's technology came from NCSA and "Mosaic" which is believed to be infringing on the claims of the '490 patent and follows in time the '490 patent.
2. AOL subsequently sold and/or bartered the Netscape technology to Sun Microsystems.
3. According to press reports, Mr. Andreessen received options from AOL worth over $100 million when they purchased Netscape.
4. AOL has never reported this litigation in any of its SEC filings. In their January 14, 2000 8-K filing they specifically state that neither they nor any of their subsidiaries have any pending litigation that could materially affect their business.
5. CompuServe did not report in their original IPO prospectus that this potential patent infringement existed although Hill's legal counsel had advised them of it.
6. It is questionable whether H&R Block advised WorldCom of this litigation when they sold CompuServe to them for $1.2 billion.
7. WorldCom may not have advised AOL of any of this litigation when they swapped assets in February of 1998.
8. As reported by their respective SEC filings, AOL and CompuServe both integrated Microsoft's Internet Explorer into their respective client software.
Many leading companies such as AOL, IBM and Microsoft have been advised of the '490 patent and the possible infringement of their applications. Ultimately, the court will decide this land mark case and its potential impact on e-commerce activities.
C.E. Hill, March 31, 2000
Link to sites with information on Hill patents:
http://lpf.ai.mit.edu/Patents/ipns/ipns-1999042
http://www.cs.arizona.edu/people/collberg/Teach
http://www.udayton.edu/~lawtech/cle99-hayes.htm
