Here is yet another juicy tidbit from Mark Voorhees Info Law Alert. Re: Compton's multimedia and the bunny rabbit patent being rejected - two down, thousands to go. Greg Aharonian Internet Patent News Service (for subscription info, send 'help' to patents@world.std.com ) (for prior art search services info, send 'prior' to patents@world.std.com ) (for WWW patent searching, try http://sunsite.unc.edu/patents/intropat.html ) ==================== *********************************************************** Information Law Alert* ||||||||| || |||| * a voorhees report * || || || ||* * || || || || * 718-369-0906 * || || ||||||||| * voice * || || || || * 718-369-3250 * || || || || * fax * ||||||||| |||||||| || || voorhees@interport.net *********************************************************** 411 First St., Brooklyn, NY 11215-2507 October 28, 1994 IN THIS ISSUE COMPTON'S NEWMEDIA PATENT REJECTED RSA STANDARD PUT ON HOLD EVERYTHING YOU KNOW ABOUT TRADEMARKS IS RIGHT ON (IF THEY BELONG TO WIRED) Let The Jockeying Begin COPYRIGHT GANG BEGINS TO GANG UP ON ONE ANOTHER IN BATTLE FOR THE FUTURE Critics say: JUSTICE'S ANTITRUST REGS: TOO FAR, TOO FAST BYE, BYE BUNNY Second Software Patent Falls In Reexam Test Case In The Making? DEC SEEKS HOLY GRAIL: AN ALGORITHM PATENT ----- cut here ----- COMPTON'S NEWMEDIA PATENT BITES THE DUST Controversial Software Patent Rejected Again The Compton's NewMedia patent has been rejected a second time by the U.S. Patent and Trademark Office in a reexamination. The patent, perhaps the most controversial issued in recent memory, has provoked a storm of controversy over the past year because it covers basic search and retrieval techniques in a multimedia environment. It could conceivably cover such multimedia products as interactive encyclopedias and other CD-ROM-based reference works. Information Law Alert learned of the rejection at press time. The patent owners, Encyclopaedia Britannica and the Tribune Co., can appeal the rejection to the Board of Patent Appeals and Interferences. The rejection is a solid rebuff of the arguments put forward by the patent owners in their response to the first office action in the reexamination. Williams rejected all 41 claims of the patent in March. In June, the owners submitted a 52-page rebuttal that sought to counter Williams's evidence that other patents and literature had previously disclosed the invention described in the patent. The patent, which issued last year, is an outgrowth of Compton's Multimedia Encyclopedia, one of the first CD-ROM based reference works to gain commercial acceptance. Competitors were worried that Compton's NewMedia, a Tribune Co. subsidiary once owned by Encyclopaedia Britannica, would stifle competition by extracting royalties on all competing products. Patent Commissioner Bruce Lehman responded by ordering a reexamination of the patent. It is unusual for a commissioner to second-guess an examiner's work with a reexam. Lehman has been criticized in some quarters for doing so. But the reexam has helped to spur and shape debate on the controversy regarding software, an area that has only been recognized as patentable in the past decade and a half. The Compton's NewMedia patent will likely be in various forms of litigation for years, unless the owners abandon it. They haven't show any signs of giving up the fight yet, however. ----- cut here ----- BYE, BYE BUNNY Second Software Patent Falls In Reexam The second most controversial software patent of the year hit the wall earlier this month, when the U.S. Patent and Trademark Office rejected its claims in a reexamination. Patent Commissioner Bruce Lehman ordered the reexam on the so-called Energizer Bunny patent, which purported to cover the use of advertisements in software, in May. His decision followed an outcry that the patent could cover screen savers, logos, and other common visual elements of computer screens. The outcry broke after Software Advertising Corp., the owner of the patent, sought royalties from PC Dynamics, maker of a screen saver that displays the Energizer Bunny. Late last year, Lehman also ordered the reexam of the Compton's NewMedia patent, which broadly covers search and retrieval techniques in a multimedia environment. All the claims in that patent were also rejected initially during the reexam. In his rejection of the Energizer Bunny patent, Examiner Alvin Oberly cited several patents and an article in The New York Times as prior art, preexisting literature that describes or anticipates an invention. One of the patents, for example, discloses a video conferencing system in which logos are flashed on a screen. Another patent describes a method to prevent unauthorized photocopying by imposing a watermark image on all copies as they are being produced. PASSING REFERENCE Oberly obliquely referred to the public controversy concerning the patent in his rejection. "Fabris doesn't explicitly state that logos are a form of advertising, but it is inherent that a corporate logo, trademark, etc. constitute (sic) advertising, e.g. the ENERGIZER BUNNY," he wrote. Software Advertising now will have the chance to persuade the examiner that the rejection was a mistake or to modify the claims to overcome the objections. Edward Treska of Knobbe, Martens, Olson & Bear, who represents Software Advertising, did not return a call for comment. As a last step in the reexam, Oberly will issue a final office action after he receives Software Advertising's response. Peter Avritch, president of PC Dynamics, says he was pleased but not surprised by Oberly's initial ruling. He says his business would be in jeopardy if he paid royalties of 5 to 10 percent on all screen-saver products. Ironically, Avritch says, the controversy has helped his company generate leads for new screen-saver products. PC Dynamics is about to roll out a screen saver based on the characters from " Popeye." The lead came indirectly from the publicity Avritch generated in criticizing the Energizer Bunny patent. *************************************************************** Information Law Alert (ISSN-1068-8129) is published 20 times a year by Voorhees Reports, 411 First Street, Brooklyn, NY 11215-2507. Subscription rates: E-mail subscriptions are available for $195 a year. $550 a year for print newsletter. For information, call 718-369-0906 or 800-369-4840, or fax 718-369-3250. E-mail address: voorhees@interport.net On line: Information Law Alert is available electronically to subscribers of NewsNet (800-952-0122); Dialog (800-334-2564); and Dow Jones News Retrieval (800-522-3567). E-mail subscriptions are also available through Counsel Connect (800-952-0122) under the Resources section. Back issues and bundles of stories are available at Marketplace.Com. Gopher to Marketplace.Com or use the URL http://marketplace.com. Copyright 1994 Mark Voorhees. Unauthorized duplication prohibited by law. ***************************************************************