In 1993, a San Diego company called Compton's New Media got a big prize from the federal government in the form of U.S. Patent No. 5,241,671, only to have it quickly snatched back. The patent covered using multimedia on a CD-ROM, and it raised a storm of controversy.
Every big newspaper in California ran stories about Compton's multimedia search patent, which quickly became a poster child for a patent system run amok. The PTO Commissioner took the unheard-of step of initiating a re-examination on his own. (This was before re-exams were cool.)
The controversy ultimately faded, with the patents exiled to the PTO's basement. And yet: the '671 patent, so long out of the public eye, had to be killed again last month in a Texas federal court, after Encyclopaedia Britannica used it to demand money from a quite different, and quite successful, industry: GPS manufacturers. How did this happen? File this story under: patents die hard.
Encyclopedia Britannica was an investor in Compton's New Media, along
with Tribune Co.
"Everything that is now multimedia and computer-based utilizes this invention," Compton's chief executive Stanley Frank told the San Francisco Chronicle in 1993. Another Compton's executive foreshadowed the rhetoric of today's "patent trolls," telling a San Diego reporter: "It's a no brainer that Microsoft will challenge this in court ... Microsoft thinks it invented everything." Compton's attempt to monopolize "a method employed in virtually every significant multimedia program... evoked a mass protest among software developers," wrote the San Jose Mercury News.
Within two months of the patent's issuance, this public outcry was too great. Then-PTO Commissioner Bruce Lehman threw the patent into re-exam, where chastened examiners struck down all 41 claims; the company came back, and its claims were struck down again. But EB chugged away, kept the '671 patent alive through eight years of re-examination, and ultimately prevailed, getting a much-narrowed patent granted in 2001.
(Speaking of infamous patents that somehow still make it out of re-exam, while EB lawyers gave life support to their own patent, the company was hit with a patent lawsuit from fellow Chicagoan Ray Niro and Techsearch LLC, wielding the fabled JPEG patent.)
Only problem is, by 2001, encyclopedias have moved online. So they've got a patent on CD-ROMs, but CD-ROMs are basically dead. Who wants 3% of nothing? Instead, Britannica demanded a cut of sales on car navigation systems produced by manufacturers like Alpine Electronics, Denso Corp., Honda, Toyota, and Garmin International, all sued in 2005 in the Western District of Texas, close to EB's Baker Botts lawyers.
Who came up with the idea of going after GPS manufacturers, I have no idea. Was it Encyclopaedia Britannica executives themselves, looking at dwindling revenues from a fading business model? Was it the Baker Botts lawyers they hired? Or was it the armchair generals at ThinkFire, the patent consultancy that EB hired? I doubt we'll find out. EB forwarded my calls to its Baker Botts lawyers, who refused to talk about the case.
The '671 patent, scorned it its youth, was fruitful in middle age, giving birth to two children in the midst of litigation: patents 7,051,018 and 7,082,437. Those patents were also used against the above defendants, and in 2007 were asserted against two more GPS companies, Magellan and TomTom, as well as a Madison television and appliance company. That third defendant, which quickly settled, was likely a ploy to get their chosen venue, the Western District of Wisconsin. It didn't work; the judge sent EB's lawsuit to go join its friends in Texas.
Last month, Britannica's '671 patent was definitively nailed by a summary judgment motion brought by Alpine Electronics' lawyers, a Brinks Hofer legal team out of Chicago led by Gary Ropski. There was an inexplicable two-year delay between the filing of the SJ motion and the judge's order invalidating the patent, but the judge held off on discovery during this delay, so defendants were able to avoid that expensive burden. (That's the kind of thing that doesn't happen in the Eastern District of Texas, one of the factors that continues to make that venue so appealing to plaintiffs.)
Encyclopaedia Britannica has had a singular role in the history of knowledge. A product of the Scottish Enlightenment, the first U.S. volumes were published in Philadelphia in 1790—a pirated edition. Those books were bought by some early infringers of Britannica's intellectual property, including George Washington, Alexander Hamilton, and Thomas Jefferson. (The "infringement lobby" was well-connected in the 18th century.)
Britannica is struggling in the digital age. For every page viewed on Britannica.com, 184 pages are viewed on Wikipedia. The company continues to push ahead two more lawsuits against the GPS companies. Its two child-patents live on, bizarre and troubling descendants of a wondrous human project.
Case is Encyclopaedia Britannica, Inc. v. Alpine Electronics of America, Inc., et al. 05-cv-359-LY, W.D. Texas (Austin).
Update 12/9/08: Britannica has appealed this case to the Federal Circuit.
Image via Wikimedia
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