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------- Forwarded message follows ------- Date sent: Thu, 22 Aug 2002 20:29:56 -0400 (EDT) From: Gregory Aharonian <srctran@world.std.com> To: epo@mlist.austria.eu.net Subject: PATNEWS: Judge dismisses BT's hyperlink lawsuit against Prodigy Send reply to: Gregory Aharonian <srctran@world.std.com>
!20020822 Judge dismisses BT's hyperlink lawsuit against Prodigy
On Thursday, the US District Court for the Southern District of New York dismissed British Telecom's hyperlink patent lawsuit (U.S. patent 4,873,662, inventor is Sargent) against Prodigy. To quote the introduction:
"For the reasons stated below, I find that as a matter of law, no jury could find that Prodigy infringes the Sargent patent, nor that Prodigy contributes to infringement of the Sargent patent, nor actively induces others to infringe that patent. I therefore grant Prodigy's motion for summary judgment."
Only thing missing from the judge's ruling is the phrase ", .... especially once the claims are narrowed in light of the prior art that British Telecom should have sought out before filing this lawsuit."
In their filings, British Telecom argued three main points:
- each Web server on the Internet is a "central computer" as defined in the Sargent patent because each Web server has its own centralized data store
- HTML files qualify as "blocks of information" either literally or under the doctrine of equivalents
- each URL address is a "complete address" within the meaning of the Court's construction of the term, either literally or under the doctrine of equivalents.
The court disagreed. On page 12, the court concludes that the Internet has no "central computer" in the literal sense, which is true, and that a collection of Web servers is not a "central computer" under the doctrine of equivalents [page 14], especially because the patent describes a hub-and-spoke system which a collection of Web servers usually isn't. On page 15, the court rules that the phrase "central computer" is a limiting phrase on the claims asserted, denying BT the ability to broaden the claims to cover the Internet.
On page 16, the court ruled that the Internet does not contain blocks of information as required by the Sargent patent (which sends out information in the form of two blocks of data, one display related, one data/function related), neither literally (HTML intermixes everything, and the court earlier ruled that intermixing is part of the BT patent). An expert for BT had rigged up some HTML for a Web page to be more similar to the patent's blocks of information, but the court ignored that exercise quoting: "A device does not infringe simply because it is possible to alter it in a way that would satisfy all the limitations of a patent claim.". Starting on page 20, the court also ruled that the doctrine of equivalents can't be used here as well, partly because during prosecution of their patent, BT narrowed their claims in light of some patent prior art. The "blocks of information" phrase was also a limiting phrase on the claims.
On page 22, the court ruled on the third main aspect, saying that neither a URL nor the path component of a URL is a "complete address". A complete address is an absolute memory address in the patent, as opposed to the relative/virtual addresses that are URLs (which is why we have things like DNS servers), something which the BT expert himself admitted in a deposition. With regards to invoking the doctrine of equivalents, again BT narrowed the claims during prosecution to overcome prior art (much like they did for "blocks of information"), and the court cited Warner Jenkinson to bar BT from asserting a broader claim interpretation.
The court concluded with:
In contrast to what BT would have us to believe, there are no disputed issues of material fact in this case. Instead, the two sides reach vastly different conclusions based on the same set of facts. I find that, as a matter of law, no jury could find that Prodigy infringes the Sargent patent, whether directly or contributorily, either as part of the Internet or on its Web server viewed separate and apart for the Internet. Prodigy's motion for summary judgment is therefore granted.
Kudos to Prodigy for fighting the good fight. Lawyers for Prodigy are from the firm Vinson and Elkins.
Greg Aharonian Internet Patent News Service
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