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USPTO: Broadest Claims Forgent Asserts Against JPEG Standard Invalid
Friday, May 26 2006 @ 10:57 AM EDT

This is amazing. Do you remember that the Public Patent Foundation asked the US Patent Office to take another look at the JPEG patent? Yesterday, the reexamination proceeding initiated by PubPat bore fruit: the USPTO has rejected the broadest claims Forgent Networks is asserting against the JPEG standard on the basis that the prior art submitted by PubPat completely anticipated those claims.

Forgent can respond, but it seems they'll have some explaining to do, because PubPat's Executive Director, Dan Ravicher, says that the submitters knew about the prior art but failed to tell the USPTO about it. That is a very big NO. So don't let anyone tell you that efforts to find prior art are not useful.


PATENT ASSERTED AGAINST JPEG STANDARD REJECTED BY PATENT OFFICE AS RESULT OF PUBPAT REQUEST: Public Interest Group's Review Results in Broadest Claims of Forgent Networks Patent Being Ruled Invalid

NEW YORK -- May 26, 2006 -- In the reexamination proceeding initiated late last year by the Public Patent Foundation ("PUBPAT"), the United States Patent and Trademark Office has rejected the broadest claims of the patent Forgent Networks (Nasdaq: FORG) is asserting against the Joint Photographic Experts Group (JPEG) international standard for the electronic sharing of photo-quality images. In its Office Action released yesterday, the Patent Office found that the prior art submitted by PUBPAT completely anticipated the broadest claims of the patent, U.S. Patent No. 4,698,672 (the '672 Patent).

Forgent Networks acquired the '672 Patent through the purchase of Compression Labs, Inc. in 1997 and began aggressively asserting it against the JPEG standard through lawsuits and the media in 2004. The company has the opportunity to respond to the Patent Office's rejection, but third party requests for reexamination, like the one filed by PUBPAT, result in having the subject patent either modified or completely revoked roughly 70% of the time.

"The Patent Office has agreed with our conclusion that it would have never granted Forgent Networks' '672 patent had it been aware of the prior art that we uncovered and submitted to them," said Dan Ravicher, PUBPAT's Executive Director. "Making matters worse here is that this new prior art was known by those who filed the application that led to the '672 patent, but none of them told the Patent Office about it, despite their duty to do so."

More information about the reexamination the Forgent Networks patent being asserted against the JPEG standard, including a copy of the Patent Office's Office Action rejecting its broadest claims, can be found at


The Public Patent Foundation ("PUBPAT") is a not-for-profit legal services organization working to protect the public from the harms caused by the patent system, particularly the harms caused by wrongly issued patents and unsound patent policy. To be kept informed of PUBPAT News, subscribe to the PUBPAT News List by sending an email with "subscribe" in the subject line to To be removed from the PUBPAT News List, send an email with "unsubscribe" in the subject line to


USPTO: Broadest Claims Forgent Asserts Against JPEG Standard Invalid | 172 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Corrections Here
Authored by: lightsail on Friday, May 26 2006 @ 11:12 AM EDT

Open source is in the public interest!

[ Reply to This | # ]

OT -Off Topic
Authored by: lightsail on Friday, May 26 2006 @ 11:14 AM EDT
Double WOW!

Open source is in the public interest!

[ Reply to This | # ]

USPTO: Broadest Claims Forgent Asserts Against JPEG Standard Invalid
Authored by: Anonymous on Friday, May 26 2006 @ 11:20 AM EDT
Triple wow! [and so on]

Score one for the good guys.

[ Reply to This | # ]

The Long Tail
Authored by: Anonymous on Friday, May 26 2006 @ 11:24 AM EDT
How does the idea of the long tail relate to patents? How big is the long tail of patentable ideas compared to the handful of developments that get anywhere commercially?

[ Reply to This | # ]

  • The Long Tail - Authored by: Anonymous on Friday, May 26 2006 @ 01:07 PM EDT
  • The Long Tail - Authored by: Anonymous on Saturday, May 27 2006 @ 02:01 AM EDT
USPTO: Broadest Claims Forgent Asserts Against JPEG Standard Invalid
Authored by: Anonymous on Friday, May 26 2006 @ 11:29 AM EDT
Any chance of criminal prosecution for this?

[ Reply to This | # ]

Budding patent troll?
Authored by: rsmith on Friday, May 26 2006 @ 11:38 AM EDT
Is Forgent a budding patent troll? Apart from a subsidiary that sells a
scheduling package, their only "products" are a couple of patents.

Better to nip this one in the bud before it grows into an SCO.

Intellectual Property is an oxymoron.

[ Reply to This | # ]

Prior art
Authored by: DebianUser on Friday, May 26 2006 @ 11:45 AM EDT
This looks to me like a preemptive strike by the pubpat organization against a
would-be patent troll. It seems to have worked.

I wonder if prior art ever helps once someone actually is under attack from
someone who has decided to "monetize the intellectual property

The two cases that come to mind are the Blackberry (RIM) case, and the case
reported earlier where Kodak went after Sun with some old apparently overly
broad patent they had bought. RIM seemed to lose the infringement case even
though the troll's patents were in the process of being thrown out. Sun seemed
to decide it was cheaper to pay off Kodak, and judging from what happened to RIM
it seems hard to argue that paying was a bad financial decision by Sun.

[ Reply to This | # ]

USPTO: Broadest Claims Forgent Asserts Against JPEG Standard Invalid
Authored by: Anonymous on Friday, May 26 2006 @ 11:47 AM EDT
How to get a recommendation wrong... (18-May-2006)

"Dutton Associates Announces Investment Opinion: Forgent Networks Strong Buy Rating Maintained By Dutton Associates "

Link to Release

"assuming a possible judgment of $100.0 to $200.0 million from the '672 Patent litigation"

Never assume. It makes an...(complete the well known saying)

[ Reply to This | # ]

USPTO: Broadest Claims Forgent Asserts Against JPEG Standard Invalid
Authored by: belzecue on Friday, May 26 2006 @ 11:52 AM EDT
You hear that sound, Forgent? THAT is the sound of your license to litigate getting revoked.

[ Reply to This | # ]

I want to know...
Authored by: Altair_IV on Friday, May 26 2006 @ 11:56 AM EDT
I want to know how they know that Forgent knew about the prior art before

(I also want to know many knows you can actually use in one sentence and still
know who knew what.)

Monsters from the id!!
m(_ _)m

[ Reply to This | # ]

USPTO: Broadest Claims Forgent Asserts Against JPEG Standard Invalid
Authored by: arthurpaliden on Friday, May 26 2006 @ 12:00 PM EDT
What will be really interesting is what will the "56 companies that include
a wide variety of businesses, and recorded revenue of over $106.8 million in
license fees." that already licenced the patented item going to do now.

[ Reply to This | # ]

Somebody looks foolish now...
Authored by: PhilFrisbie on Friday, May 26 2006 @ 12:04 PM EDT
Those companies that caved in and gave Forgent over $108 MILLION in fees the
last three years should feel foolish ;)

Oh, and RIM should also feel foolish because their $612 million settlement was
just like hanging a sign on their back that says "Sue Me!"

[ Reply to This | # ]

USPTO: Broadest Claims Forgent Asserts Against JPEG Standard Invalid
Authored by: Anonymous on Friday, May 26 2006 @ 12:21 PM EDT
I seem to remember that when applying for a US patent you sign your name against
a statement that you have included all the prior art you know of and that you
have made reasonable efforts to discover more. Furthermore isn't this statement
made "under penalty of perjury?". If this is so should not the
inventors be expecting a call from officers of the law?

[ Reply to This | # ]

USPTO: Broadest Claims Forgent Asserts Against JPEG Standard Invalid
Authored by: Anonymous on Friday, May 26 2006 @ 12:36 PM EDT
This is good news. It will be even better if the patent office shows some
spirit and actively pursues the people who filed the patent on the perjury
angle. I've heard that this almost never happens, so patent filers think they
have nothing to fear should they fail to do a thorough search for prior art.

[ Reply to This | # ]

Forgent's view
Authored by: Laomedon on Friday, May 26 2006 @ 12:44 PM EDT

USPTO Issues Office Action for Forgent's '672 Patent

Majority of Patent Claims Are Upheld

AUSTIN, TX, May 26, 2006 (MARKET WIRE via COMTEX News Network) -- Forgent(TM) Networks (NASDAQ: FORG) announced today that on May 25, 2006, the United States Patent and Trademark Office issued its first office action, a non-final action, confirming a majority of the claims in United States Patent 4,698,672. The action upholds 27 of the 46 claims of Forgent's patent. Forgent will vigorously defend the remaining claims that were not initially upheld in this first office action.

"We understand this is an extended process and we are pleased with the progress of the patent reexamination," said Richard Snyder, CEO and Chairman of Forgent Networks. "We believe the remaining claims are also valid, and we will work directly with the Patent and Trademark Office to clarify and defend our position."

Forgent is currently in litigation regarding the '672 patent with approximately 30 companies. The current parties include: Acer America Corporation, Agfa Corporation, Apple Computer, Incorporated (NASDAQ: AAPL), BancTec, Inc., Canon, USA, Concord Camera Corporation (NASDAQ: LENS), Creative Labs, Incorporated, Creo, Inc. (CREO), Creo Americas, Inc., Dell Incorporated (NASDAQ: DELL), Eastman Kodak Company (NYSE: EK), Fuji Photo Film Co U.S.A, Fujitsu Computer Products of America, Gateway, Inc. (NYSE: GTW), Hewlett-Packard Company (NYSE: HPQ), International Business Machines Corp. (NYSE: IBM), JVC Americas Corporation, Kyocera Wireless Corporation, Matsushita Electric Corporation of America, Microsoft Corporation (NASDAQ: MSFT), Mitsubishi Digital Electronics America, Incorporated, PalmOne, Inc. (PLMO), Panasonic Communications Corporation of America, Panasonic Mobile Communications Development Corporation of USA, Ricoh Corporation, Savin Corporation, Sun Microsystems Inc. (NASDAQ: SUNW), Thomson S.A. (NYSE: TMS), TiVo Inc. (NASDAQ: TIVO), Toshiba Corporation and Veo Inc. Since the filing of the litigation, more than a dozen companies that were defendants have entered into license agreements.

Since its inception over three years ago, Forgent's intellectual property program has generated more than $105 million in revenues primarily from licensing the '672 Patent to companies in Asia, Europe and the United States. The '672 Patent relates to digital image compression used in digital image devices that compress, store, manipulate, print or transmit digital images such as digital cameras, personal digital assistants, cellular telephones, printers, scanners, and certain software applications. The company's patent portfolio includes the combined inventions of Compression Labs, Inc., VTEL Corporation, and Forgent Networks, Inc.

About Forgent

Forgent(TM) Networks (NASDAQ: FORG) develops and licenses intellectual property and provides scheduling software to a wide variety of customers. Forgent's intellectual property licensing program is related to communication technologies developed from a diverse and growing patent portfolio. Forgent's software division, NetSimplicity, provides a spectrum of scheduling software that enables all sizes of organizations to streamline the scheduling of people, places and things. For additional information please visit

[ Reply to This | # ]

Lanham Question
Authored by: lightsail on Friday, May 26 2006 @ 01:01 PM EDT
Here is the question:

Forgent should have known that there was prior art that invalidated theit patent
and failed to report this to the patent office.

Forgent made public claims against several companies on the basis of the tainted

Could a lanham claim be used against Forgent for making false statements?

Open source is in the public interest!

[ Reply to This | # ]

What's the penalty?
Authored by: Anonymous on Friday, May 26 2006 @ 01:10 PM EDT
It appears that the penalty for filing a bogus patent is to make $108 million
before having it revoked 10 years later. Is that all there is to it?

[ Reply to This | # ]

A fair warning
Authored by: Anonymous on Friday, May 26 2006 @ 02:28 PM EDT
Now that it appears USPTO is finally starting to do it's job according to it's mandate, we need to follow up by keeping an eye on senators Dianne Feinstein (D) and Orrin Hatch(R).

As you are probably aware, Feinstein is the poster girl for overreaching IP laws, due to her representing Hollywood.

Hatch is the poster boy for same, due to the fact that he is a manufacturer of intellectual property. He is a capable song and hymn writer, and by pandering to ASCAP etc. he hopes to make his first billion this way. However, someone ought to tell him that the reason he isn't rolling in it has nothing to do with current legislation, but more to do with lack of salesmanship.

If you go to to order the music you get:
"404 Error - The Page you have requested cannot be found."

With USPTO enforcing the law according to intentions, I bet it will not take long before Hatch and Feinstein in bipartisan harmony will step up to the plate and introduce a bill to restore the broken order. Last time I saw them on C-SPAN they made a hash out of XM sattelite radio, pandering to the record companies and ASCAP etc. Did you know that old fashioned broadcast radio pays absolutely nothing in licenses? While internet streaming, and XM, Sirius etc. pays a huge chunk of their revenue? And that the record companies wanted even more, and have XM classified as distribution, instead of broadcasting.?

[ Reply to This | # ]

I strongly disagree that this shows the system working.
Authored by: Anonymous on Friday, May 26 2006 @ 02:47 PM EDT

I strongly disagree that this shows the system working to any useful degree.

1. They have held the patent for a while, during which time they have intimidated people to prevent them from using the technology. Even if all the claims are invalidated, they will never be held liable for the untold damage they have done by disallowing people for using it for that period of time, and I see no disincentive to trying this sort of thing again just because they got caught on this particular nuiscance patent.

2. Demonstrating prior art is something that may not be doable in a vast majority of cases, because the evidence is not there. Even if there was no prior art, it is likely (based upon many examples) that it was the obvious direction to go to solve a problem but they are apparently doing nothing to fix that.

I believe at this point, the system is still so open for abuse, that cooperating with the Patent system is endorsing its many abuses. It allows them to say that the submissions have been competently reviewed, which they clearly have not.

People who file patents should be liable for class action lawsuits at the very least with attorneys fees paid so that there can be a strong incentive to overturn invalid patents and not the huge legal bill hurdle and a strong disincentive to do anything that harms others legitimate developments.

[ Reply to This | # ]

Damned if you do, and damned if....
Authored by: argee on Friday, May 26 2006 @ 03:14 PM EDT
The problem in Patenting IDEAS is that probably, somewhere,
somehow, has thought up the same idea before, and wrote it
down. If you think about this for a while, it makes it very
hard to patent and IDEA, like software.

On the other hand, if you think up an IDEA, and track it
back to the original person, you are too late to have him
patent it because its already published as prior art.

I predict that in a couple of years, instead of having
"Patent Trolls" we are going to have "patent busting
trolls." These are the guys that, for a fee of course,
will Bust any software patent you want busted!


[ Reply to This | # ]

USPTO: Broadest Claims Forgent Asserts Against JPEG Standard Invalid
Authored by: IRJustman on Friday, May 26 2006 @ 03:50 PM EDT
I think what's being said is that patent trolling should be made illegal.
Patent trolling is, by its very nature, fraud since organizations like Forgent
or RAMBUS don't use their patent portfolios for anything except as a cudgel to
bludgeon everyone for money. They don't actually MAKE anything with those
patents except money.


[ Reply to This | # ]

Who knew what, aka Prior Art
Authored by: Anonymous on Friday, May 26 2006 @ 05:11 PM EDT
for an explanation of the Prior Art, read PubPats original request for reexamination from Nov 2005: Chen_'672_Reexam_Request.pdf

[ Reply to This | # ]

USPTO still not covering itself in glory
Authored by: Arnold.the.Frog on Saturday, May 27 2006 @ 12:03 PM EDT

The decision (thanks, Anonymous!).

P. 30, para. 6:

"Moreover, there is not sufficient evidence to show that it was inherent in "runlength coding that runlength code values represent the number of consecutive zeros".

I've tried to find a possible justification for this amazing sentence, and I haven't been able to come up with anything which isn't hopelessly fanciful and silly.

Does the man actually know what run-length encoding is? It sounds like a stupid question, but...

The critical point here is that zeroes are preferentially encoded with short codes because they are the commonest values. All very straightforward stuff: actually less sophisticated than, say, explicit Huffman encoding (which is Tescher's proposed approach to doing it).

Unfortunately, our man at the USPTO goes on to bog himself in deeper.
p. 31, para. 7

The entry 0 with highest occurrence of 5652 is represented by length 3, while the entry 2 with lower occurrence of 3916 is represented by length 3 (emphasis added). It clearly shows that the highest occurrence of 5652 and lower occurrence of 3916 have the same length 3. This example appears to contradict the Requester's statements of “Tescher's compression technique such that those values with the highest frequency of occurrence are represented with shorter lengths than those values with lower frequency of occurrence.”
This is, of course, preposterous. Only in wildly extreme cases will (say) a Huffman encoding produce different lengths for EVERY code, though it's possible. In fact, Huffman encoding (in ITSELF, not in combination with run-length encoding, which confuses the theory a bit) is "optimal" for encoding successive independent random samples from a finite character set. If the patentee's claims are different, they are arguably just a stupider version of the same, and being stupider is surely not patentable.

[ Reply to This | # ]

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