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Patent Infringement Lawsuits That Involve FOSS
Wednesday, August 10 2005 @ 11:55 PM EDT

I have the unhappy task of telling you that patent infringement lawsuits have been filed that impact FOSS.

The company doing it is J2 Global Communications, Inc. -- the eFax people -- against Mijanda, Inc., Easytel, Inc., and Protus IP Solutions. Here's the complaint [PDF] against Mijanda. It was filed in California by J2 and Catch Curve, Inc., on August 5, 2005.

Who is Catch Curve? I'll let them describe themselves, from the complaint: "Catch Curve is an intellectual property development and licensing firm focused on communications and messaging technologies." Another way to put it, in my language, is to say that they are a patent troll.

Each plaintiff contributes one patent to this suit against Mijanda:

-- J2's, which they got by assignment, is #6,208,638, "Method and Apparatus For Transmission And Retrieval of Facsimile and Audio Messages Over a Circuit or Packet Switched Network."

-- Catch Curve got its by assignment also, #6,785,021, "Facsimile Telecommunications System and Method."

What the plaintiffs are asking for is monetary damages for past "infringement", injunctive relief against continued "infringement" of the patents, and to get paid "reasonable" royalties going forward. I put infringement in quotation marks, because there is some question as to the validity of J2's patents, as I'll explain.

David Sugar brought this to my attention, and he told me about the FOSS connection:

Mijanda offers a fax to email gateway hosting service on Asterisk, a GPL licensed general purpose IP-PBX available under GNU/Linux. I believe one of the other companies involved is using Hylafax, which is another much older free software solution specific to faxing. The short list of free software packages that are potentially effected includes mgetty+sendfax, some of the fax stuff found in GNOME (and maybe KDE), hylafax, Bayonne, and Asterisk. In terms of prior art, whether one considers fax machines, classical fax modems, or even the very old mgetty+sendfax package used for doing fax to email and email to fax on GNU/Linux machines for maybe 20 years now, I am rather certain there is a great deal of relevant and readily demonstrable prior art in this area, besides the ridiculous nature of these patents.

The complaint says Mijanda offers its customers various services, including fax services through SmartFax and Fax Micro.

Someone really needs to do something about the US patent mess, don't you think? How bad does it have to get before someone fixes it? If allowed, proprietary companies will gladly divvy up the Internet -- and every function on it that we all need to use every day -- until it ends up entirely balkanized and proprietized after all. Patents are just the ticket to achieve such a goal. All you need is typical, everyday business goals, staying within the patent system as it currently exists, and a head and heart utterly untouched by any concern for the public good.

Patents on faxing? Faxing by email? Can someone please explain to me what happened to the nonobviousness requirement?

J2 is a proprietary company that has sued before. eFax is only one of the names J2 uses, by the way. They describe themselves like this:

j2 Global markets its services principally under the brand names eFax(R), j2(R), jConnect(R), JFAX(TM), eFax Corporate(R), UniFax(TM), Onebox(R), Electric Mail(R), jBlast(R), eFax Broadcast(TM), eVoice(R), PaperMaster(R), Consensus(TM), M4 Internet(R) and Protofax(R).

I gather they would like to be the only ones allowed to operate in that space. Alternatively, you can operate, but only if you cross their palms with silver. FOSS developers usually can't play that game. If J2 is successful in pulling this off, it could mean millions of people who prefer using only Free and Open Source software may find themselves unable to do so when it comes to faxing by computer. How could any legal system let that happen? I know for sure I'll never use eFax now, but if that becomes the only option, or only proprietary options are left standing, then what do I do? Anyway, that's their plan.

Is it an anti-FOSS plan? I don't know. It could be your garden variety business greed. Here's what I do know. Krevlin Advisors, LLC, one of the heavy backers of SCO, is also an investor in J2. If you are curious, here's a Forbes bio on Glenn J. Krevlin. And this article might give some insight. Coincidences do happen in life every day, of course.

A prior victim of J2's litigation strategy, Venali, Inc., has already challenged two of J2's patents (J2 says they have 23 worldwide), and they are going to the trouble, bless their hearts, of looking to challenge other patents in the J2 portfolio, even those not involved in that lawsuit, which was filed in 2004. One patent Venali challenged in May is #6597688, which the US Patent Office has agreed to reexamine on the grounds of invalidity:

“All claims of the patent will be reexamined” according to the order by the U.S. Patent Office granting the reexamination. “It is agreed that the consideration of all these references [cited by Venali in its request for reexamination] raises a substantial new question of patentability as to Claims 1-27 of [j2’s ‘688 patent].” . . .

“We are very pleased that the U.S. Patent office agreed to our first request to reexamine a patent held by J2 Global” said Amin El-Gazzar, CEO of Venali. “While this was the first reexamination request Venali filed, we recently filed a request to reexamine a second J2 Global patent based upon new evidence which we found that shows the invalidity of the patent. Based on the newly uncovered evidence, we are extremely confident that the U.S. Patent Office will grant that request as well.”

The reexamination requests are the result of evidence uncovered during an on-going extensive investigation into the validity of the entirety of the J2 Global patent portfolio which had first been initiated by Venali in response to a suit filed by J2 Global in 2004. While Venali maintains that its processes and technologies do not infringe upon J2 Global’s patents; Venali is aiming to strengthen competition on merit in the rapidly growing Internet Fax market place by working actively on invalidating questionable J2 Global’s patents, even if they are not part of Venali’s litigation with J2.

Venali's request for reexamination of all claims of US Patent No. 6,350,066, "Scalable architecture for transmission of messages over a network", in June was also granted. Venali's press release references seven individual grounds for reexamination, and the United States Patent Office ordered a reexamination of all claims in J2 patent 6,350,066:

Less than one month after granting Venali’s first request to reexamine a patent held by J2 Global Communications, Inc. (NASDAQ symbol JCOM), the United States Patent Office has granted Venali’s request for reexamination of a second patent held by J2.

According to the US Patent Office, Venali’s request for reexamination raised a substantial new question of patentability of all claims of US Patent No. 6,350,066. In fact, Venali provided seven individual grounds for reexamination and the United States Patent Office ordered a reexamination of all claims in J2 patent 6,350,066. . . .

“This order to reexamine a second patent held by J2 Global confirms Venali’s position that the patents asserted against it are simply not valid”, said Amin El-Gazzar, CEO of Venali. “We expect to file a request for reexamination of a third J2 Patent in the next couple of weeks and we are confident that request will be granted as well.”

So, two being reexamined, and probably more, but J2 has more, including 8 more waiting for approval in the US alone.

J2's press release has to say about the lawsuit:

LOS ANGELES, Aug. 5 /PRNewswire-FirstCall/ -- j2 Global Communications, Inc. (Nasdaq: JCOM), the provider of outsourced, value-added messaging and communications services, today announced that it has filed patent-infringement lawsuits against Easytel, Inc., Mijanda, Inc. (Canton, Mich.) and Protus IP Solutions (Ottawa, Canada).

j2 Global is seeking remedies in the form of monetary damages for past infringement, as well as injunctive relief prohibiting the companies named above from continuing to infringe the patent or patents in suit.

j2 Global owns more than 23 issued U.S. and foreign patents, and has numerous pending patent applications. These patents and patent applications relate to various innovations in the fields of unified communications, multimedia messaging, Internet fax and voice messaging, and document management.

"j2 Global relies on its proprietary, patented technologies to provide customers with value-added communications services, such as our eFax(R) outsourced fax-to-email solution," said Hemi Zucker, co-president of j2 Global. "These lawsuits emphasize our continued commitment to protect this valuable intellectual property from illegal use."

You can read more of their issued US patents:

6,717,938 System controlling use of a communication channel
6,625,642 System and process for transmitting electronic mail using a conventional facsimile device
6,597,688 Scalable architecture for transmission of messages over a network

Let's take a look at some of their published patents pending:

  • 20050131944 - Method and apparatus for automatically performing an online content distribution campaign
  • 20050097000 - Systems and methods to facilitate selling of products and services
  • 20050091123 - Systems and methods to facilitate selling of products and services
  • 20050044008 - Systems and methods to facilitate selling of products and services
  • 20040165603 - Enhancing messaging services using translation gateways
  • 20040153368 - Systems and methods to facilitate selling of products and services
  • 20040010419 - Method and apparatus for facilitating acquistion of prospective payoff information on an existing loan account
  • 20030154120 - Systems and methods to facilitate selling of products and services
The first one on the list is bone-chilling. It's a method to collect info about your customers from cookies and IP addresses and such, so as to know what they are interested in buying. Some on the list appear to be business methods patents. At least a few, if not all, of their patents will probably make your Top Ten Gruesome Patents list.

As it happens, Ben Klemens contacted me regarding the Patent Reform Act of 2005. He thought it would be a good idea to bring it to your attention. I asked him to please write out what he thought needed to be explained, from his point of view. Here's what he wrote:

The Patent Reform Act of 2005 is now going through the process in the U.S. House of Representatives. I'll save you the trouble of reading through the act looking for the part about reforming software patents -- it's not there.

There has been much debate on general patent reform from many sources, including the likes of IBM (arguably the single largest user of the U.S. patent system), and a recent book by Jaffe and Lerner.

These parties are good representatives of the common line on software patents. IBM, on one side of the spectrum, collects them while calling for reform, while Jaffe and Lerner brush them off -- they devote one and a half pages of their 256 page book to software, which is just long enough for them to declare that they can't distinguish between software and any other machine.

Congress is, in my opinion, the only chance to fix the software patent mess. As explained by Jaffe and Lerner (and many others), the Court of Appeals for the Federal Circuit (CAFC) is supremely pro-patent, as partly evidenced by its single-handed invention of the concepts of software and business method patents.

This pro-patent court is effectively the highest court in the land on patent issues, because the members of the Supreme Court yawn at the thought of having to sit through a case on patents. The last relevant case it heard, Diamond v. Diehr, was twenty-four years ago, and approved a patent for a piece of industrial equipment which is nothing like a PC. The pro-patent CAFC has thus had free license to intrepret software and business method patents into law.

Why does the CAFC have such free sway? Because the law delineating patentable subject matter is one sentence long.

35 U.S.C Section 101. - Inventions patentable
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
This sentence was penned by Thomas Jefferson (he used the word art instead of process), and it is this sentence that the CAFC interpreted to mean that Jefferson meant for software to be patentable.

There's something to be said for a law which is light on verbiage, but with a court that has so little interest in balancing patent benefits against patent harms, it makes sense to add clarification to the code itself. Gosh, the patent code includes rules on inventions made in outer space, yet it does not waste words to clarify whether a program on a general-purpose computer is patentable subject matter.

The CAFC will continue to declare that Congress intended software to be patentable until Congress says otherwise. The Patent Reform Act of 2005 could be a means by which that would happen. Unfortunately, it was penned by lawyers instead of programmers, and therefore misses the opportunity.

Groklaw is nonpolitical, but it seemed worthwhile to inform you that the act is currently being debated, so you can follow it, if you've a mind to.

So, to sum up, we have patent infringement lawsuits to worry about. Some of you will be able to find prior art on the patents being used against Mijanda in your sleep, I'd guess. But isn't it a crying shame that someone has to?

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