How NTP Kept Wireless Email Prior Art Quiet For $20,000

from the that's-all-it-took? dept

Mon, Apr 17th 2006 3:29am — Mike Masnick

One of the more amazing things as the NTP/RIM patent lawsuit came to a close was the way that NTP's defenders seemed to completely ignore two important aspects of the case: they would not discuss prior art and they absolutely refused to entertain the idea that NTP's patents were on an "obvious" idea. This was even as the US Patent Office was busy invalidating each and every patent -- admitting that they'd made a mistake in granting them in the first place. The NY Times has dug up one of the more interesting hidden elements of the case: the fact that the basic idea of "wireless email" that Thomas Campana patented, and which eventually were the core of NTP's case, had clear prior art in the work of Geoff Goodfellow, who had done work on such ideas a decade before Campana. Goodfellow, however, chose not to patent the concept, echoing things that we've said repeatedly here: "You don't patent the obvious. The way you compete is to build something that is faster, better, cheaper. You don't lock your ideas up in a patent and rest on your laurels." The scary part, though, is that NTP's lawyers were able to effectively silence Goodfellow in the case, paying him $20,000 for a few days of "consulting" work, with part of the deal being that he was prohibited from revealing any info to RIM during the case. So, while they kept the prior art quiet for $20,000, NTP's lawyers walked away with $600 million. Yet, patent system defenders still want to tell us the system works great? On two different accounts this is damning against the patent system. First, it shows prior art. However, more importantly, it shows that someone who was clearly "skilled in the art" found the entire concept to be obvious years before the actual patent was granted. It brings up again the important question of why the patent office refuses to put in place a test for obviousness when the law demands it.

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21 Comments

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Mont, 17 Apr 2006 @ 4:29am

Ham Radio Did it First
I don't know Geoff Goodfellow or what he did but I know I could send e messages with a ham radio, a computer and some packets 20 years ago.

First!
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ConceptJunkie (profile), 17 Apr 2006 @ 5:19am

Gaming the USPTO for fun and profit...
I wonder if anyone has a patent on the business model of "patenting the obvious and litigating your way to financial success".
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christopher, 17 Apr 2006 @ 5:37am

Re: Gaming the USPTO for fun and profit...
"I wonder if anyone has a patent on the business model of "patenting the obvious and litigating your way to financial success"."

Yes, and I also have a patent protecting discussions about it, and you owe me a dollar.

-C
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Vince, 17 Apr 2006 @ 5:49am

Re: Re: Gaming the USPTO for fun and profit...
I own a patent on the method of using ones mouth to produce communication
Patent 000-000-001 Vocal Communcation

So every time you speak - I get 0.01c.

Gimme gimme gimme
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Anonymous Coward, 17 Apr 2006 @ 6:40am

I don't see how you could patent "wireless email" anyway.

Shouldn't be allowed to patent a comcept - only a solid idea. I could see a patent for the *technology* to drive wireless email, but not the concept itself.
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John, 17 Apr 2006 @ 6:57am

err uh wireless at home....
Dont all these wireless networks at home sort of cause a problem for the "wireless email" pattent?
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Thomason, 17 Apr 2006 @ 7:01am

Proper to disclose, but did Gfellow have any thing
As Mike writes, Gfellow had a "basic idea" and did not "patent the concept." Gfellow, and no one else, could get a patent on an "idea." The U.S. grants no patents on "concepts." Gfellow did not have an actual invention, only the promise of 'what if' we could come up with some THING that'd do this. He apparently never documented an invention, only talked about an idea or a concept.

That being said, the NTP lawyers may've withheld material information. The system works better when the Patent Office, or the Court, is able to assess whether something is, or is not, a prior invention. You can't conclude that the system didn't "work" when that system never got to "work on" this information.
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Anonymous Coward, 17 Apr 2006 @ 7:03am

Lawsuits are the Problem, not Patents
If the patent office is overturning all of NTP's patents, how is that system broken?

Your problem is with the litigation system in the U.S., not the patent system. The judge should have waited on the patent rulings, but didn't. RIM decided to settle before the PTO ruled, but that was RIM's choice - more or less forced on them by the judge, who is and will always be outside the patent system.

No one disagrees that lawsuits are creating huge problems for business in everything from harassment suits, to asbestos to environmental bullshit. In fact, all these other items are hurting business and "innovation" more than patent suits. Go look at the amount business spends on these other frivolous lawsuits and it swamps what is spent on patent issues.
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Anonymous Coward, 17 Apr 2006 @ 7:35am

Re: Lawsuits are the Problem, not Patents
"...how is that system broken?"

Why were those patents issued in the first place?

RIM showed hubris by thinking "No way does this case have merit" and basically ignoring it until judgements started going against them. The message being sent by this case is you must bribe an American company if you (as a foreign company) want to do business in the US. A little more sophisticated than bribes paid to a third-world dictator to do business in his country but the end result is the same.
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Alex Moskalyuk, 17 Apr 2006 @ 8:22am

There's too much misunderstanding about Geoff's role in the whole process. Thomason, you are so well-informed about Geoff having an idea and not doing about anything, that it's hard to argue with your wealth of knowledge. Except maybe a tiny fact that Geoff actually ran a wireless email company, which then got sold to Motorola, and that back in the days Radiomail had a device out that would allow one to read the email wirelessly.

Also, the $20k paid by NTP was not to silence the inventor, they just wanted to make sure their story was legit, since they knew that story of Goodfellow and Radiomail was public knowledge, due to publications in Fortune and New York Times itself at the time Radiomail was a startup company. Goodfellow did the work answering the questions, got paid, and neither him, nor NTP had any commitment for the future.

By the way, there's yet another company who's getting pretty good license revenue from the patents that might be invalidated due to Goodfellow/Radiomail inventions, but let's not steal the story from NYT, maybe the time's not right to name it yet.
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Anonymous Coward, 17 Apr 2006 @ 8:26am

i feel bad for RIMM
NTP lied cheated and exploited their way to huge profits..

RIMM who did all the work and built their business payed dearly..

whats even lamer is the patents were being thrown out and they still had to pay.. thats like going to trial for alleged murder. having all the evidence proven false (patents were thrown out!!) and the judge still trying to decide how many years to send you to prison for

how does that make any sense?
is it possible for them to get their money back?

NTP have to be the greatest theives in history, they stole 650million dollars in plain view of the entire world
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Joe Smith, 17 Apr 2006 @ 10:06am

Re: i feel bad for RIMM
"is it possible for [RIM] to get their money back? "

No.

There is really nothing new in the fact that someone thought wireless email was obvious years before Camapana's 'invention.' In fact, people were doing wireless email years before Camapana's invention.

The RIM case is all about the judicial system being divorced from reality. There is a reason that business is turning to arbitration when they have the choice rather than submit to an arbitrary, incompetent, system like the courts.
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RevMike, 17 Apr 2006 @ 10:15am

Re: Ham Radio Did it First
I don't know Geoff Goodfellow or what he did but I know I could send e messages with a ham radio, a computer and some packets 20 years ago.

For the last time, the patents in question weren't about wireless email. Without stretching, that technology has been around since WWII.

It is relatively easy to operate a large tranceiver that has access to enough power that it can be always on. The key patentable ideas behind Blackberry style email devices are methods to run the radio for short time slices, keeping it turned off and not consuming power for 99% of the time, yet still reliably deliver timely messages. Your ham equipment would not run for more than a few seconds on the battery in a blackberry. An "always on" mobile tranceiver would not run for more that a few hours. But a blackberry can run for days.

The innovation is in the orchestration of the base station and the mobile devices so that the base station only transmitted data for a particular mobile device during the short window when the device is actually turned on.
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Mike (profile), 17 Apr 2006 @ 10:27am

Re: Lawsuits are the Problem, not Patents
If the patent office is overturning all of NTP's patents, how is that system broken?

Why were they granted in the first place. Why does it take so many years and so much money to get the patents overturned?

The patent system is very much broken.
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Rigel, 17 Apr 2006 @ 10:33am

Re: patent wireless e-mail
You're not even supposed to patent an idea. What you're supposed to patent is the "implementation". The product, the result, the thing people use, or do, or how they do it. Patents are not supposed to be given for intangible things.

Henceforth if they patented a method of wireless communication, they'd be in the clear, but no. They had to violate the law... again.

Rigel
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Rigel, 17 Apr 2006 @ 10:37am

Re: Re: Ham Radio Did it First
Oh... I posted before reading this... I guess something was left out of the story or there was something I missed. In either case, thanks for the info. This makes things sticky... :|

Rigel
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Joe Smith, 17 Apr 2006 @ 12:16pm

Re: Re: Ham Radio Did it First
The innovation is in the orchestration of the base station and the mobile devices so that the base station only transmitted data for a particular mobile device during the short window when the device is actually turned on.

It takes a lot less power to receive than to send. Power consumption for the base station is almost irrelevant since you can plug it into the power mains. What makes the BlackBerry type devices work is that they are push email where the base network keeps track of where the device is and sends a signal to the device when there is a message. But all of that was conceived in the 1940s with the invention of cellular radio systems (which could not be implemented because of a lack of computers) and the later development of cellular telephones.

There was nothing new in the Campana patents.
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Mousky, 17 Apr 2006 @ 12:34pm

Re: Lawsuits are the Problem, not Patents
No, the problem began when the PTO initially validated the patents. NTP would have never filed a lawsuit if the patents were rejected from the beginning.
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Mousky, 17 Apr 2006 @ 12:40pm

Re: Re: i feel bad for RIMM
The entire intellectual property field is divorced from reality. Think about this: RIM spent millions of dollars developing a global network of communication that has become synomynous with wireless email. NTP created nothing and walked away with $600 Million (less legal fees). Innovation is great, but without implementation, it is useless.
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Mark Nowotarski, 18 Apr 2006 @ 7:57pm

Duty of Disclosure
For the record:

"Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the (Patent) Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section.....no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct." (37 CFR 1.56)

For a more complete description of an applicant's duty of disclosure see:

http://www.uspto.gov/web/offices/pac/mpep/documents/appxr_1_56.htm#cfr37s1.56
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Anonymous Coward, 2 May 2006 @ 9:58am

Re: Ham Radio Did it First
Wireless Telegram was the FIRST Wireless EMAIL as far as I am concerned and that was done by Marconi in 1899. But even though that is true the wikipedia has Geoff Goodfellow listed as the inventor of wireless email.
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