It Appears That The Encyclopaedia Britannica Entry On Shaking Down GPS Providers With A Bogus Patent Needs Updating

from the shot-down-again dept

Mon, Jun 28th 2010 11:56am — Mike Masnick

The Encyclopaedia Britannica has not exactly been having a good decade. In the minds of much of the public (though, certainly not all), the usefulness of Britannica has long been surpassed by Wikipedia. A couple years ago, we gave Britannica's president a chance to explain his views on where Britannica is going, but it still seems like an uphill battle. Among the more ridiculous things that Britannica has tried to do is to also turn itself into a bit of a patent troll. Back in 2007, it sued a bunch of GPS companies for patent infringement. Scratching your head over why Britannica holds patents on GPS technology? The answer is even more convoluted than you can imagine.

Through a series of events, Britannica ended up in possession of a rather infamous patent (5,241,671), originally granted to Compton's back in 1993. That patent was initially used to claim control over... well... pretty much all multimedia, including CD-ROMs and certain aspects of computers and software. The story got so much attention that the USPTO's boss stepped up and directly ordered a re-exam of the patent. All of the claims were struck down, but Compton's (and soon Britannica who took over ownership of the patent, being an investor in Comptons) kept trying. After eight long years of fighting back and forth, the patent with narrower claims was granted, which Britannica decided covered GPS technology.

To make matters even more confusing, during all of this Britannica had also filed for two continuations patents (the sneaky process we've discussed a few times recently whereby patents holders try to submarine in later offerings with an earlier priority date). Those patents were at the center of the lawsuit we mentioned in 2007.

At the end of 2008, we noted that that original '671 patent had finally been declared invalid. Last summer, we noted that those two other continuation patents had been dumped as well. Britannica, with nothing to lose, appealed.

Last week it lost that appeal. The actual ruling focuses on a technicality in terms of how Britannica filed for those continuation patents. Basically, it screwed up the filing process and that killed any chance of the patents to actually be considered continuations. Because of that, the patents get tossed out as being considered neither new nor non-obvious as they're anticipated by other patents. Either way, hopefully this really is the end of Encyclopaedia Britannica's short life in the world of patent trolling GPS companies...

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Filed Under: cd-roms, gps, multimedia, patents
Companies: britannica

22 Comments

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Oliver Wendell Jones (profile), 28 Jun 2010 @ 12:10pm

Sue Back?
After a patent like this has been declared null and invalid - has anyone successfully gone back and sued the company who formerly sued them for patent infringement in hopes of getting their money back?

In other words, Company A sues Company B for patent violation and wins - the patent is later declared invalid - has there ever been a Company B that has gone back sued Company A to get their losses back?
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Audiblenod, 28 Jun 2010 @ 12:23pm

That's what happens...
That's what happens when you feed the paperwork upside-down in the fax machine to the USPTO.
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Anonymous Coward, 28 Jun 2010 @ 12:28pm

Mike, there must be more to this story. It's Monday, so that means you're leaving something out.
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Anonymous Coward, 28 Jun 2010 @ 12:28pm

Re: That's what happens...
It wasn't upside down, it was facing the wrong way :)
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The Infamous Joe (profile), 28 Jun 2010 @ 12:39pm

Re: Re: That's what happens...
Actually, they forgot page 1 and didn't resubmit the paperwork within the 4 month extension they requested.

Someone lost their job over that, I bet.
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Bubba Gump (profile), 28 Jun 2010 @ 12:48pm

Re:
Yes, he's leaving the part out where an anonymous coward was lynched.
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interval (profile), 28 Jun 2010 @ 12:54pm

Re: Re: Re: That's what happens...
@TIJ: "Someone lost their job over that, I bet."

Probably, but its beating a dead horse. Or employee, as the case may be. There's no way in hell those flimsy patents would withstand any scrutiny, as I read them.
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Jay (profile), 28 Jun 2010 @ 1:06pm

I feel almost sorry for them...
EB had a lot for it before the internet. Now it seems a shell of its former glory as a placeholder for doors.

Sadly, I did use it for reference and relaxed reading as a child. I just don't see how they can remain relevant in a world where Wikipedia can do so much better.
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Dark Helmet (profile), 28 Jun 2010 @ 1:59pm

Re: I feel almost sorry for them...
"I just don't see how they can remain relevant in a world where Wikipedia can do so much better."

Are you kidding me? How can wikipedia be better than the Encyclopedia Britannica? Are you truly not aware that Wikipedia is maintained and expanded upon by its own users? That means PEOPLE are inputting data! And you think it's reliable?

Please. I'll take the information in the Encylopedia Britannica over Wikipedia any day. After all, the information in there was developed by clairvoyent robots from the planet Correctocron IV in the Referencia Galaxy, and it's been double checked by the six-breasted whores of the Verifica region....
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Anonymous Coward, 28 Jun 2010 @ 2:03pm

Re: Sue Back?
No, because the company partly has a valid reason to think the patent is enforceable because the patent office granted it. The more important question is why is the patent office even granting bogus patents to begin with? If anything, the patent office should be sued.
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ChronoFish (profile), 28 Jun 2010 @ 2:25pm

Re: Re: Sue Back?
This is a great comment - and one that didn't - but should have - jumped out at me.

Why can't the USPTO be sued for granting patents that can't be held up?

Once a patent is given, it seems reasonable to me that the party receiving the patent can make an assumption that the patent is enforceable.

I do however also see there being an issue with the USPTO being afraid to further review any patents if they could be found liable. In other words I could see the USPTO specifically NOT reviewing previously awarded patents for fear of being held liable.

-CF
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Anonymous Coward, 28 Jun 2010 @ 2:32pm

Re: Re: Re: Sue Back?
Perhaps for every patent that is overturned the patent office must give back the patent filing fees.
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Anonymous Coward, 28 Jun 2010 @ 2:34pm

Re: Re: Re: Re: Sue Back?
(then again, this creates incentive for the government to coerce bogus patent enforcement between the USPTO and the judiciary since both are branches of government. So it might not be a good idea).
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Anonymous Coward, 28 Jun 2010 @ 2:39pm

Re: Re: Re: Sue Back?
"Once a patent is given, it seems reasonable to me that the party receiving the patent can make an assumption that the patent is enforceable."

The thing is that the patent office should only grant enforceable patents and it should only grant patents that are reasonable to enforce. That is, it should only grant patents that make sense whereby the enforcement thereof helps promote the progress.
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Anonymous Coward, 28 Jun 2010 @ 2:42pm

Re: Re: Re: Sue Back?
"In other words I could see the USPTO specifically NOT reviewing previously awarded patents for fear of being held liable."

The issues are two fold.

A: People can appeal patent rejections and sometimes the judiciary will overturn patent rejections. The USPTO doesn't want to drag every issue up the appellate process. At one time the USPTO even rejected software patents only to have an appellate court overturn the rejection.

B: The USPTO collects filing fees for patent applications. The more patents it grants, the more entities apply for patents, the more money it makes.
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Anonymous Coward, 28 Jun 2010 @ 2:48pm

Re: Re:
My post was a parody of TAM. Apparently I did such a good job you mistook it as the real TAM. It's sad when a parody of someone is indistinguishable from the real person.
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IshmaelDS (profile), 28 Jun 2010 @ 3:59pm

Re: Re: Re:
you only made 1 mistake. You capitilized the Mike, TAM doesn't use caps.
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Anonymous Coward, 28 Jun 2010 @ 4:20pm

Re: Re: Re: Re:
He once used a capital letter by mistake.
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JustMe (profile), 29 Jun 2010 @ 8:08am

If you are filing the patent from Australia
You have to insert the document in to the fax upside down so it will arrive right side up at the USPTO.
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me, 29 Jun 2010 @ 4:40pm

Just curious
So what does the Encyclopaedia Britannica say about patent trolls? The USPTO? And maybe they'd better update the section on how to use a fax machine.
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G Fernandes, 29 Jun 2010 @ 11:07pm

Re: Re: I feel almost sorry for them...
[QUOTE]How can wikipedia be better than the Encyclopedia Britannica? Are you truly not aware that Wikipedia is maintained and expanded upon by its own users? That means PEOPLE are inputting data![/QUOTE]

Are YOU kidding me? PEOPLE write bits of the Encyclopedia Britannica too. How do you know that the person who writes a part of Encyclopedia Britannica is better than the person who writes a page on Wikipedia?

From my experience, each page in Wikipedia is contributed by and/or reviewed by experts in the field.

An employee paid to write in the EB isn't necessarily an expert in the field in the first place.

C'mon. Grow up. If Wikipedia hasn't already beaten the pants of EB, it certainly will very soon.
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Pastychomper, 30 Jun 2010 @ 1:06am

Re: Re: Re: I feel almost sorry for them...
"From my experience, each page in Wikipedia is contributed by and/or reviewed by experts in the field."

The experts' contributions are then deleted by the next reviewer, and the entire page is cleaned up and re-written to promote the interests of an anonymous third party. The changes are discussed on the talk page, where contibuters eventually agree that the content doesn't matter as long as there's a nice picture.

Having said that, I use Wikipedia a lot more than EB. I just check the references a lot more than I would in EB, too.
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