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Just about any company that offers parental controls on video content got an unpleasant gift right before Christmas last year: a lawsuit charging them with infringing two different patents. But the case has been brewing since September of 1999, and it's quite difficult to track down all the relevant information. Nevertheless, it's possible to construct a rough narrative of how this case got to where it is and why so many big-name companies are being hit by the suit at once.
And it really is a staggering collection of companies; the list includes electronics giants, broadcasters, retailers, and game makers. A partial roster of the 36 targeted parties includes Acer America, Apple, Bang & Olufsen, Best Buy, Bose, Cisco, Costco, Dell, DirecTV, Fujitsu, Lenovo, Microsoft, Motorola, Nintendo, Overstock.com, Radio Shack, Sears, Target, TiVo, and Walmart. GamePolitics, which noticed a report on the suit, wondered why Sony didn't appear. As it turns out, Sony is key to deciphering the history of this case.
It turns out that Sony isn't getting sued because it had already lodged a preventive suit against the patent holding company, Guardian Media Technologies, Ltd., back in 2005, joined by Mitsubishi, Matsushita, and JVC. But all of these companies have a history with the two patents in question, 4930158 and 4930160, that goes back roughly 20 years.
The patents focus on providing a classification signature within the data stream that represents video content. Anything that receives the content can determine whether that content is appropriate to display based on a code provided by whoever is operating the equipment. If there is a mismatch, the device or program could then either block the content (the 158 patent) or display a censored version of it (the 160 patent). The individual who filed these patents, a Peter S. Vogel, appears to have been ahead of his time, as the initial filing was performed in 1988.
It took the advent of the V-chip many years later for the patents to become relevant. At some point in 1999, a lawyer representing Vogel himself started sending letters to major TV manufacturers like Sony and Mitsubishi, saying that their V-chip systems infringed. Sony et. al. suggested they had some "serious questions about the validity" of the two patents, and listed a series of prior art references, while suggesting the remainder of the patent was an obvious extension of existing technology. Vogel was never heard from again.
Four years later, however, Guardian appeared on the scene, claiming ownership of the patent and arguing that the same companies owed it tens of millions of dollars in licensing fees (although it was willing to sign agreements for substantially less). Guardian doesn't appear to have a significant web presence (if it has any, it's swamped by the British newspaper conglomerate), so it's impossible to tell if it's anything more than a patent holding company. By 2005, the TV manufacturers had heard enough, and filed a preemptive strike: they attempted to get a judge to declare the two patents invalid.
That case also took a wandering path; the judge that initially heard it consolidated the individual suits into a single case, initially decided there was insufficient legal controversy, and threw it out. By 2006, an appeals court overruled that decision and sent it back for a reevaluation. By 2007, however, the US Patent and Trademark Office had accepted a request to have the validity of the patents reviewed, and the case was put on hold pending the outcome of that review. That's where things stood until recently.
What appears to have sparked this case is the the undated decision that at least some portions of the 158 patent are valid, specifically those pertaining to the entry and comparison of security codes. The world of video content has changed pretty radically in the last five years, and Guardian appears to think that the remaining parts of the patent provides it with a case against a lot of the newer entries in the field. Although the initial focus on V-chip suggests that this patent was intended as a form of parental control, the use of security codes could also apply to DRM schemes, which is why just about anyone offering online video services seems to have been served. If Guardian prevails, the company could be in for a big payday, considering the number and size of companies it has targeted.
source
And it really is a staggering collection of companies; the list includes electronics giants, broadcasters, retailers, and game makers. A partial roster of the 36 targeted parties includes Acer America, Apple, Bang & Olufsen, Best Buy, Bose, Cisco, Costco, Dell, DirecTV, Fujitsu, Lenovo, Microsoft, Motorola, Nintendo, Overstock.com, Radio Shack, Sears, Target, TiVo, and Walmart. GamePolitics, which noticed a report on the suit, wondered why Sony didn't appear. As it turns out, Sony is key to deciphering the history of this case.
It turns out that Sony isn't getting sued because it had already lodged a preventive suit against the patent holding company, Guardian Media Technologies, Ltd., back in 2005, joined by Mitsubishi, Matsushita, and JVC. But all of these companies have a history with the two patents in question, 4930158 and 4930160, that goes back roughly 20 years.
The patents focus on providing a classification signature within the data stream that represents video content. Anything that receives the content can determine whether that content is appropriate to display based on a code provided by whoever is operating the equipment. If there is a mismatch, the device or program could then either block the content (the 158 patent) or display a censored version of it (the 160 patent). The individual who filed these patents, a Peter S. Vogel, appears to have been ahead of his time, as the initial filing was performed in 1988.
It took the advent of the V-chip many years later for the patents to become relevant. At some point in 1999, a lawyer representing Vogel himself started sending letters to major TV manufacturers like Sony and Mitsubishi, saying that their V-chip systems infringed. Sony et. al. suggested they had some "serious questions about the validity" of the two patents, and listed a series of prior art references, while suggesting the remainder of the patent was an obvious extension of existing technology. Vogel was never heard from again.
Four years later, however, Guardian appeared on the scene, claiming ownership of the patent and arguing that the same companies owed it tens of millions of dollars in licensing fees (although it was willing to sign agreements for substantially less). Guardian doesn't appear to have a significant web presence (if it has any, it's swamped by the British newspaper conglomerate), so it's impossible to tell if it's anything more than a patent holding company. By 2005, the TV manufacturers had heard enough, and filed a preemptive strike: they attempted to get a judge to declare the two patents invalid.
That case also took a wandering path; the judge that initially heard it consolidated the individual suits into a single case, initially decided there was insufficient legal controversy, and threw it out. By 2006, an appeals court overruled that decision and sent it back for a reevaluation. By 2007, however, the US Patent and Trademark Office had accepted a request to have the validity of the patents reviewed, and the case was put on hold pending the outcome of that review. That's where things stood until recently.
What appears to have sparked this case is the the undated decision that at least some portions of the 158 patent are valid, specifically those pertaining to the entry and comparison of security codes. The world of video content has changed pretty radically in the last five years, and Guardian appears to think that the remaining parts of the patent provides it with a case against a lot of the newer entries in the field. Although the initial focus on V-chip suggests that this patent was intended as a form of parental control, the use of security codes could also apply to DRM schemes, which is why just about anyone offering online video services seems to have been served. If Guardian prevails, the company could be in for a big payday, considering the number and size of companies it has targeted.
source
