PUBPAT Scores Win in JPEG Patent Fight

The Public Patent Foundation claimed victory Friday after the US Patent Office ruled that the evidence of "prior art" supplied by the interest group was sufficient to invalidate a JPEG patent that Forgent Networks has been asserting against various companies.

Forgent acquired the rights to the data compression patent, which covers the JPEG image format, through a 1997 purchase of Compression Labs. It did not start enforcing the patent until about a year ago.

The company has since either sued or entered into litigation with dozens of companies over the rights to use the technology.

The litigation process has been lucrative for Forgent, garnering over $105 million in licensing fees as a result from over a dozen companies. However, several companies are still resisting, including Acer, Apple, Canon, Dell, Fuji, HP, IBM, Microsoft, Palm, Sun, TiVo, and about two dozen others.

PUBPAT first announced that it was asking the USPTO to revoke the compression patent in November of last year. At the time, it said that Forgent's actions were causing "substantial public harm" and it was harassing anyone who implements the JPEG support in its products.

While Forgent does have the opportunity to appeal the decision, PUBPAT said that 70 percent of the time, the patent is either revoked or significantly modified when a third-party request for reexamination is granted.

"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," Ravicher continued.

Forgent, on the other hand, saw things differently. In a statement, the company said that 27 of the 46 claims within the patent were upheld, and that the action "was non-final," meaning that the claims could still be upheld if the company can show sufficient evidence on appeal.

"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."