Legal Actions by TechSearch and Acacia
In 2002 TechSearch sued several companies for infringing one of my patents. Among them were Electronic Arts, Intuit, Canon and Brother. These were some of the largest companies in their respective industries at that time.
The patent TechSearch asserted in the litigation was one that uses CDROM or DVD instead of satellite as the delivery mechanism of documents with embedded links. As explained in another page of this site, my patents explicitly disclosed that CDROM could be used to "broadcast" documents containing embedded links, i.e., delivery of documents to a large number of buyers. This system did not exist before my patent filing.
At the time of the litigation software download was not popular because of the slow speed of the modems. Software companies used CDROM or DVD to deliver their software to buyers. Other technology companies often included a CDROM or DVD with their products. These CDROM/DVD typically contained digital version of user manual, installation software, and a link to the websites of the sellers. Buyers of these products can easily visit sellers’ websites.
Some people asked: Isn't it obvious for companies to give buyers CDROMs that contain documents with embedded links? How can this be patentable?
Under patent law, obviousness is measured at the time of patent filing instead of hindsight at the time of litigation. This is because everything is obvious in hindsight. For example, "link" is obvious today but it was innovative when Ted Nelson coined the term "hypertext" in 1963. On another page of this site there is a description of my invention and "prior art." I pointed out there that only a small number of computer professionals in research institutions had heard of and used "links" when I filed my patent applications. Product packaging people of companies at that time would not have heard of links. In addition, the vast majority of buyers didn't have browsers and would be confused by links. Consequently when companies shipped their products to customers in 1994 they would not even think of including a CDROM that had documents with embedded links on it. They shipped that type of CDROMs only after browsers and links became household words a few years later. By that time everything seemed obvious, including "links" which took 30 years from conception to wide usage. That is hindsight and has no effect on the patent.
After Acacia acquired TechSearch, it created a subsidiary called Disc Link Corp. to handle litigation.
The litigation generated lots of attention. It was reported by mass media in Asia, Europe and North America. Recently I did a simple search on the web about the litigation. Many of the reporting I read at the time of the litigation are no longer available because websites disappeared over time and many media had sunset policy discarding old articles. Below are links to some of the online articles that still exist in early 2021:
North America:
IP firm sued, settled with Novell on different patent in August (ZDNet)
Acacia says unit resolves patent suit with Oracle (Reuters; accessed November 2020)
Europe:
Acacia fordert Lizenzzahlungen für Hyperlink-Patent (Germany)
La empresa TechSearch acusa a EA, Intuit y Simantec de infringir patentes (Spain)
A TechSearch beperelte az Electronic Arts-ot (Hungary)
Rivendicano un brevetto su certi link (Italy)
Монетизация патентов (Russia)
Asia:
Hark Chan 及びIP Innovationとの侵害訴訟 (Japan; accessed December 2020)
「CDからのハイパーリンク特許」侵害で訴訟発生 (Japan)
Acacia says unit resolves patent suit with Oracle (India)
I remember I read an article written by the editor of an internationally circulated computer magazine. The magazine had sales in North America, Asia and Europe. It was translated into Japanese and at least one European language. The editor said that he was contacted by several lawyers asking him (and his colleagues) for old CDROMs. He wrote the article inviting readers of the magazine to help find a CDROM that could invalidate my patent. The editor described the CDROM he needed, and encouraged readers to contact him so he could introduce them to defendants' lawyers. Apparently none of them were able to find such CDROM. The patent remains valid after repeated legal challenges by armies of lawyers hired by major companies.
TechSearch and Acacia understood the broad scope of my invention in addition to CDROMs. They spent money to apply for new patents directed to other aspects of my invention disclosed in my original 1994 filing. New patents of my invention were granted.
Click here to read how these new patents brought more successes.