British Telecommunications Plc. v. Prodigy
Encyclopedia
British Telecommunications Plc. v. Prodigy was a patent infringement
case which determined whether a patent
related to communications between central computers and their clients was infringed by Internet service providers through hyperlinks. Judge Colleen McMahon
of the United States District Court for the Southern District of New York
ruled that Prodigy Communications Corporation had not infringed the patent held by British Telecommunications Plc through its use of hyperlinks. On summary judgment
, McMahon held that there were substantial differences between British Telecommunications' patent and the method of operation of the Internet. The decision limited patent protection for Internet service providers' use of hyperlinks, protecting the providers from licensing fees related to this integral part of Internet
technology.
on October, 10 1989. The patent application had been filed 12 years prior, in July 1977, and underwent many changes during the ensuing years. The patent described a system in which multiple users, each located at a remote terminal, could access data stored at a central computer. A user at a remote terminal would be able to access information stored in a central computer via telephone network. Information would be stored and transmitted in the form of blocks, with each block divided into two parts: a first portion including information to be display displayed, and a second portion, not intended for display, which contained the complete addresses of other blocks of information linked to the current display page.
In June 2000, BT sent letters to Prodigy Communications Corporation ("Prodigy") and 16 other Internet service providers (ISPs), asking them to pay licensing fee for BT's hyperlink patent; all refused. BT sued Prodigy, the oldest ISP in the U.S.A, for patent infringement on December 13, 2000. In suing, BT claimed that the Sargent patent covered hyperlink technology, one of the building block of the World Wide Web
. BT argued that not only had Prodigy directly infringed the Sargent patent, but that it was also liable for inducing its users to infringe BT's patent. Prodigy submitted a motion for summary judgment
of non-infringement, arguing that the technology it used to provided Internet access to its consumers was not covered by the claims of the Sargent patent.
constituted the first phase, with infringement analysis following. After issuing an opinion and order following the Markman hearing on March 13, 2002, the court conducted the infringement analysis to determine whether the claims of the patent, as interpreted by the Markman analysis, infringed upon the Sargent patent.
code is the primary language of the World Wide Web and of the Prodigy internet service. The court suggested analysis of the following example of HTML code as evidence that this primary language of the World Wide Web does not use blocks.
According to the Court, each URL address is adjacent to each image or phase for display. In other words, the 'first portion' solely for display and the 'second portion' intended to provide address are intermingled in a single URL. Therefore, the Internet does not transmit information as described by the Sargent patent.
( "URL") standard that uniquely names the location of resources requires additional information, in the form of a TCP/IP protocol, in order to access a web page from a web server. More specifically, when a user requests information, the web browser the user is using first obtains the IP address
of the server where the corresponding information resides and then accesses the external Domain Name System
(DNS) server to get the desired information. Thus, the way internet finds the location of requested information is not complete as specified in the Sargent patent.
Patent infringement
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or...
case which determined whether a patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
related to communications between central computers and their clients was infringed by Internet service providers through hyperlinks. Judge Colleen McMahon
Colleen McMahon
Colleen McMahon is a United States federal judge.Born in Columbus, Ohio, McMahon received a B.A. from Ohio State University in 1973 and a J.D. from Harvard Law School in 1976. She was in private practice in New York from 1976–1979 and from 1980 to 1995. She was a Speechwriter / special assistant...
of the United States District Court for the Southern District of New York
United States District Court for the Southern District of New York
The United States District Court for the Southern District of New York is a federal district court. Appeals from the Southern District of New York are taken to the United States Court of Appeals for the Second Circuit The United States District Court for the Southern District of New York (in case...
ruled that Prodigy Communications Corporation had not infringed the patent held by British Telecommunications Plc through its use of hyperlinks. On summary judgment
Summary judgment
In law, a summary judgment is a determination made by a court without a full trial. Such a judgment may be issued as to the merits of an entire case, or of specific issues in that case....
, McMahon held that there were substantial differences between British Telecommunications' patent and the method of operation of the Internet. The decision limited patent protection for Internet service providers' use of hyperlinks, protecting the providers from licensing fees related to this integral part of Internet
Internet
The Internet is a global system of interconnected computer networks that use the standard Internet protocol suite to serve billions of users worldwide...
technology.
Background
British Telecommunications Plc. ("BT") developed technology related to computer networking. BT was granted the "Sargent Patent (U.S. Patent No. 4,873,662)" by the United States Patent and Trademark OfficeUnited States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
on October, 10 1989. The patent application had been filed 12 years prior, in July 1977, and underwent many changes during the ensuing years. The patent described a system in which multiple users, each located at a remote terminal, could access data stored at a central computer. A user at a remote terminal would be able to access information stored in a central computer via telephone network. Information would be stored and transmitted in the form of blocks, with each block divided into two parts: a first portion including information to be display displayed, and a second portion, not intended for display, which contained the complete addresses of other blocks of information linked to the current display page.
In June 2000, BT sent letters to Prodigy Communications Corporation ("Prodigy") and 16 other Internet service providers (ISPs), asking them to pay licensing fee for BT's hyperlink patent; all refused. BT sued Prodigy, the oldest ISP in the U.S.A, for patent infringement on December 13, 2000. In suing, BT claimed that the Sargent patent covered hyperlink technology, one of the building block of the World Wide Web
World Wide Web
The World Wide Web is a system of interlinked hypertext documents accessed via the Internet...
. BT argued that not only had Prodigy directly infringed the Sargent patent, but that it was also liable for inducing its users to infringe BT's patent. Prodigy submitted a motion for summary judgment
Summary judgment
In law, a summary judgment is a determination made by a court without a full trial. Such a judgment may be issued as to the merits of an entire case, or of specific issues in that case....
of non-infringement, arguing that the technology it used to provided Internet access to its consumers was not covered by the claims of the Sargent patent.
Court analysis
To resolve this case, the US District court conducted through analysis on terms specified in claims of the Sargent patent and analyzed if the patent covered the hyperlink technology. The court decided that there were no disputed issues of material fact in this case, since the Sargent patent was by no means the same as internet and Web-based technology, and, therefore, granted Prodigy's request for summary judgement. British Telecom lost this case. In determining whether Prodigy had indeed infringed BT's Sargent patent, the court separated the patent trials into two phases: a Markman hearingMarkman hearing
A Markman hearing is a pretrial hearing in a U.S. District Court during which a judge examines evidence from all parties on the appropriate meanings of relevant key words used in a patent claim, when patent infringement is alleged by a plaintiff...
constituted the first phase, with infringement analysis following. After issuing an opinion and order following the Markman hearing on March 13, 2002, the court conducted the infringement analysis to determine whether the claims of the patent, as interpreted by the Markman analysis, infringed upon the Sargent patent.
Markman hearing: patent claim analysis
A Markman hearing is a process in which the court translates the complicated words of a patent claim into plain English in order to clarify the facts upon which infringement and invalidity analysis hinge. Since BT had reduced the number of asserted claims in the Sargent patent from seven to five on June 22, 2001, and then from five to four on January 18, 2002, the court conducted the Markman hearing based only on claims 3,5,6 and 7 of the Sargent patent. The court ruled that the central computer means is a central computer fixed in one location in which every available piece of information accessible to users at a removed terminal is stored. Additionally, the meaning of the term blocks of information was clarified. The court ruled that each block was required to contain a first portion and a second portion which are stored together, stored next to one another in memory, and can be separated from one another. The first portion includes information component that is intended for display, while the second portion contains the complete address for each of the other blocks of information referenced in the first portion and other information to influence the display or reduce the complexity of communication. Lastly, the court concluded that a complete address in the Sargent patent is a physical (i.e. in memory), non-virtual address from which requested blocks of information are called up without reference to other information.Does the Internet have a central computer?
The court held that Prodigy had not infringed the Sargent patent, because the Internet has no "central computer". The Sargent patent required that all information requested by users be stored in a single hub called the central computer and sent from the central computer to a remote terminal. However, the Internet is a networked system in which different computers are linked together so that one terminal can located desired information from any of the other computers it is connected to. According to the court, the Internet functions in a manner which is antithetical to that of a digital information storage system having a central computer, as described by the Sargent patent.Does the Internet contain "blocks of information?"
The court found no evidence that the Internet contains blocks of information in which information is separated into two separable portions. HTMLHTML
HyperText Markup Language is the predominant markup language for web pages. HTML elements are the basic building-blocks of webpages....
code is the primary language of the World Wide Web and of the Prodigy internet service. The court suggested analysis of the following example of HTML code as evidence that this primary language of the World Wide Web does not use blocks.
- document.write (HTML Cache-Array[34]; target=' —top'>Yahoo! profits meet forecasts
According to the Court, each URL address is adjacent to each image or phase for display. In other words, the 'first portion' solely for display and the 'second portion' intended to provide address are intermingled in a single URL. Therefore, the Internet does not transmit information as described by the Sargent patent.
Does Prodigy's Web service include "complete addresses?"
Once more, the court judged in favor of Prodigy, saying that Prodigy internet service did not include the complete address of a piece of information, as required by the Sargent patent. The Uniform Resource LocatorUniform Resource Locator
In computing, a uniform resource locator or universal resource locator is a specific character string that constitutes a reference to an Internet resource....
( "URL") standard that uniquely names the location of resources requires additional information, in the form of a TCP/IP protocol, in order to access a web page from a web server. More specifically, when a user requests information, the web browser the user is using first obtains the IP address
IP address
An Internet Protocol address is a numerical label assigned to each device participating in a computer network that uses the Internet Protocol for communication. An IP address serves two principal functions: host or network interface identification and location addressing...
of the server where the corresponding information resides and then accesses the external Domain Name System
Domain name system
The Domain Name System is a hierarchical distributed naming system for computers, services, or any resource connected to the Internet or a private network. It associates various information with domain names assigned to each of the participating entities...
(DNS) server to get the desired information. Thus, the way internet finds the location of requested information is not complete as specified in the Sargent patent.