Forgent and Microsoft Sue Each Other Over JPEG

goombah99 writes "CNET reports that the long running Forgent JPEG patent claim story has a new turn. Forgent Networks has filed a lawsuit against Microsoft, alleging the software giant infringed on its digital-image compression patent that serves as the technology behind JPEG. The suit comes in response to a suit Microsoft filed last week, asking the courts to find Forgent's patent unenforceable. '... despite Microsoft's recent inquiries about licensing the patent, they chose to file a lawsuit, leaving us no alternative but to assert infringement claims against it,' stated Richard Snyder, chief executive of Forgent. U.S. patent No. 4,698,672, relates to video image compression and transmission specifically and compression in general. The underlying technology is an amalgam of Cosine Transforms, Huffman coding, and odd details. Major corporations are respecting Forgent's claims: to date Forgent has collected about 100 million dollars in payments from computer and camera companies for this patent settling on suits with 31 companies. Past slashdot stories here, here and here. How might this impact Longhorn? Forgent has shown interest in selling it (to Compaq) so it's not unthinkable Microsoft could just buy it and own it."

Comments

My prediction....

[chrisopherpace]

My prediction is that this will turn into a patents war, since I know that MS at least has quite an arsenal stocked up....

Re:My prediction....

[metlin]

Hopefully, that will be a good thing.

If there is a big enough high profile case that displays the stupidity behind such patents, the USPTO may actually be forced to reconsider the way it handles patents.

Imagine - a big case that brings in all the big fellas into the picture fighting over something the judge rules to be too trivial or too basic.

Aww, who am I kidding. I should lay off the crack.

Why?

[Future Man 3000]

I cannot for the life of me understand why companies choose to fight over patent-encumbered formats when unencumbered formats exist.

Microsoft could dump .JPG (and .GIF for that matter) in favor of .PNG and .MNG tomorrow without being the worse for it.

Re:Why?

[LiquidCoooled]

Would this effect usage in Internet explorer?
(Not that I care in that instance, but if MS backs off using it, then would FF also have to handle licensing it?)

Or is this simply image file creation thats at stake?

Re:Why?

[dabigpaybackski]

What good is a Microsoft JPEG, anway? All you see is a blue rectangle where the picture is supposed to be.

Re:Why?

[Synbiosis]

Microsoft could dump .JPG (and .GIF for that matter) in favor of .PNG and .MNG tomorrow without being the worse for it.

Yes, and then everyone's digital cameras which compress pictures using JPEG can magically update their firmware to compress pictures using PNG.

Re:Why?

[t_allardyce]

PNG/MNG use lossless compression which generally means they don't get as high compression ratios as JPEG. Not to mention that JPEG is pretty much standard on the web, how could microsoft just dump it? The way I see it this whole thing is ridiculous, I was taught JPEG (DCT, Huffman etc) at university, its practically up there with Fourier and basic maths, Forgent are just milking a decades old 'technology' and the poor cow is running dry.

Re:Why?

[nkh]

PNG is the future of GIF, everyone agrees with it. But replacing JPEG by PNG is doomed to fail. PNG are so much bigger (especially phtos) that you can't store or transfer them easily. It's the same problem with compilers: you can have the perfect compiler generating the fastest code possible but it will be so long to compile that no one will use it. If you need 5 minutes to send one birthday photo to your mother and she needs 2 minutes to get it, no one will be interested.

Re:Why?

[Anonymous Coward]

This is not like the GIF situtation. What happened with GIF is that the lzv inventor patented his own invention. With JPEG, the patent Forgent has has nothing to do with JPEG, per se, except for the fact that the patent uses technology similiar to JPEG (DCTs, etc), all of which is technology invented before this particular Forgent patent.

JPEG is an open format, plain and simple. Everyone who invented it made it an open format.

Forgent does have a patent, but it is not for JPEG. It's for something else, and they're just playing the lawyer game to milk as much money from this patent as possible. It's too bad some companies caved in, giving these crooks money to hire more lawyers.

Re:Why?

[hunterx11]

It's because the encumbered formats are so entrenched. GIF is still more popular than PNG, and MP3 is more popular than OGG. The irony is that in both cases, the majority of people have gone on using the encumbered formats, blissfully ignorant of any issues.

Re:Why?

[Anonymous Coward]

Here's some more information, which I got from The web archive (It's not Karma whoring when your Mr. AC):

Content of the Patent US 4698672 Relevant to JPEG

The patent refers mostly to video compression. Some claims can be applied to still image compression as well. The central claims are formulated in Claim 1, 13, 38 and 39.

These describe a well adapted code book used in the encoding process (Claims 1 and 13) and the decoding of the codestream (Claims 38 and 39), followed by entropy encoding. The key point of this algorithm is the use of so called "runs", sequences of identical symbols, encoded by the number and the value of the symbols in the run.

Does JPEG use methods claimed by US-Patent 4698672?

Despite differences in nomenclature and small deviations of the described algorithms the answer has to be in the affirmative, as both algorithms are close enough in details and in general. The similarities are as follows:

1. The data stream is segmentated into runs of the most common symbol.
2. Each run is characterized by a pair of symbols (n, a) with n indicating the length of the run and a information about the next symbol delimiting the run. This extends all the way to the last symbol.
3. The remaining information is encoded using a special codebook.
4. Runs of the most common symbol that reach all the way to the end of the block are encoded using the special EOB symbol.
5. The codestream rewritten using the codebook is finally Huffman entropy encoded.

The algorithm used in JPEG is very close to the technology described in Claims 1,13, 38 and 39. The two methods of encoding are not identical but similar to the point of algorithmic equality.

Can "prior art" be proven in the case of Patent?

The main ideas, methods and numerical experiments of the key parts of the invention, especially Claim 13 concerning the codebook content, had already been published in several articles before the registration of the patent.:

1. H. Meyr, H.G. Rosdolsky and T. Huang, "Optimum Run length Codes, IEEE Transactions on Communications, vol.22, no 6, June 1974 , pp 826-835
2. R.B.Arps, "The Statistical Dependence of Run-Lengths in Printed Matter", Nachrichtentechnische Fachberichte, vol 40, pp 218-226, 1971
3. A.N.Netravali, F.W.Mounts and E.G.Bowen, "Ordering Techniques for Coding of Two-Tone Facsimile Pictures", The Bell System Technical Journal, Vol.55, pp 1539-1552, 1976
4. H.Gharavi, Conditional Variable-Length Coding for Gray-Level Pictures, AT&T Bell Lab.Technical Journal, Vol. 63, pp 249 -260, 1984

The general principle of encoding more common symbols in code of shorter length, and less common symbols in code of increased length has been in use since at least 1828 when Samuel Morse invented his alphabet. The Morsealphabet assigns longer code to less common symbols and shorter to more common ones, thus assign the shortest to e, then n, r, i, s, t. E Shannon formulated a mathematical theory of data compression using statistical correlations between spatially subsequent symbols and the encoding into code of length according to frequency 50 years ago.

Does JPEG Infringe Upon US-Patent 4698672?

First of all, despite the fact that the two algorithms are not truly identical they are similar enough to support the idea that JPEG does touch upon the claims made in the so called "Forgent-patent".

But it can be safely assumed that JPEG does not infringe on the patent as "prior art" can be proven.

The quoted literature does not describe the claims identically. But it does prove that even though the claims are differing in minor details from the ideas, methiods and results expressed within the articles the invention would have been obvious to an expert familiar with the ideas of the articles. They furthermore prove that the whole content of the invention was known to US scientists at the time of the registration of the patent.

This should result in a rejection of any patent related claims by Forgent Networks.

Re:Why?

[Samari711]

It's not lack of time and patience on the part of the examiners so much as the fact that the USPTO uses the number of patents it grants to evaluate how well the office is performing. More patents granted means more revenue for the USPTO and the result is that the USPTO is one of very few government agencies that makes money. So really the USPTO has incentive to be liberal with their granting of patents and let the courts figure out which ones are really valid.

Probably the only solution that the USPTO would like would be to shift more of the cost of getting a patent to the application phase so that they don't have to wait till the patent is aproved to get income from it. Of course that would create a larger barier for smaller inventers but should make people think twice before filing nonsense patents and also would make it more likely for more scrutiny to be applied to each patent that does come though.

This looks like a SCO tactic

[Anonymous Coward]

I think Forgent is playing a SCO tactic here; I have looked at the original patent and conclude that it is not patenting JPEG. In more detail, anything that JPEG uses which is detailed in this patent was discovered by somone besides the "inventor" of this patent.

Forgent doesn't have a leg to stand on; as soon as this case hits the court room, this bogus patent will be declared invalid. The JPEG's group response to this nonsense patent.

Patenting file formats?

[LiquidCoooled]

I thought you couldn't patent a format?

Is it the MS implimentation of saving the file that is at fault, or am I just wrong and the format itself is patented?

Re:Patenting file formats?

[cduffy]

You can patent a compression algorithm. If a format specifies a particular compression algorithm... well, there you are.

Patenting a file format itself... well, it shouldn't be possible. but MS has done it, so in the US at least it demonstrably is.

Re:Patenting file formats?

[natrius]

I hate to once again echo the Slashdot party line on this, but software patents are just BAD.

It's easy for people who program software or are otherwise interested in the software ecosystem to see that software patents are a bad thing. The question is, how are they that different from patents in other industries?

The thing that everyone always mentions is how it's impossible to develop software without infringing on a patent. I agree. There are various other industries in which this is true as well, such as the biotechnology industry.

For example, let's take the polymerase chain reaction, a technique that is necessary to do anything in the biotechnology industry. A company holds a patent on the technique, and I'm not sure if the patent has expired yet. The reason why everyone in the industry needs to use PCR is simple: The industry has a specific lingua franca, DNA, on which every development must be built. There is almost always a "best" way to do something when it comes to biotechnology, because there is machinery inside living cells that you have to work with to get things done. If you can use, for example, an enzyme that a cell already uses to accomplish a task, that's probably going to be the best way to do that task, because building enzymes from scratch to perform a desired task is outside of our reach at this point. So once someone discovers this "best" way, everyone else is going to need it for things to progress.

This is similar to software in the sense that there is usually a best way to get something done. When it comes to algorithms, it's all math, so you definitely have a best way to do something.

We've witnessed how innovation has been stifled in the software industry due to patents, but I'm fairly sure it's happening in many other industries as well. When the founding fathers gave Congress the power to "promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries," a patent system was a good way of accomplishing that. Instead of focusing on the problem of software patents, we need to be discussing whether or not the patent system in its current for is actually promoting progress, and what changes need to be made to it to ensure that it does.

You'd think Microsoft would be more innovative.

[crottsma]

A lawsuit? Stupid. Microsoft should employ the same technique I use at BestBuy. Just purchase the license, use it for a while, and then return it claiming that the salesman scratched it.

Re:This shows ..

[black mariah]

I'm agains Patents, and against copyright.

You DO realize that the GPL and other Free licenses DEPEND on copyright in order to have any standing, right?

Selling to Compaq

[MHobbit]

(to Compaq)

If Forgent was going to sell it to Compaq, wouldn't it just be selling it to HP? Or have I been incorrectly thinking all along about HP buying Compaq, when in fact HP only bought the computer portion of Compaq? I'll go Google for more info...

Its just another case file for them

[t_allardyce]

The great thing about all this is that you can just imagine both Forgent and Microsofts lawyers and PHB's in court, neither having any idea what a discrete cosine transform is or how huffman works, sitting their yawning and listening to engineer testimonies while the judge tries to figure what the fuck is going on.

Burn all JPEGS?

[Husgaard]

I guess we all remember the story of GIF. After this had become an established standard Unisys told the world that they had a patent on the compression algorithm for GIF.

And now the same is happening to JPEG.

What do you think is needed to avoid such 'submarine' patent attacks on established standards?

Patent war?

[Goalie_Ca]

At least the little guy has nothing to worry about. We're obviously not worth enough money to sue.

Re:This shows ..

[Anonymous Coward]

Hey fcuktard, Microsoft is the one trying to get Forgents JPEG patent nullified - not the other way around. It seems like Microsoft has been on the right side of quite a few patent issues recently and I cant remember the last time they were on the wrong side of one but all they take is shit from you idiots. If you want them to do the right thing then give props where theyre deserved. If the 800 lb gorilla is willing to do the world a service by freeing JPEG then they deserve congrats.

MS Vs Forgent

[tyleroar]

Microsoft Gross Profit: 30.12 Billion Forgent Networks Gross Profit: 3.30 Million I wonder who will win...

Re:This shows ..

[aichpvee]

We'd all be better if O'Reilly had never published any books.

Re:Just when does this patent expire?

[Trepalium]

The patent may have a life of up to 20 years. The rules to determine if the patent qualifies for a 20 year life or a 17 year life based on a filing from 1987 are too complex for me to figure out. All new patents filed in any TRIPS signatory nations have 20 year terms.

If Microsoft Loses, will IE finally do PNGs?

[filterchild]

If Microsoft loses this lawsuit, would they finally have to make IE do PNG's correctly?

They lost the patent!!!

[LiquidCoooled]

I just been digging through the USPTO records about this patent (its intruiging in a sadistic way), and I discovered that the physical patent file itself went missing!

05-22-2002 File Marked Found
02-25-2002 File Marked Lost
09-21-2001 Set Application Status
10-06-1987 Recordation of Patent Grant Mailed
07-13-1987 Issue Fee Payment Verified

Heres the link to the info block for the patent.

I was originally looking for expiry information for this patent, but couldn't seem to find it.

Editors Edited out key item in the post

[goombah99]

The editors changed my submission omitting key details. The pattent issue is not cut and dried. Nor is neccessarily absurd patetn abuse. The pattent has two inventors. The first inventor, Dr Chen, is the developer of the Fast Cosine Transform and its applications to compression. Thus the fact that this pattent is based on the Fast Cosine transform is proof that prior art did not exist. The second inventor was also on the JPEG commission that created the standard, so it's reasonableto guess this techinology was put in the standard. The trouble is Dr. Chen published the compression algorithm a year before the patent was filed. In the US, the rule of thumb is you have a year to patent an idea after disclosing it, but exceptions can be granted.

In this case the patent is mainly about compression and transmission of video. So its the combination of things not just the Cosine Transform.

However a close reading of the patent claims shows that it also contains technology useful for still compression like jpeg. The fact that this is buried in the complex details may account for why it took so long for the assignee of the patent to get around to claiming it.

The interesting thing here is that Forgent is willing to sel the patent. It already tried to sell the patent to Compaq. So in theory microsoft could pull a coup here not by breaking the patent but by purchasing it and thereby owning Jpeg. The fact that it already produces a revenue stream sort of underlies that. I also know that I the mpeg compression algorithm may also be based on Fast Cosine Transforms. THere is weaker chance it could be used to claim ownership of mpeg.

Ulterior motives

[metoc]

I suspect M$ has ulterior motives. M$ has licensed stuff (i.e. LZW/GIF) before and has the cash, so why take the risk of losing in court and making a big payout.

So why else?

One. The patent is truly unenforceable, and M$ is confident it can prove it in court.

Two. They want to set a precedent. If you fail to enforce a patent, and it (accidently) ends up in a standard that becomes pervasive. You can't be johnny come lately and start enforce it. Obviously if people knew the patent existed, they wouldn't have used it in JPEG, or companies like M$ would have only used JPEG if they were willing to pay the royalties. Additionally Forgent is charging royalties as if nobody has a choice (which they don't have now). If they had enforced the patent and asked for royalties 10-15 years ago it would be in limited use and no where near as valuable.

Re:No, JPEG serves a purpose

[Anonymous Coward]

What a pathetic set of definitions.
GIF. Lossless, but limited to 8 bit colour pallette.
JPEG, can use lossy compression but true color.
PNG, non-lossy, can use various pallette sizes including true-colour with full alpha channel. Can use a variety of compression algorithms, many of which are superior to that used by GIF.
MNG. Friggen Google it. Who cares if it ain't well known - another patent war would be just push this spec needs.
Hell. This set of definitions ain't great either, but is more accurate than the gibberish you typed.

Re:If you live by the sword.

[Husgaard]

And here they are trying to have software patents enforced within Europe?

I think there are three reasons why Microsoft wants to have software patents legalized in Europe:

• They want it because they think it is their last possible way to fight their worst (and last remaining real) competitor: FOSS.
• They want their current (illegally issued, and thus currently illegal) patents to be legalized so they can use them for defensive purposes.
• They know that with about 50,000 illegally issued patents in Europe there will be a big patent war where everybody sues everybody in Europe if these illegal patents are legalized. This will give them (and the rest of the US software business) a big competitive advantage.

Re:Just when does this patent expire?

[Husgaard]

Yes, I believe just like the Mickey Mouse copyright extension.

Nonetheless the Mickey Mouse copyright extension was upheld by the US supreme court.

Re:Use It or Lose It

[dlamming]

You're wrong. Patents don't have to be defended, but trademarks do. If I own a patent, I can choose to enforce it against whomever I choose, whenever I choose (unless I've promised not to, hopefully in writing).

There's sort of an exception to this in case law: if I notify a patent holder that I might plan to use their patent, and they don't respond to me within three years, I can go ahead and use it with limited damages. I may still get sued for future damages once they notice I'm infringing, but I can't get retroactively sued for damages, and I probably won't prohibited from selling my product if I pay a suitable royalty.

Re:Not SCO?

[spinkham]

As far as I know, there aren't any patent free replacements for JPEG currently available. If this situation turns into something similar to the GIF situation, there will be one.
Remember, there was no PNG either until the GIF patents came to light, or OGG Vorbis until the MP3 patent problems started.
Compression is a patent minefield however, as the MP3, GIF, and now JPG situations show. You do your best to not use patented alogrithms, but a few years down the road someone finds some obscure patent they say applies. Vorbis and PNG might still run into this trouble, as might any other piece of software in the current climate.
In case you haven't noticed, software patents in their current form SUCK. Hard.

Perhaps not patent abuse, but they're pretty late

[Animaether]

Some may claim it's not abuse... I suppose it's ot

Some claim it was a submarine patent... well no, it wasn't. (Look up the definition of a submarine patent first)

However...
- Their patent was issued in October 1987
- Their patent went unenforced until July 2002

That's a 15 year gap.
I know that unlike trademarks, patents need not be enforced. But that's a change I would gladly see made.

So somebody asked what we can do to avoid these things. Unfortunately, as long as patents exist, I don't think we can avoid them.
What we -can- do is decide better how to deal with them.
I'm not one for completely ignoring patents altogether - they have their good uses, even in software.
But in cases such as these, I think that if a patent hasn't been enforced over a certain technology for over N years (I suggest 3), then I think the patent holder should be barred from making any claims to patent infringement.
I'm sure there's plenty of loopholes and problems with this, but the basic principle would be
- you still get to patent stuff
- people still need to respect that patent. So if you make a product and your patent search results in a hit, you still have to license the patent (if applicable)
- you still get to hold those who, somehow, missed your patent accountable for it within an N-year timeframe
- those who somehow missed your patent, and you somehow miss their technology or the realization that it infringes on your patent, for > N years won't suddenly be met with a patent lawsuit
-- which means that any invention that got wildly popular can't suddenly be milked for all its worth because a bunch of suits managed to twist patent interpretations enough to make it applicable to that invention
-- small companies won't be sued out of existance just for missing a patent > N years ago

-----

As for another user's question... what are open (lossy compression) alternatives ? There's plenty of 'open' alternatives. Problem is that there's a patent of some form behind every single one that I'm aware of. The JPEG thing, JPEG2000, Wavelets, Gradient Tesselation, Fractal..

I'm not sure if BTPC actually has any patents associated with it. However, the author claims not.
( http://www.intuac.com/userport/john/btpc5/index.ht ml )

-----

Finally.. I wonder what all this Forgent stuff will do, if anything, to the StuffIt guys; http://hardware.slashdot.org/article.pl?sid=05/01/ 12/0725217&tid=198
As they use, at least partially, a different compression (to get even smaller files).
If all this Forgent stuff doesn't apply to them, and Forgent gets to keep the patent business going, the Stuffit format may prove to be attractive to some companies as it would require minimal change in code/etc. (at least when compared to a completely different format)

patent enforcement and serendipity

[goombah99]

As someone who has patents on laser radar methods that are about to expire. I can say I have no idea if people are using my techinuqes in their product or not. How in the hell would I be able to find out. I could not even afford to buy one of the many lidar instruments on the market and check. Even if I could, it would be hard to tell if it was or was not in use. It would be like trying to see if a certain patented math algorithm were encoded inside a computer chip in hardware. So I wait hoping that maybe at the last second I see a paper or something that mentions that someone is using the methods. But discovering your patent is being abused is serendiptous. Thus if you believe in patents then you need to put most of the burden on the people who use methods without checking for patents on them. This is of course an almost equally difficult task. The better solution might be higher thresholds for patent claims.

"Defensive Patent" my a$$

[jettoblack]

IIRC, the original owner of this patent really did create the JPEG format (or at least came up with the basics involved) but they filed this patent defensively, just so someone couldn't come along later and do this. But when Forgent bought the patent, they decided not to keep its defensive stance.

IMHO, public remarks about a patent being defensive-only should be enforced strictly, that is, put a comment in the patent record that definitively marks this patent as defensive-only and not eligible for actively suing anyone, and which cannot be removed for the entire life of the patent or any extensions based on it.

Re:Just when does this patent expire?

[lottameez]

They used to be 17, but got extended (and grandfathered) to 20 when the US signed up for the GATT treaty.

Re:Just when does this patent expire?

[angle_slam]

The rules to determine if the patent qualifies for a 20 year life or a 17 year life based on a filing from 1987 are too complex for me to figure out.

The basic rule actually pretty simple. The term is either 17 years from the issuance of the patent or 20 years from the filing date. Calculate both dates. Whichever is later is the patent term.

For patents filed after June 8, 1995, it's even simpler--20 years from the filing date. In the present case, the 20 year date is longer, so it will not expire until October 27, 2006.

The more complicated part is determining if the maintenance fees are paid and if the patent in question is a continuation.

from TFA

[bechthros]

""(Forgent) is subverting the JPEG standard to extract millions of dollars in unwarranted profits," Microsoft's lawsuit states."

Sounds like Microsoft is against the use of IP laws as bludgeoning instruments to make up for lack of competitiveness in the marketplace.

Shoe, meet the other foot. It will be very interesting to see how this develops. Can you picture MS as a crusader against IP abuse?

Me neither.

It's not funny in reality though.

[Anonymous Coward]

I understand the Score:Funny moderation of the parent because the image of two teams of lawyers heatedly debating something about which they are all entirely clueless definitely *IS* funny.

However, in reality, this is what is happening today in hundreds or thousands of subject areas, and the end result is nothing short of terrifying: a whole nation's progress is at the mercy of clueless talkers, instead of the do'ers of society.

It doesn't take a genius to realize that this can't be good for the country's future.

Re:No, JPEG serves a purpose

[mactari]

MNG. Friggen Google it. Who cares if it ain't well known - another patent war would be just push this spec needs.

Hey, that Googling was a great idea! Miramar Mining was up 5.15% just Friday, putting it back over the dollar mark. I can only assume it's because they have a dog in this JPEG format patent fight.

Gotta read between the lines, folks. Man, I love me some /. stock tips.