Replies to post #184116 on NeoMedia Technologies, Inc (NEOM)

[jonesieatl]

GIBBER the answer you received was perhaps ...

... somewhat misleading with its phraseology.

"Both the DM and QR codes are open source codes and are covered under NeoMedia's indirect patent for retreiving information from the internet from a camera cell phone."

NEOM's patent covers one particular way (indirect) the DM and QR codes CAN be used. It does not cover the way(s?) they ARE mostly used throughout the world as well as in this country.

And, unfortunately, we have seen little if any proof that 'they get royalties for(sic) from people who use' anything at all.

jonesie

[JPetroInc]

Gibber don't mind the jibberish from a lowly sales man who will try to convince and spin you that the NeoMedia's patents aren't what they are intended to be. Here is a very good synopsys from Anthony Barkume, Esq. - someone who has the formal credentials and impeccable education to describe in detail what NeoMedia's IP intended uses are. Anthony Barkume, Esq. single handedly took down the EFF Patent Busting effort against NeoMedia - a 1st of its kind against the EFF:

CASE STUDY - REEXAMINATION OF US PATENT NO. 6,199,048

http://www.barkume.com/Site/IP_News/Entries/2009/2/25_CASE_STUDY_-_REEXAMINATION_OF_US_PATENT_NO._6%2C199%2C048.html

Main Practice Areas Professionals IP News Portfolio IP Links This case is the first successful defense of a patent being reexamined by the PTO at the request of EFF in its grandiose "Patent Busting" project. When it learned of the reexamination of U.S. Patent No. 6,199,048 ("the '048 patent"), NeoMedia Technologies, Inc. and its counsel were up to the task of clarifying the patent claims in order to establish how those claims are indeed patentable over the prior art already of record, the prior art submitted by EFF, as well as any additional prior art found by the PTO as part of its own searches. By requesting the PTO to reexamine the '048 patent, EFF in fact enabled NeoMedia to strengthen its patent since it greatly increases the likelihood of being upheld in a court of law.

The eighty-nine claims that resulted from this reexamination process encompass the specific embodiments set forth in the '048 patent, and according to Dennis Priddy, Senior Vice President of Operations at NeoMedia, cover the existing business model of NeoMedia as well as many competing products in use today. During reexamination, NeoMedia clarified that (1) the bar code resolution database resides on a remote server computer, (2) the database stores predetermined relationships that link bar code data to a pointer (e.g. a URL) and (3) the pointer is returned from the database to the user device to enable that user device to communicate with the remote information computer directly (such as with a browser redirect command). Further according to Dennis Priddy, NeoMedia is unaware of any instance in commercial use today where the resolution database resides anywhere but a remote server computer. From a practical commercial standpoint the '048 patent has clarified and strengthened, not narrowed.

EFF claims on its website that third parties can now design around the '048 patent, and purports to inform the pubic how to do so. Of course, any system that is not encompassed by the claims of any patent is a "design around" of that patent. That is true with respect to any patent. But the real issue to consider is - what is the commercial value of such a designed around system? Theoretical design arounds may be an interesting philosophical exercise in which to engage, but they provide no real commercial value. For example, one might be able to design around a patent on a four-wheeled car by producing a three-wheeled version, but the resulting product is unstable, unsafe, unmarketable and would certainly be unsuccessful. We believe the same would be true for an attempted design around of the '048 patent.

EFF has also continued to claim on its website that the clarified '048 patent claims are not "any more novel than the original ones" and that they are "of suspect validity." EFF offers no basis however for this unjustified conclusion, alleging only that the patentable features of the revised '048 patent claims "were well known long before the NeoMedia patent application was filed." It is reasonable to assume that EFF filed all of the prior art of which it was aware that it believed would invalidate the '048 patent. Given that assumption, there is no logical basis for EFF to now question the reasoned decision handed down by the PTO and its three-member panel. Simply put, NeoMedia was able to address the prior art, clarify its claims, and fully strengthen its patent position.

In fact, it was advantageous for NeoMedia to be given the opportunity to address this prior art and clarify its claims in this reexamination forum. During reexamination, the patent owner is able to work across the table with the PTO to explain the differences between its claims and the prior art, to clarify the claims (as NeoMedia did), and to answer any questions the Examiners may have. The alternative to reexamination would be to address these issues in court during litigation, such as a defense raised by a defendant in a patent infringement suit. However, in court the patent owner is unable to amend its claims - they will either stand or fall exactly as issued. Therefore if any clarifying revisions may need to be made, the patent owner is unable to do so in a litigation forum, and the patent runs a higher risk of being invalidated. In addition, the PTO Examiners that conduct the reexamination proceeding are presumably much more experienced in patent and technical issues than are judges and juries, so the PTO is generally a much better forum in which to address these issues than is a court of law. It is also much less expensive to participate in a reexamination than in litigation. All of these factors came into play in this case, in which NeoMedia was able to clarify its claims and end up with a much stronger patent. (It is noted that there are other factors that should be considered when deciding on a reexamination as a course of action, which are beyond the scope of this case study.)

The Reexamination Procedure

We will now take a look at exactly what has transpired. EFF first requested the PTO to reexamine the '048 patent in April 2007, although a buzz was apparently circulating in the industry way back in 2004 that EFF was going to request reexamination of at least one NeoMedia patent. The PTO rejected EFF's first request, stating in a Notice of Failure to Comply that EFF failed to provide a detailed explanation of the pertinency and manner of applying the cited prior art to the '048 claims. In particular, EFF cited numerous prior art documents but gave no explanation how they related to all of the '048 patent claims in the manner required by the PTO rules of practice. EFF tried again by filing another (corrected) Request on June 8, 2007, which was still found to be insufficient, and as a result that attempted reexamination proceeding was formally terminated. EFF tried a third time to get it right, by filing another Request on July 26, 2007. This Request was finally accepted by the PTO and the current reexamination was underway. It is understood that the PTO will grant a request for reexamination approximately 90% of the time; therefore this grant was not unusual.

The EFF Request included over twenty "newly-discovered" references that were alleged to invalidate the '048 claims either alone or in combination, although EFF pointed only to two of primary interest (Wellner and Baus, explained below). The PTO issued an Office action on July 3, 2008, in which it relied on those two primary references as well as a third one in making its claim rejections (RFC 1738, also explained below). We went to work immediately on defending this important patent by reviewing the Office action and cited references, which confirmed our belief that the inventions in the '048 are indeed patentable.

Our first task was to meet in August 2008 at the PTO in order to interview with the three member panel of experienced patent examiners who were assigned to this case. At the interview, we discussed the shortcomings of the prior art and how the '048 inventions were clearly patentable over this prior art. We proposed several clarifications that would be made to the claims in order to help the panel understand our position. Although no formal agreement was reached (which is the norm in these interviews), it was apparent that we had made our case clear to the panel.

We then followed up the meeting at the PTO with our Amendment, which is a more formal written document that reiterated our position as explained at the meeting. In the Amendment, we addressed the issues in the following manner.

The first primary reference, US Patent No. 5,640,193, MULTIMEDIA SERVICE ACCESS BY READING MARKS ON AN OBJECT, is well known in the industry as the Wellner "direct encode" patent. EFF in its Request erroneously claimed that the Wellner patent was not cited during prosecution of the '048 patent, which is incorrect since it was in fact cited during prosecution of a parent application that carries over by operation of law to the '048 prosecution. In any event, we of course knew that the Wellner reference is inapplicable to the '048 claims since, among other things, Wellner teaches only a system in which the URL or pointer is encoded directly into the bar code itself rather than an "indirect" system in which the URLs are stored in a database and accessed with a bar code index such as a UPC code.

Therefore, we clarified the claims to provide that the bar code index is transmitted to the remote server, in which the bar code-to-pointer database resides. In addition, we clarified that the database of records has predetermined relationships that link an index (the bar code data) to a pointer (a URL). We also clarified that the pointer is returned from the remote server database to the user device to enable that user device to establish communication. None of these inventive features were described or suggested in the Wellner direct encode patent reference. Interestingly, the inventors of the '048 patent had also described a direct encode system in its patent application, but in fact recognized its shortcomings when it developed its patented indirect access system (see, for example, columns 2-3 of the '048 patent).

Due to the clarifications made to the original '048 claims, we were able to consolidate the number of claims from the original ninety-five to the current eighty-nine claims that have all been deemed patentable.

The second primary reference, US Patent No. 4,780,599, APPARATUS FOR RETRIEVING STORED INFORMATION ABOUT VARIOUS ITEMS IN RESPONSE TO CODING ON THE ITEMS, issued in 1988 from a 1985 application filed by Baus. The Baus reference is even less relevant than the Wellner reference. Baus describes a self-contained local laser disc system in which information about a product is retrieved from a laser disc and played back for a consumer who has scanned a bar code on that product. As a self-contained system, Baus did not provide the ability to send the bar code data to a remote server over a network such as the Internet, or the ability to obtain information from one of many available remote information servers over the network, as in the '048 inventions. Baus was easily distinguished from the inventions of the '048 patent.

The third primary reference relied on by the PTO in the Office action was Request for Comments (RFC) 1738, Uniform Resource Locators. A series of RFC documents were published by the Internet Engineering Task Force (including the famous Tim Berners-Lee) as one of the building blocks of the operation of the Internet and the World Wide Web. In particular, RFC 1738 contains basic URL protocol and syntax information, but in no way has any relevance to the specific inventions of the '048 patent. We explained again in our Amendment document how neither the Wellner nor Baus references, alone or in combination with RFC 1738, rendered the claims of the '048 patent (as clarified above) unpatentable. It is noted that the prior art documents RFC 882 and RFC 883, which relate to name servers and resolution processes, were in fact cited by NeoMedia during the original prosecution of the '048 patent, and the original '048 claims were deemed by the PTO to be patentable over those RFCs. RFC 1738 was no more relevant to the patentability of the '048 claims then were RFCs 882 and 883.

Knowing how off-base these "newly discovered" references are to the '048 claims, it was therefore no great surprise to us when the PTO terminated the reexamination last week by indicating allowance of the pending claims in its Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC). As stated in page 5 of the NIRC:

"the prior art fails to teach or suggest the steps of reading with a user computing device a data carrier modulated with an index; extracting a pointer from the database as a function of the index; returning the pointer to the user computing device over the network; and the user computing device using the pointer to establish communication directly with the remote information computer identified thereby."

We expect to receive the Reexamination Certificate in due course, which will be the final step in the formal granting of these clarified claims. Since this has been an ex parte reexamination process, EFF has no right to appeal the PTO's well reasoned decision.

Summary and Conclusions

The reexamination process initiated by third party requester EFF provided NeoMedia with the opportunity to clarify and consolidate its patent claims under the heightened scrutiny of the PTO reexamination process. NeoMedia was able to clarify that the claims of the '048 patent cover reading with a user computing device a data carrier modulated with an index (e.g. a bar code); extracting a pointer from the database as a function of the index (e.g. a URL); returning the pointer to the user computing device over the network; and the user computing device using the pointer to establish communication directly with the remote information computer identified thereby. As NeoMedia is unaware of any commercial product in which the resolution database resides anywhere but a remote server computer, there is no narrowing of the patent from a practical standpoint.

[Poptech]

Gibber: It means NeoMedia and Mobile Tag can license one very specific method of indirect patents. Despite Barkume's insinuation that the patent office granted 89 claims for a big win over the EFF, at least 32 of the claims were modified and all of the claims were narrowed by the reexamination since every independent claim was modified. The result is the once broad patent only covers one very specific indirect method: scan the barcode and retrieve one line of data, the URL. While there are many ways to handle indirect, a second way to handle the indirect method is to return content to the user phone (instead of just the URL).