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Busting the Disc Link CD-ROM Patent

As the last president of the now-extinct Info-Mac Network, I have several times in the last few years received requests from lawyers or their staffs for certain CD-ROMs, originally produced by a company called Pacific HiTech, containing snapshot copies of the Info-Mac Archive at various points in its history. (There were eight of these CD-ROMs, the first created in August 1992, the last in May 1996; TidBITS noted the first in “Internet CD-ROMs” 1992-10-19, and published a fairly extensive and historically quite interesting review of the second one in “Info-Mac CD-ROM II: The Monster Archive,” 1993-07-05.) I don’t have any of those CD-ROMs,
but TidBITS Contributing Editor Matt Neuburg, an inveterate collector, has the complete set, and he has on several occasions provided the lawyers a copy of a particular CD in which they were especially interested, namely Info-Mac CD-ROM III, from January 1994.

We have of course been curious about why these lawyers wanted this CD. We knew it had something to do with the presence of hyperlinks in documents on the CD; those hyperlinks are there because the CD contains, among other things, the ReadMe for Chuck Shotton’s Web server MacHTTP, which itself is an HTML document, as well as some issues of the Trincoll Journal, a Web-based magazine. These documents date from the very beginnings of the Web (HTML itself was invented about 1990, and the earliest Web browsers, such as NCSA Mosaic, were released in 1993), and thus this particular CD is one of the earliest known to contain a hyperlinked document. But the lawyers have always been circumspect about the exact details, merely saying that they
wanted the CD in order to defend against a spurious patent, and never identifying the client or acknowledging that a lawsuit had been filed. Attorney-client privilege and all that.

Thanks to a recent Information Week article, we’ve finally learned what’s going on. A patent infringement lawsuit was filed in April against a number of companies, including Avid Technology, Borland, Corel, Eastman Kodak, EMC, Novell, Oracle, and SAP, among others, by a company called Disc Link.

The lawsuit claims that these companies are infringing U.S. patent 6,314,574, which describes an “information distribution system.” The description is in nearly incomprehensible legalese – here’s the abstract:

“An information distribution system encodes a first set of digital data on a plurality of portable read-only storage devices. Additional information is stored in a database that is accessible by using a bi-directional channel. The first set of digital data contains a plurality of special displayable terms, a first non-displayable symbol, a plurality of linkage references, and a second non-displayable symbol. A user can select at least one special displayable term. The linking reference associated with the selected special displayable term is sent to the database via the bi-directional channel. The database uses the linking reference to search for information, and returns the resulting information to the user.”

If you’re a masochist with time on your hands, you can read the rest yourself at FreePatentsOnline. The translation would seem to be that the patent describes the use of hyperlinks to network-based resources from files or programs distributed on CD-ROM. Oddly, when you get down to the diagrams and the part of the patent that resembles English, the examples involve a satellite-based system for distributing newspaper content.

Making Connections — Disc Link turns out to be a subsidiary of Acacia Research, a company that buys up existing patents in order to make money licensing the technology. According to critics of the company, Acacia Research has developed a reputation as a “patent troll,” meaning that their approach to licensing revolves around suing companies who will agree to a licensing deal instead of suffering through a long and expensive court battle.

The inventor listed in the patent is a Dr. Hark Chan, an engineer and lawyer who has been granted a number of information technology patents, at least some of which have been purchased by Acacia Research. One of those patents – possibly this very same one – was used in a 2003 case surrounding updating a CD-ROM-based database over the Web. But Dr. Chan isn’t just an engineer who has sold patents to Acacia Research; according to the Web site of a company called TechSearch, he’s a member of their Board of Advisers. And although TechSearch describes itself as “a private company
primarily engaged in the business of purchasing, owning and licensing/enforcing patents,” if you click the Homepage link on the TechSearch Web site, you go to… Acacia Research’s Web site. It would seem that both Disc Link and TechSearch are essentially fronts for Acacia.

This isn’t even the first suit Disc Link has filed in relation to this patent. Back in December 2006, Disc Link sued Adobe, H&R Block, McAfee, Sage Software, and others for infringement of the same patent. Both Sage Software and McAfee settled with Disc Link in favor of contesting the patent in court, but other defendants are fighting the patent. An Ars Technica article quotes H&R Block as saying that Disc Link “sought to construe the ‘574 patent in an overbroad and impermissible way to cause an anti-competitive effect”
and that Disc Link “knew of the invalidity and/or unenforceability of the patent-at-issue when this suit was filed.”

Putting the Pieces Together — So all becomes clear. Although this patent was filed in November 1998, it’s a “continuation” of earlier filings that date back to April 1993; it will be up to the court to determine how those earlier filings affect the issue of prior art. The Info-Mac CD-ROMs are some of the earliest CD-ROMs that were widely distributed, and they contain software from the online Info-Mac Archive, some of which may have had programmatic or documentation links to the Internet. Clearly, the hope is that the Info-Mac CD-ROMs constitute prior art.

One potential problem is the software developers who submitted their work to Info-Mac intended it to be made available at the Info-Mac FTP site, and only contingently on the Info-Mac CD-ROMs produced by Pacific HiTech. However, developers were certainly aware that the Info-Mac CD-ROMs were being produced, because Pacific HiTech went to the trouble of contacting all authors of Info-Mac materials, explicitly requesting redistribution permission for each CD. Thus, it is possible that intent to put such Web-linked documentation on the CD-ROM could be proven.

We’ve finally touched base with a lawyer involved in the case, and after discussions with him, it appears that there may be three ways in which this spurious patent can be attacked with prior art, relating to the three basic aspects of the patent: CD-ROMs, hyperlinks, and a network.

  • Finding a CD-ROM from that time period that provides hyperlinks to a networked resource is proving a bit difficult, in part because it was nearly 15 years ago, and CD-ROMs weren’t all that common back then. But is a CD-ROM necessary? What, conceptually speaking, is the difference between a CD-ROM and a read-only floppy disk? Those were common back in the early 1990s, and finding one with hyperlinks on it might be significantly easier.
  • The question of what is meant by a hyperlink would also seem relevant. There were plenty of network-based games in those days, and tons of network-enabled databases. Would a FileMaker database that could communicate with a server over a network constitute prior art? What about the FTP bookmarks that shipped with the earliest FTP programs like Fetch from Jim Matthews and, even earlier, the Hypercard-based HyperFTP that was written by Cornell’s Doug Hornig?
  • Similarly, what counts as a networked resource? Early online services like CompuServe and AppleLink had graphical front ends that ran on personal computers and provided links to resources available only online. Apple even had a bug reporting program of some sort that integrated with AppleLink, and Apple Developer Relations shipped CDs to all Apple developers regularly during this time.

If you’d like to participate in invalidating this patent with prior art, the holy grail is a CD-ROM that was distributed before April 1993 containing an application with links to the Internet or another network. The links should consist of a visible portion (like the text of a link in HTML or a menu item) and an invisible portion (such as the hidden HREF tag in HTML, or the underlying code for a Go to Web Site menu item in a program). Apparently, it’s somewhat better if the application is meant to be copied to the hard disk instead of being run from the CD. If you have such a beast, let me know and I’ll make the appropriate introductions.

There is one other possible defense. In a very recent Supreme Court ruling in another case the Court said, “Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, for patents combining previously known elements, deprive prior inventions of their value or utility.” That’s a significant point, since many of today’s software and business model patents feel wrong because they encapsulate ideas that were in wide dissemination. Disc Link’s claim that it “invented” the concept of hyperlinks on CD-ROM certainly doesn’t deserve any protection as a unique invention – it’s merely a lumping together of
commonplace ideas and technologies of the time. Heck, thanks to my status as the author of “Internet Starter Kit for Macintosh” around that time, I once made a presentation to the publishers of all the Macmillan imprints proposing a CD-ROM-based visual interface to the most interesting Internet resources.

No matter what, it will be fascinating to follow this court case as all parties attempt to pull meaning from the nearly incomprehensible patent and the claims made by Disc Link.

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