Patent Infringement Suits Lay Claims to Hyperlinking Technology

(December 21, 2000) Two separate lawsuits filed in federal court in New York assert claims of patent infringement regarding use of hyperlinking and web browsing technology. British Telecom belatedly alleged in a test case brought against ISP Prodigy that it holds an old and broad patent covering hyperlinking and web browsing. Prodigy called the claim "shameless" and "groundless." ACTV asserted a narrower set of patents on technology for incorporating web links into interactive TV programming.

On Wednesday, December 13, British Telecom (BT) filed a one count complaint in U.S. District Court for the Southern District of New York (White Plains Division) asserting that long ago it invented, and acquired a patent on, hyperlinking and web browsing. While the sole defendant is Prodigy, the case is brought to test the validity and enforceabilty of its patent against a broad array of web related entities and individuals.

On Wednesday, December 20, ACTV and HyperTV filed a three count complaint in U.S. District Court for the Southern District of New York against Disney, ABC and ESPN alleging infringement of three patents pertaining to technology for integrating television programming with web access. Defendants enabled viewers of TV programming, such as Monday Night Football and Who Wants to Be a Millionaire, to click on hyperlinks which then display web pages in a manner that is synchronized with the display of the video programming content.

British Telecom (BT) is the U.K.'s legacy telephone company. It was previously a part of a giant government telecom and postal monopoly named The Post Office. Desmond Sargent, then an employee of The Post Office, filed a patent application with the U.S. Patent Office on August 15, 1980. U.S. Patent No. 4,873,662, titled "Information handling system and terminal apparatus therefor" was issued to him on October 10, 1989.

Prodigy is one of thousands of Internet Service Providers (ISPs). BT's complaint alleges that by maintaining "a web server which stores plural blocks of information, i.e. web pages, at locations of a storage medium, such as a disk" and by including in these web pages both "a displayed portion" and "an undisplayed portion with hidden information that is not seen by the user" which includes "addresses associated with the displayed portion", Prodigy is infringing BT's patent.

The complaint continues that Prodigy has directly and contributorily infringed BT's patent by offering Internet services. Further, the complaint alleges that Prodigy induced of infringement by Prodigy users.

BT seeks declaratory relief that its patent is valid and enforceable, that Prodigy has directly and contributorily infringed, and induced infringement, of the patent, and enjoining Prodigy from further infringement. BT also seeks damages, costs, and attorney fees.

Tech Law Journal spoke with Bob Perry, an attorney with the leading intellectual property law firm of Kenyon and Kenyon, who is one of the attorneys representing BT. TLJ asked why Prodigy was named as the sole defendant. Perry declined to explain, stating that that was a matter of "strategy."

The activity described in the complaint is sufficiently broad to encompass most of what Prodigy does, as well as the activities of ISPs, web hosting companies, and entities and individuals that maintain web sites.

Dan Iannotti, legal counsel for Prodigy, had this to say, "This week's lawsuit filed by British Telecommunications against Prodigy Communications threatens how consumers connect to and maneuver on the Internet. This lawsuit is a blatant and shameless attempt by BT to capitalize on the initiative and success of Prodigy and other pioneers of the Internet. BT's groundless claims have the dangerous potential of stifling those who are truly innovative in this field."

Iannotti continued: "Given that Prodigy was the first commercial Internet service provider in the United States, it is no surprise that British Telecommunications would single us out for this lawsuit. Prodigy intends to vigorously defend this lawsuit and protect the Internet experience that consumers enjoy today. We expect our fellow Internet service providers and other companies using the Internet to join us in this challenge."

ACTV is a digital media company that develops proprietary technologies that enable broadcasters, cable and satellite operators, programmers and advertisers to create and distribute individualized programming for digital television and to offer enhanced media services.

ACTV holds three patents pertaining to integrating web resources into interactive TV programming: U.S. Patents 5,778,181, 5,774,664, and 6,018,768. The other plaintiff, HyperTV, is a licensee of these patents.

Plaintiffs allege that these defendents have appropriated ACTV's patented technologies for use in their interactive television programs, such as Sunday Night and Monday Night Football, Who Wants To Be a Millionaire.

The complaint alleges that the viewers of Defendants' interactive TV programs are infringing ACTV's patents. Although, only the three corporate media companies are named as defendants. The complaint alleges that they have contributorily infringed and have induced infringement of the three patents.

Scott Doyle, ACTV's chief intellectual property officer, made the following statement in a release: "The consumer market for applications of our patented technologies is emerging right now and promises to grow exponentially in the future. We want to facilitate this growth. That is why, as a part of our business plan, we have made the licensing of our patents an integral part of ACTV's overall business strategy. However, the viability of any patent licensing program depends on the patent owner's resolve in enforcing its patent rights. We view the Disney litigation as a step we must take to protect our patents and support our licensing program."

Tech Law Journal also contacted a representative of ACTV, who stated that ACTV would make no further public statements regarding this lawsuit.

Plaintiffs seek declaratory judgment that the three patent are not invalid, that the three patents are enforceable, that the three Defendants have contributorily infringed and have induced infringement of the three patents, and that the three defendants be enjoined from continuing acts of infringement. The plaintiffs further seek damages, treble damages for willful infringement, attorneys fees, and costs.