Prodigy wins first round in BT hyperlink patent case

ITworld.com –

British Telecommunications PLC (BT) suffered a setback in its patent-infringement lawsuit against Prodigy Communications Corp. last week when an initial ruling narrowed how BT can present and defend its claim to have invented hyperlink technology.

Judge Colleen McMahon of the U.S. Federal Court for the Southern District of New York issued a 38-page opinion in the pretrial discovery phase of case number 00cv9451, weeding out some of BT's terminology and phrasing supporting its claim, according to court documents posted on March 13.

The judge ruled on the disputed definitions in the patent, the so-called Markham phase of the process. The next stage is to debate the claims for originality that the patent makes.

BT and Prodigy have until April 12 to file motions for summary judgement. The joint pretrial order is due July 15 and the final pretrial conference will be held on Sept. 6, Judge McMahon said in the ruling.

BT declined to comment on the case and representatives at Austin, Texas-based Prodigy could not immediately be reached for comment.

BT contends its Hidden Page patent, U.S. patent number 4,873,662 filed in the U.S. in 1976 and granted in 1989, gives the company the intellectual property rights to the hyperlink technology.

Hyperlinks connect text, images, and other data on the Internet in such a way as to allow a user to click on a highlighted object on a Web page in order to bring up an associated item contained elsewhere on the Web.

On Dec. 13, 2000, BT filed suit in federal court in White Plains, New York, to protect the patent which it contends covers the invention of the hyperlink technology used in Web pages. [See, "BT Sues Prodigy over U.S. Hyperlink Patent," Dec. 15, 2000.] A trial date was set late last year.

According to BT, the technology for its hyperlink patent originated from general research done on text-based information systems, including a system called Prestel, by an employee of the General Post Office (GPO) in the 1970s. The GPO was split into BT and the Post Office in 1981.

BT contends that though Prestel is at best a primitive online information system, it can still prove its claims of prior art.

Tim Berners-Lee is generally credited as leading an effort, with Robert Cailliau, to write the underlying protocols -- including HTTP (Hypertext Transfer Protocol) -- for what later came to be known as the World Wide Web, at the CERN nuclear research center in Switzerland in the late 1980s. Berners-Lee's work was based on, among other things, earlier work carried out by Ted Nelson, who is generally acknowledged to have coined the term hypertext in his 1965 book, "Literary Machines."

The U.S. patent does not expire until October 2006, though BT found that similar patents were filed in other countries but have since expired. BT said that in early 2000 it hired U.K. technology development and licensing company Scipher PLC to broker licensing agreements with the U.S. ISPs (Internet service providers), and wrote to the "17 top U.S. ISPs" asking to be reimbursed for the use of the technology.

Prodigy, the only ISP to be named in a patent infringement lawsuit by BT thus far, was the first commercial ISP in the U.S. BT said that it would not pursue patent claims with individual users, as it would "not be practical."

Though BT has declined in the past to estimate how much it expects to charge for licensing fees or how much the company expects to make from its claims on the patent, the company has said it would be a sizable sum. Some analysts believe that should BT successfully defend its patent, the company would stand to make tens to hundred of millions of dollars.

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