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Openly Informatics and OpenURL Patent

By jaf, Section News
Posted on Fri Apr 25th, 2003 at 03:10:06 PM EST
It appears that Openly Informatics, back in 1999, submitted a patent application covering their implementation of an OpenURL resolving service. Eric Hellman from Openly currently sits on the NISO OpenURL standards committee, but only recently did he disclose the fact that Openly was claiming IP rights around implementing the OpenURL standard. It is unclear whether Openly's patent application seeks to cover a broad range of possible resolving implementations, or whether it is specific to Openly's linkbaton system.

Read more below to see NISO's letter concerning this subject, a response to the situation by Eric, and some more commentary.

[editor's note, by jaf] Some corrections - Openly Informatics submitted a patent application covering their linkbaton service, which is in the same space as resolution services that utilize the OpenURL standard. This is a more accurate description than what I originally posted - I apologize for the discrepencies.

Update [2003-4-26 9:15:33 by jaf]: See Eric's Comment clarifying Openly's position

 

I found out about this issue when I was forwarded a letter from NISO concerning the Openly Informatics possible patent on implementing an OpenURL resolver service. Here is the text of the letter:

Subject: Important legal issue facing NISO
 
To:		Mitch Freedman, President, ALA
		Carla Hayden, President-Elect, ALA
		Keith Michael Fiels, Executive Director, ALA

		Rhea Joyce Rubin, Chair ALA Committee on Standards
Review
		Karen Muller, Director, ALA Library
		Lynne Bradley, Director, ALA Office for Government
Relations
		Frederick Weingarten, Director ALA Office for
Information Technology Policy
		Judith F. Krug, Director, ALA Office for Intellectual
Freedom
		Emily Sheketoff, Associate Executive Director, ALA
Washington Office

		Olivia M.A. Madison, President, ALCTS
		Brian E.C. Schottlaender, President-Elect, ALCTS
		Charles Wilt, Executive Director, ALCTS

		Pat Ensor, President, LITA
		Thomas C. Wilson, President-Elect, LITA
		Mary Taylor, Executive Director, LITA

From:		Paul J. Weiss, ALA Representative to NISO

Cc:		Kristin Lindlan, Chair, ALCTS CCS Committee on
Cataloging: Description & Access
		Stephanie C. Schmitt, ALCTS SS Committee to Study
Serials Standards
		Thomas A. Saudergas, Chair, ALCTS/LITA/RUSA MARBI
		Mary S. Woodley, Chair, ALCTS Networked Resources and
Metadata Committee
		Krisellen Maloney, Chair, LITA Standards IG
		M. Kathleen Kern, Chair, RUSA MARS Local Systems and
Services Committee
		Sally J. Jacobs, Chair, RUSA MARS User Access to
Services Committee
		

I wanted to alert you to this very disturbing and potentially
far-reaching legal issue facing NISO and all standards bodies. This
particular case involves the OpenURL standard, but other future
standards could also be affected. Let me know if you would like me to
forward you updates from NISO on this issue. Feel free to forward this
message to others who may also be interested in this matter.



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To: <niso-vm@list.niso.org> (NISO Voting Members)
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Date: Thu, 24 Apr 2003 12:26:13 -0400
From: Pat Harris <pharris@niso.org>
Subject: OpenURL/Patent matter
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2.43)
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TO:  NISO Voting Members (Representatives and Alternates)
NISO Standards Development Committee
Members of NISO Standards Committee AX (OpenURL)
Chairpersons of NISO Standards Committees

FROM:  NISO Board of Directors Executive Committee:
Beverly P. Lynch, NISO chair
Jan Peterson, Vice-chair/Chair-elect
Carl Grant, Treasurer
Patricia Harris, Executive Director

DATE: April 24, 2003

RE: OpenURL/Patent matter

On April 10, 2003 NISO learned that an international patent application
was filed via the Patent Cooperation Treaty (PCT) by Openly Informatics,
Inc. The PCT application is titled "Retrieval of Digital Objects by
Redirection of Controlled Vocabulary Searches and was filed November 9,
2000.  We have subsequently learned that Openly Informatics also filed a
patent application with the U.S. Patent and Trademark Office November
10, 1999.  Openly Informatics is a NISO Voting Member and Eric Hellman,
President of Openly Informatics, is a member of NISO's OpenURL standards
committee. 

On its face, the description of the "invention" in the patent filing
mirrors the OpenURL Framework, the basis for NISO's OpenURL standard.

Learning of this patent application was of great concern. One of our
aims in the NISO community is to create a body of standards that is
open, and fully and freely available to the community of implementors,
with no impediments to implementation.

On our request NISO's legal counsel has researched the Openly
Informatics patent applications and reviewed the OpenURL standard.
Counsel has advised that, based on the application as it was filed, we
cannot be certain that someone could utilize the standard without
potentially infringing on a Hellman patent, should such a patent issue.

NISO has, therefore, asked Mr. Hellman to state in writing that the
patent application and the patent, if granted, would not prevent the
implementation of the OpenURL Standard and that people can use the
OpenURL Standard without running afoul of the patent.  This statement,
if secured, will be posted on the NISO website, filed with ANSI, and
filed with the Patent Office. If Mr. Hellman does not provide a
clarifying statement then NISO will work to limit the scope of any
patent should one issue and/or try to prevent such a patent from
issuing.

Mr. Hellman's filing is not an obstacle to the release, continued
development, and implementation of the OpenURL Standard.   NISO will
release version 1.0 as a Draft Standard for Trial Use in the coming
weeks.	It is important to stress that the Openly Informatics
application has not been approved, it may not be issued, and that
"patent pending" does not bar anyone from implementing the standard
until a patent is issued.

If the patent is granted and it is found that the Standard is an
"essential patent" for implementation of the Standard, NISO will ask
Openly Informatics to provide a Patent Statement stating that licenses
will be granted without compensation to applicants or that a licenses
will be made available on reasonable and nondiscriminatory grounds.
Providing such a Patent Statement is required by the ANSI patent policy.

This event has raised questions and concerns related to disclosure and
our community's expectations related to the conduct of members of
standards committees. These matters will be reviewed and addressed by
the NISO Board of Directors and the Standards Development Committee
immediately.
We want to assure you that the NISO leadership is committed to doing all
that is required to maintain NISO standards as open and fully accessible
and to support a standards development program that is based on
integrity and openness. We will keep you fully informed as this matter
moves toward resolution.
cc:  NISO Board of Directors
Eric S. Hellman
Kevin F. Turner, NISO counsel

Note: Beverly P. Lynch is out of the country and has not reviewed this
message; she has, however, given authority to the Executive Committee to
act on her behalf


Having read this letter, I felt it would be good to try and elicit some more information on the issue, as the letter left some points unclear. I talked with one member of the OpenURL Standards committee about the impact of the potential patent. Their opinion was that Openly was not attempting to extort licensing fees or restrict others from creating resolving services; however, they had not seen the full patent application, so it was unclear still whether the actual text was so broad as to allow for this possibility. Eric has provided this response:

From: Eric Hellman <eric@openly.com>
Subject: Re: Request to forward your note...

I posted this on liblicense

Chuck,

This patent application was written to protect various aspects of our linkbaton system.
(http://my.linkbaton.com/) Some relevant facts are that:

1. We have not been issued a patent.

2. There is prior art cited in the complete patent application, including things like Herbert va de
Sompel's SFX, the doi system, PubMed's LinkOut system, and a rather interesting patent awarded to
CNET which clearly limit the scope and applicability of the patent, even if it is granted.

3. The PCT (Patent Cooperation Treaty) Submission that has been published and is cited by Chuck is
not even a complete application.

You can't draw a lot of conclusions from a patent *application*. There are certainly many patents
that have been *granted* that have claims that, at first reading, would have very broad
applicability (like the BT hyperlink patent), but when you get right down to examining the claims,
they don't have as much generality as you thought. I have been granted two patents in the past, and
the lawyers have always managed to draft  claims that sound amazingly broad in the initial
submission; the patent that is subsequently granted is usually reasonable. I used to think this was
just a game that the examiners and the patent attorneys played- that you have to ask for a mile if
you want an inch, but now, as I've become older and more cynical, I'm starting to suspect that the
initial claims are done that way so that the patent attorney can charge you more for responding to
multiple office actions.

I invite anyone with concerns or interest in this to contact me directly.

Eric 


Eric's response fails to address what I see are 2 critical issues: First, if the patent is granted, what will be his intent in enforcing the patent? Will Openly look to restrict the ability of any entity to implement an OpenURL resolving service, or are they more concerned in protecting their exact method of providing resolution to an OpenURL? The second issue that isn't addressed is why the patent application wasn't disclosed to the NISO OpenURL standards committee at the time Openly Informatics started playing an active role in the standards work? I hope Eric will address these 2 issues - I have emailed him with these questions, and if/when he responds, I will update this story with his reply.

In any event, it will be very interesting to see how this all plays out. The Library community has been fairly lucky so far that more situations like this one have not cropped up - but my gut feeling is that we will be seeing many more patent/IP issues in the near future. At the very least, this is a wake up call for NISO, and other library-related standards bodies, to make sure their IP disclosure policies are adequate.

As I'm writing this, a new letter has been forwarded. Here is the text:
TO:	NISO Board of Directors Executive Committee:
	 Beverly P. Lynch, NISO chair
	 Jan Peterson, Vice-chair/Chair-elect
	 Carl Grant, Treasurer
	 Patricia Harris, Executive Director

FROM:	Thomas C. Wilson
	 Incoming President, Library and Information Technology
Association
	 Representative, USMAI, Library Standards Alliance Member
	 Director, Information Technology Division, University of
Maryland 
Libraries

DATE:	April 25, 2003

RE:	OpenURL/Patent Matter


I'm writing to express my deep concern regarding the recent revelation
that two patent applications related to the OpenURL standard were
submitted
by one of the members of the committee developing the NISO OpenURL
standard.  I gather from the letter sent to voting members that you find
this
situation difficult as well.  This activity is a base affront to the
standards
process and deserves a full investigation, not just of the patent
applications,
but of the individual(s) involved.

In an attempt to view this situation openly and with a degree of
understanding,
I have attempted to imagine a way in which such behavior could be
interpreted
in a positive light.  After several hours of deliberative analysis, I'm
afraid
I am unable to create a world in which this could be an innocent or
unintended
act.  The issue is not that at some point one may have applied for a
patent
on a developing technology to which one has materially contributed, the
issue
at stake is precisely that said person would then proceed to become
involved
in an open standards setting body dealing with one and the same
technology
under the guise of participating in the process to form an "open" 
standard.  This
behavior, at best, constitutes a conflict of interest.	And in reality 
perhaps, it
also represents a conscious effort to derail the standards process and
to usurp the process for personal material gain.

The remedies you have suggested in your letter address a portion of the
immediate challenges.  You must go further.  I believe it is appropriate
to
call for Mr. Hellman's immediate suspension from the OpenURL Standards
Committee and to seek his resignation and to deny Openly Informatics any
vote on these matters and any further participation in the NISO OpenURL
Standard pending the outcome of further investigation.

Perhaps this appears too harsh, I would disagree.  It is possible that
Mr.
Hellman sought to delay the development of the Open URL standard until
such time as his patents were issued, thereby assuring his personal
enrichment and the demise of an open standard.	This allegation must be
investigated, and it is entirely appropriate in the meantime that a
temporary
suspension take place.	In the world I have worked in for nearly 20
years,
even the appearance of a possible conflict of interest is sufficient
grounds
for action.

I cannot speak as a LITA representative, as we have not met and
discussed
this issue.  As the Library Standards Alliance member representative for
the
University of Maryland System and Affiliated Institutions, I can say
that
we deplore the actions of Mr. Hellman and will be watching this
situation
closely.

I wish you good luck as you move through this difficult time.

--Tom Wilson


So, it seems, the heat in the kitchen is rising...

Update [2003-4-25 14:55:41 by jaf]:
I just received an email response from Eric, which I've posted in full here:
Jeremy,

It seems that a lot of people are really 
uninformed about how the patent system works now. 
There have been a number of changes in that 
process in the last few years, too, so I think 
that people are unfamiliar with the recent 
phenomenon of seeing patent applications that have 
not been granted.

> Hi Eric -
>
> Karen forwarded me your response below. Just a 
couple of follow-up questions:
>
> 1) You talk a bit about the actual patent 
submission and process below, but you don't 
address your intentions if granted the patent. If 
the patent is granted at a broad level (I'm only 
guessing here, since I don't have access to the 
actual full patent application), would you 
actually look at the possibility of requiring 
licensing fees for implementing a resolver service 
based on the OpenURL standard? Or, is your intent 
more to protect the exact method which linkbaton 
actually uses, and only to ensure that others do 
not infringe on the exact way you implement your 
resolver service?


In general, broad claims, even if granted, are 
more difficult to prosecute than are specific 
claims. But you can't patent prior art, and 
resolvers such as sfx are referenced in our 
patent, so speculating that we could require 
license fees for implementing OpenURL is really 
silly.

It is clear in the complete filing (which runs 
over a hundred pages) that the technology 
disclosed is not essential or necessary for 
implementation of the proposed OpenURL standard, 
and that organizations can implement the Standard 
without infringing on the patent, even if it were 
to be granted in full. In any case, as a member of 
NISO, we fully support the ANSI requirements 
related to patents and the standards development 
process.

>
> 2) Why didn't you (and I'm making an assumption 
here that you didn't) disclose your patent 
application sooner?


We have been describing LinkBaton as 
"Patent-Pending" for over 3 years now. So this has 
been a matter of public record for ages. On the 
other hand, the content of patent applications is 
always withheld for as long as possible, because 
there is absolutely no protection until a patent 
is granted.

>
> I will be posting information on this story to 
http://usrlib.info, in hopefully a balanced 
manner. I'm hearing about this story from a number 
of different contexts, and none of them seem to 
give a well-rounded description of the facts of 
the matter, which is what I'm trying to compile 
here. Any and all comments and thoughts you have 
on this would be beneficial, and would help 
explain your viewpoint to the library community.


I'll be interested to know what sources you are 
hearing from.

You might try asking Tim Bucknall of UNC 
Greensboro about what part of their OpenURL 
resolver they're trying to patent.

Eric 


So, there you go - just some more information to consider.
< Fun with SVG (5 comments) | OSCOM 3 (1 comments) >

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Openly Informatics and OpenURL Patent | 6 comments (6 topical, 0 editorial, 0 pending) | Post A Comment
Rambus (none / 0) (#1)
by tholbroo on Fri Apr 25th, 2003 at 01:52:38 PM EST
(User Info) http://www.dreamtheory.net/

Sounds similar to what Rambus did with their patents. Did that whole mess get sorted out, or are they still suing people?

[ Reply to This ]


Some corrections to the original text (none / 0) (#2)
by jaf on Fri Apr 25th, 2003 at 03:16:14 PM EST
(User Info)

I believe I incorrectly described some stuff in the intro. Openly has applied for a patent on a system that is non-specific to the OpenURL standard, but which may be broad enough to encompass the functionality provided through the standard. This is somewhat different than what I described originally, which made it seem that their patent application was specific to the OpenURL standard.

[ Reply to This ]


Digital Distinctions in an Analog World? (none / 0) (#3)
by art on Fri Apr 25th, 2003 at 04:34:05 PM EST
(User Info) http://www.uwindsor.ca/library/leddy/people/art

(With apologies to Hal Berghel)

I have no doubt that Eric is legitimately trying to patent the technology behind LinkBaton, rather than OpenURL, but there seems to be a sense that this technology "mirrors" the OpenURL Framework. NISO's legal counsel sees potential problems, which is chilling because even if there is no technical relationship between OpenURL and LinkBaton, the second it moves into a legal setting all manner of non-technical players may come into the mix. I have always been struck by how legal cases which involve technology can be thrown out of whack for very non-technical reasons. If this was the pharmaceutical industry, there would teams of chemists and doctors that would be consulted for patent infringements, but despite how much of the planet is dependent on technology, cases involving technology may largely involve decision makers who haven't the slightest clue about how it all comes together. What if a judge somewhere decides that since the technology in question involves some form of linking then the whole notion of using links for anything is suspect. I don't see a dark purpose in Openly Informatics' actions, but that doesn't mean that the consequences won't be as damaging as if there really were an attempt to stifle the use of OpenURL. The fact that SCO seems to think that the courts will support their ludicrous claims against IBM and Linux makes me very leery of counting on patent law to be decided upon by technology-savvy observers.

If nothing else, I guess I had better finish my Cocoon-based resolver ASAP...

[ Reply to This ]


Patents and Standards Must Live Together (none / 0) (#4)
by kcoyle on Fri Apr 25th, 2003 at 05:48:12 PM EST
(User Info) http://www.kcoyle.net

I am a bit surprised by the vituperativeness (is that a word?) of Tom Wilson's letter. We may have been sheltered from the world of business and patents in most of our library endeavors in the past, but other standards bodies that I have worked with are vendor-heavy (OEBF, for example) and they know and accept that patents are part of the landscape. One organization I sat in on, EBX, refused to move its standard from .9 to 1.0 unless all organizations involved disclosed any patent interests. I sat in a room and watched folks from Microsoft, Adobe, Xerox and other companies sit stone-faced, each refusing to go first, and finally the organization dissolved. W3C deals with patents; OASIS is starting to talk about it; I don't know how MPEG handles it. But it's a fact of life. It's also a fact of life that a lot of the people interested in working on standards have products affected by those standards.

Ideally, NISO would have a procedure in which all committee members declare any intellectual property interests that could relate to the standard being developed. And I assume that NISO does some patent searching as part of the standards process, but I don't know that for sure. Surprises of this nature are not good for anyone -- and I say that as a member of the NISO OpenURL Committee AX myself -- I think we've all learned something from this and we'll want relevant information out in the open from the beginning. This kind of emotional stress at the end of a long and already stressful standards process is discouraging.

One other thing: we musn't confound the OpenURL, which is really a metadata transport mechanism, with the whole enchilada of resolution services. It's like confusing MARC with OCLC -- one is a data standard, the other is a whole service that makes use of that standard but that innovates in ways that go way beyond that standard. The OpenURL is like MARC -- it's going to enable a lot of creativity and different organizations will provide different services with it.

karen coyle

[ Reply to This ]


hi guys! (none / 0) (#5)
by Eric on Fri Apr 25th, 2003 at 09:54:39 PM EST
(User Info) http://www.openly.com/

One other note- Pat Harris, the Executive Director of NISO, has known about our patent application on LinkBaton since before the OpenURL Committee was formed. Other members of the committee have been aware of this as well. So the implication that I was being anything but above-board about this is out of line.

The bottom line is this: the linkbaton patent, if granted, will not interfere with use of the OpenURL Standard. If this patent somehow becomes becomes an impediment for the Standard, we will work with NISO to make sure it is not an impediment.

By the way, 1Cate will become, this weekend, the first production NISO OpenURL 1.0 Profile 1 compliant resolver. I really believe that building the best technology is preferable to having patents. of any sort.

Did I mention that our free-open-source java dynamic text package, which underlies 1Cate, is already installed in over 100 libraries?

Lib without fear ye ladies and gents, and don't give in to the dark side!

Eric at openly

[ Reply to This ]


Here is good website (none / 0) (#6)
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