December 29, 2008
The Demise of the Word Balloon Patent
or How IMVU, Bruce Damer and I Saved Blizzard a Million Dollars and They Don’t Even Know It
Patent Trolls Piss Me Off
The latest news about Worlds.com, Inc. joining a long line of virtual world patent trolls has pissed me off.
You can always tell a patent troll because they are not actively developing or marketing the supposed “protected” technology and the patents are a decade old and they had previously turned a blind-eye to possible infringing use, then sold them to lawyers (or just retained a trolling firm) to generate cash to keep a portion of their anemic business on life-support by shaking down the gaming and virtual world industry. In the U.S. the big money target is Blizzard’s and their global monster hit: World of Warcraft. These lawyers don’t go after Blizzard straight away. That’d be stupid, since that company has the deep enough pockets to tell them to pound sand, and on the chance they might even become inspired take active countermeasures [as happened with the case I am going to share with you today]. Instead, they’ll first go after a few little guys who can’t really defend themselves; get them to roll over and pay just to establish a precedent. Then, armed with the claim that the industry has obviously accepted the validity of their patent – start the proceedings against the larger worlds, and eventually hit up the big guys – Linden Lab/Second Life and Blizzard/World of Warcraft.
I know about this particular pattern first hand, as Bruce Damer and I helped IMVU ‘s founder Will Harvey (et al.) defend against one of these terrible patent suits, and all the parties involved ended up limping away with limited victories.
Software Patents are Newer than Virtual Worlds
For the last several years, I’ve been doing a lot of patent consulting since I was one of the principle developers of Lucasfilm’s Habitat /QLink’s Club Caribe (the first graphical virtual world), which existed in the mid-1980s, before people even thought they could make money patenting software. This means that the stuff invented for Habitat is NOT PATENTED and is PRIOR ART to be used to defend against many early and bogus virtual world-related patents. Seriously folks, there are patents out there with claims like generating a random number on a server that is authoritative for chance events when received by clients. Really? “You can’t trust the client” was novel as late as 1996? I don’t think so! And I have the software, documentation, and widely cited white papers to prove it.
The Word Balloon Lawsuit
Three years ago, on November 3rd, 2005 Forterra Systems, the company formerly known as There.com, filed suit against Avatar Factory and William “Will” D. Harvey in US District court for Patent Infringement. The suit was all about US patent number 6,784,901 Method, system and computer program product for the delivery of a chat message in a 3D multi-user environment
A chat system, method and computer program product for delivering a message between a sender and a recipient in a three-dimensional (3D) multi-user environment, wherein the 3D multi-user environment maintains respective digital representations of the sender and the recipient, uses a recipient interface to receive a message, map the message to a texture to generate a textured message, and render the textured message in the 3D multi-user environment so as to permit the recipient to visually ascertain the location of the digital representation of the sender in the 3D world. Received messages are mantained as two-dimensional elements on a recipient viewport.
- Inventors: Harvey; William D. (Palo Alto, CA), McHugh; Jason G. (East Palo Alto, CA); Paiz; Fernando J. (Millbrae, CA), Ventrella; Jeffrey J. (San Francisco, CA)
- Assignee: There (Menlo Park, CA)
- Filed: August 31, 2000
- Granted: August 31, 2004
You can find all the details about this case online by entering the case number 95000155 here – there are thousands of pages of documents. I am not a lawyer, I’m a storyteller, and was just one of many people who played a non-trivial role in determining the primary outcome.
I like to call this action the Word Balloon Lawsuit since the claims in question are primarily about displaying chat messages in word balloons that float over an avatar’s head in a virtual world. Forterra was claiming they had a patent on them and IMVU was infringing and should stop or pay up.
You probably noticed in the patent office excerpt above that the primary inventor on the Patent is the same name as the primary individual defendant – Will Harvey. Will filed the patent while he was still a founder and member of the virtual world and company There (which was later renamed Forterra Systems). After leaving There, Will founded IMVU – another 3D avatar chat system – dropping the virtual world from the original idea altogether and just keeping the best lessons about avatars and user-created clothing, objects, and environments.
The Word Balloon Suit against IMVU seemed shrewd on Forterra’s part for several reasons:
- IMVU, on the surface, had features that looked in many ways similar to those in There.
- IMVU was small and not cash-rich and unlikely to put up a protracted fight, or any fight at all.
- By being an Inventor on the patent in question, Will’s options to defend himself would be limited because of the legal principle of Estoppel. For example, he couldn’t claim that the patent was invalid, since he signed the application saying that it was valid when it was filed.
Archivists To the Rescue!
January 9th, 2006 I received an email from Will that started:
“Thought you might be able to help me on something and simultaneously help stop some bad people from blatantly abusing the patent system by egregiously
asserting intellectual property rights that they don’t own.”
He was looking for support in the form of screen shots, articles, and even physical media that proved prior art to break the patent. He continued:
“… of course I know that we at There.com did not invent the idea of chat balloons, but There.com is trying to give the patent a broader interpretation than was intended and claim that they own idea of chat balloons […] something they didn’t even invent!”
He also contacted virtual worlds pioneer, author and archivist Bruce Damer. I was probably the most vocal co-creator of the first two or three generations of graphical virtual worlds and Bruce had a broad, almost ecumenical view of the entire field. Bruce’s book Avatars, is a catalog of the state of virtual worlds as of 1997 and would also play a key role in the final decision.
After reviewing the patent, it was obvious to me that Will’s interpretation was right – the patent was not meant to cover all 3D word balloons, it was something he called “Chat Wads” – to me a ho-hum idea of little indicators that the user is typing flying through the virtual world to the balloon. That interpretation might be innovative, but certainly no one had copied it. Stretching it to cover all word balloons? No way!
IMVU was based in Palo Alto, where I live, so Will and I had a face to face chat at a coffee shop downtown. He seemed understandably preoccupied with the personal ramifications. I said something like “Dude! I’m not just doing this for you – they aren’t just after you! If you cave or lose, they’re going after bigger fish. You aren’t the real target. They’re after Blizzard! They figure you’re easy pick’ns given that you have to defend yourself with one-hand tied behind your back and a limited legal budget.”
Bruce and I independently agreed to help with Will’s defense of this case not only for him or IMVU, but for virtual righteousness.
Bruce and I produced piles of prior art – for products such as Lucasfilm’s Habitat (1986), Club Caribe (1988), Fujitsu Habitat (1990), Sony’s Community Place (1995), WorldsAway (1996), The Palace (1996), ECHabitats/Microcosm (1997), and more. We provided screen shots, videos, white papers, published articles, and other patents. I even remember demonstrating ECHabitat’s 3D word balloon system to Will Harvey at Bruce Damer’s Avatars97 conference. I was even able to point to online conference photos that included myself and clearly EC Habitat with visible balloons.
The best defense is…
On July 17th, 2006 – IMVU requested a Patent Reexamination for the patent claims in question. If the request was granted this would allow the USPTO to review the patent more closely and potentially throw out invalid claims. This was a risky move, because if the PTO refused to reexamine, or even worse, reviewed and upheld the patent, it would be a disaster for IMVU. But, at this point the examiner’s research would now include all of the court record to date, including the comprehensive submissions of prior art that Bruce and I provided.
On October 17th, 2007, after almost two years and 137 separate legal filings the lawsuit was Dismissed With Prejudice.
Bruce Damer wrote me:
I was told that the presiding federal judge [The Honorable Patricia V. Trumbull] upon denying all the claims of Forterra held up a copy of my 1997 book “Avatars” and said something like “not only are all of your claims predated by the prior art but that prior art is all contained in this one book which was published two years before the patent was filed…”. I like to think that she then slammed the book down on the bench, gavel-like, but wasn’t there to witness this.
The lawsuit was dead, but the patent reexamination was still underway.
The Danger of Suing with Bad Patents: Reexamination
Losing the suit wasn’t the end of the bad results for Forterra.
Almost one year later, on October 7th, 2008 the US Patent Office issued a Reexamination Certificate, numbered 95/000,155 that invalidates all of the claims in question – gutting the patent for use in future lawsuits against 3D chat systems.
Virtual worlds with chat balloons past, present, and future could rest a little easier, even if they didn’t know it. Blizzard dodged a bullet. You’re welcome guys. :-)
Epilog: Goliath’s Rage
Forterra was beaten, twice.
In a Hollywood-inspired universe, this would be the end of the story: Rationality and the little guy triumph, the free (virtual) world is saved, and the big bully goes home with his proverbial tail between his legs, right?
But this is the real world of angry losers.
Will Harvey had really pissed off someone with a lot of money. Forterra filed a new and unrelated lawsuit that seems to me to be attempting to make IMVU pay for the lost potential revenue as a result of defeating the chat-balloon patent suit. Unlike with British tort law, where losers pay much of the winner’s legal costs, in the US civil courts it often ends up that the one with the most cash can continue to sue the little guy over and over, making him spend dollar-for-dollar the same amount of money with no real recourse. Deepest pockets can force a financial draw.
This later suit was eventually settled for undisclosed terms to presumably just get the whole matter behind them. As a side effect of the settlement, if it weren’t for this post, you probably would have never heard about any of this. But, you see, I never signed anything. :-) And the patent (re)examiner pulled the entire court proceedings into the web-accessible public record!
So that’s a free tip for you: Civil court documents become a part of the USPTO’s Patent Reexamination process. Amazing what you can find on the web these days.
But, Word Balloons are Free!
So, IMVU and Will Harvey took one on the chin for the rest of us. I say Huzzah! to them! They did us all a big favor.
Too many companies just cave when stuff like this comes along. It takes real courage to stand up and say “Hey! That’s not right!” Especially to Patent Trolls. So, if you see Will at a conference somewhere, say “Thanks Man!” He can’t talk about any of it, but hopefully with this blog post and the story spreading through the social network, maybe he doesn’t have to.
Patents weren’t created so that people can sue each other into the ground, they were created specifically to allow an individual (and eventually a company) to have a limited exclusive period to develop and market their invention. They are meant for defense. Something has gone horribly wrong that people who aren’t developing or marketing an invention at all are just applying scatter-shot legal action on the hopes of a big payoff. This sets the wrong kind of incentives for the creation of patents – see or think of a clever idea – patent it quick, without actually understanding if it is novel or common or has prior art. Or, if you patent something you think is novel, wait years as others use a similar idea to build successful products and then spring from the trees shouting “Ah ha! I got you! We’ll just sort it all out in court.” After all, if you can patent a method of swinging on a (tree) swing, you can patent anything!
I do not categorically object to patents. I have several granted patents and about the same number pending approval – filing defensive patents is unfortunately required by the current business environment . There are two Fujitsu patents that are in my name that Chip and I refused to sign because of prior art, and I have copies the legal paper trail to prove it – so if Fujitsu shows up at your door claiming to have the patent on the virtual world, you know where to find us.