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Our startup is trying to provide a backup solution for Google Apps for your domain. In principle it's a software running on the client computer. Our software then connects to Google via APIs (GData) + Imap (for Mail) to download data.

We recently got mail by a patent attorney stating that our software possibly violates a patent (US6981007, priority date 1999-07-09).

Especially regarding Claim 1:

A system for onsite backup of internet-based data comprising:

  • a central computer;
  • a client computer;
  • a communications link between said central computer and the Internet;
  • a communications link between said client computer and the Internet;
  • at least one database containing a plurality of data records accessible by said central computer, each data record containing a client identification number;
  • software executing on said central computer for receiving a data backup request from said client computer; software executing on said central computer for transmitting said data backup to said client computer for onsite backup of internet-based data on said client computer.

Our application uses really old ways to deal with data (Imap dates back to 1986, and connecting to a central server via an api is as old as the internet). We don't think that our software does infringe anything. And we think there is good reason to believe that there is tons of prior art to this.

Any help on how to tackle the problem is much appreciated. Thanks!

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This application is a continuation in part of U.S. patent application Ser. No. 09/610,709 filed Jul. 7, 2000, now abandoned, which claims the benefit of the filing date of U.S. Provisional Patent Application Ser. No. 60/143,093 filed Jul. 9, 1999. –  Ron J. Oct 25 '12 at 10:24
    
Hi Ron. Can you explain that a bit further? What does "continuation" and "abandoned" in that context mean? Thanks! –  Raph Oct 25 '12 at 10:45
    
@Raphael “Continuation in part” means that the description of the patent was reused to submit a new application with the same priority date but a new set of claims. This is possible, as long as the new claims are still supported by the original description (i.e. it's the same invention all along, but the applicant may change the aspects for which he claims patent protection). –  Gilles Oct 25 '12 at 11:57
    
I'm not a patent lawyer, but I've been looking at some of these patents lately. This is crap. I am amazed at what people apply for in terms of patents. I don't know how these crooks get away with this. I can only attribute it to ignorance. Those if us in the field know that there's nothing in this patent that should be allowed. Too many tech "inventions" from "prominent patent attorneys". How ironic. People like Welsley W. Whitmyer are scum and should be thrown in prison. –  Michael Hannigan Feb 5 '13 at 22:44
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5 Answers

up vote 6 down vote accepted

This patent covers an invention by a prominent US patent attorney (WESLEY W. WHITMYER) and enforced through is company (Whitserve). A jury found claims 10 and 15 of the patent enforceable and that judgment was recently affirmed on appeal with the exception that the Federal Circuit found Claim 10 invalid as anticipated by prior art. A dissenting opinion in that case would have invalidated several Whitmyer patents as lacking subject matter eligibility (Section 101). However, even the dissent found no problem with claim 15.

Here is a link to what my co-blogger wrote on the case: http://www.patentlyo.com/patent/2012/08/whitserve-v-computer-packages.html

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One interesting thing about the Quicken prior art in that case is that the plaintiff tried to draw a distinction based on the incremental nature of the download contents. Which is pretty much what happens with IMAP. –  carmogy Nov 29 '12 at 22:27
    
Really interesting... Thanks a lot! –  Raph Dec 1 '12 at 9:38
    
The patent trolls who do this and are so proud of themselves should be thrown into prison. They are anti-American theiving scum-bags. Their greed only inhibits the creative spirit. Every time a person comes comes up with a real idea, one of these assholes tries to leach off of that person with "patent infringement". Scum of the earth. –  Michael Hannigan Feb 5 '13 at 22:47
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I would like to refer you to RFC-2060, documenting the invention of the IMAP protocol in 1996 by M. Crispin of the University of Washington, 4 years before the invention you claim to have invented in your patent. For your reference, here is an internet link to said RFC:

http://www.ietf.org/rfc/rfc2060.txt

I have strong reason to believe that this RFC is an example of prior art of your patent, and therefore I would like to contend that your patent is invalid, and in fact you are incorrectly making claims for someone elses invention. I will now present you with a brief grounding for my justification, comparing the RFC with Claim 1.

A system for onsite backup of internet-based data comprising:

The Internet Message Access Protocol, Version 4rev1 (IMAP4rev1) allows a client to access and manipulate electronic mail messages on a server.

This patent is about internet based data, and IMAP is about internet electronic mail messages, which is also internet based data.

a central computer;

IMAP4rev1 supports a single server.

Both the IMAP invention and your patent require a central computer/server.

a client computer; a communications link between said central computer and the Internet; a communications link between said client computer and the Internet

The first quote from the RFC implies this since a client is accessing a server.

at least one database containing a plurality of data records accessible by said central computer, each data record containing a client identification number;

However, the case-insensitive mailbox name INBOX is a special name reserved to mean "the primary mailbox for this user on this server".

IMAP requires a plurality of mailbox records, each identified against a user, just like your patent.

software executing on said central computer for receiving a data backup request from said client computer; software executing on said central computer for transmitting said data backup to said client computer for onsite backup of internet-based data on said client computer.

The FETCH command retrieves data associated with a message in the mailbox. The data items to be fetched can be either a single atom or a parenthesized list.

This is the FETCH command in IMAP. A backup request is simply a parenthesized list of all the messages items in the mailbox. A client, implementing the IMAP protocol is backing up their mailbox on their client computer every time they issue the FETCH command.

This is but a brief analysis, should you wish to proceed further I will be happy to present you with a full report that completely invalidates your patent.

Kind Regards,

Your mother.

Talk to a lawyer before sending them this, it might have to be modified slightly before you send it.

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Hi Mum, many thanks for that information. IMAP will be part of our answer. Keep you updated... :) –  Raph Oct 25 '12 at 18:32
    
Shouldn't "prior art" be something that is researched before a patent is issued? Why is it up to individuals who are attacked by trolls to do the job of finding "prior art"? –  Michael Hannigan Feb 5 '13 at 22:49
    
@MichaelHannigan that's exactly the point, they want to claim it as their to support the trolling litigation. –  jasonk Jul 24 '13 at 3:41
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Unfortunately, the bottom line of any alleged patent infringement is that it will cost YOU money. If you lose, of course an enormous amount; if you win, you will probably be on the hook for tens of thousands in legal bills anyways. And yes - you have to respond to a lawyer's letter with a lawyer's letter. Any which way you slice it, you have to pay a lawyer. It is relatively easy and cheap(er) for these non-practicing-entities (aka patent trolls) to spray lawsuits around on anything that remotely resembles their patent, hoping something will stick. The investment for them is low, the possible payout enormous.

If your lawyer can persuade the other side that your product does NOT infringe, they may go away. Or, you are in for a fight to convince a judge. Or, the other side may accept a (smaller) settlement.

If you have business insurance, they may take up the fight on your behalf (or settle, that becomes their problem).

Don't be surprised if a "licensing solution provider" like RPX suddenly appears out of the woodwork, offering to sell you a license on THEIR patents to "protect against frivolous infringement lawsuits". In any other industry, this would probably be considered extortion; in the patent jungle - its just how the legal system works.

If you intend to fight it - your lawyer can provide a more detailed prior art request that you can bring here. Then your side would have to convince a judge to invalidate this patent, or prove in court that your product does not infringe.

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Thanks Ron. The US patent system really seems to have parts that can kill small startups with ease for no good. –  Raph Oct 25 '12 at 18:33
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Following up, remote backups seem to have been around from long before this patent's priority date (as we all know). A cursory search has turned up these resources (you will need to investigate each further):

Mr. Cosgrove literally wrote the book on the Online Backup Business with his industry-defining 1987 book, RBS Book: How to Start and Operate a Remote Backup Business.

Source link

Book link (note this is 2010 edition but it does have the initial publish date of 1987.

Network World - Jul 12, 1999 - Page 47 (even though the print date is a few days past, the articles may reference an older existence, I have not checked).

Source link to preview entire magazine

InfoWorld - Mar 15, 1999 - Page 60 (Legato - that's the aged backup monolith we worked with back then!)

Source link to preview whole magazine

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Hi Ron, thanks for all those great references! It seems to be really obvious that there is some 100% identical prior art out there... Awesome... –  Raph Oct 29 '12 at 8:36
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It really is amazing that this patent was granted, in that it really is just two cocktail-napkin drawings. The entirety of the detailed description simply describes the drawings.

That said, it seems to me that there is probably lots of ground for being non-infringing: - does the "central computer" have access to a database where each data record contains "client identification numbers"? (I have no idea if Google puts client IDs in each record, but I kind of doubt it, and in any case, are they numbers or some other string?) - does the central computer "receive backup requests"? (or, does it receive normal data requests which are not specifically related to backup?) - does it transmit "a" (ie, only one) data backup [ie, file or object]? Does it transmit to one "client computer"? Is it the same one as the one doing the request? - does the "central computer" that does the creating of the data backup [file/object] actually do the transmitting (as required by claim 1)? - Is the data backup [file/object] stored on the client computer? Or somewhere else? - Does something that is a mere copy qualify as a "backup"? Or do you have to be able to restore it? (The patent might suggest a backup has to be able to be restored.)

As this application was actually rejected 4 times during prosecution, which probably leaves a lot of opportunity for finding out what the applicant specifically excluded from what they meant to cover. When an applicant specifically excludes something in order to get the patent, they cannot later come back and claim it.

The point of all of this being, if you get a good lawyer to draft the right letter after looking at the available records, you might be able to do much better than just claiming prior art.

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Thanks. A lot of very good ideas :) –  Raph Nov 11 '12 at 18:54
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