Claiming a Threat to Innovation, Group Seeks to Overturn 10 Patents

A coalition of lawyers, researchers and software experts formed by the Electronic Frontier Foundation will try to overturn 10 Internet and software-related patents that the group says are so sweeping they threaten innovation.

While most of the patents are held by little-known companies, two industry leaders have also been named: Clear Channel, which has patented a way to distribute recordings of concerts within minutes after they end, and Nintendo, whose patents include some concerning platform software for hand-held games. The list also includes one individual.

"Traditionally, the Patent and Trademark Office has not been able to give these kinds of patents as tough a look as ones in chemistry, for example," said Jason Schultz, a lawyer with the group.

The list of targets was drawn from 200 submissions solicited through the Web site of the Electronic Frontier Foundation, based in San Francisco. It includes patents covering telephone calls over the Internet, streaming audio and video, and online testing.

The foundation, which promotes "digital civil rights," is not alone in questioning the patent process. A report issued this spring by the National Research Council of the National Academies called for, among other things, improvements in the system for challenging patents.

One patent the foundation dismisses as "laughably broad" is held by Acacia Research of Newport Beach, Calif.; as the company describes it, the patent covers systems for "the transmission and receipt of digital content via the Internet, cable, satellite and other means."

Robert Berman, executive vice president of business development and general counsel at Acacia, said the company holds sweeping patent rights because it conducted extensive research to pioneer the digital transmission of content. He predicted the foundation's challenge would not succeed.

"Broad is not necessarily bad," he said. "If you've got a broad patent and it's valid, that's a very strong patent."

The company has filed patent infringement lawsuits against adult entertainment Web sites and, more recently, against nine cable and satellite television providers.

As with all the patents on the list, Mr. Schultz said his team of volunteers hopes to uncover evidence that other companies had already developed the concepts covered by the patent. If it finds such "prior art," as it is known, the foundation will ask the patent office to invalidate Acacia's patent. However, Mr. Schultz acknowledges that a lack of documents can frequently make it difficult to discover such evidence in the case of software and Internet systems.

"A lot of software code is done, dumped and never documented," Mr. Schultz said.

Another patent on the foundation's list covers a way to make telephone calls over the Internet. Mr. Schultz said the company holding that patent, Acceris Communications of Toronto, had drawn the group's attention by filing an infringement lawsuit against a relatively small service provider, ITXC, rather than larger companies like Vonage Holdings. Small companies rarely have the resources to fight infringement suits, Mr. Schultz said.

The president of Acceris, Kelly D. Murumets, rejected the charge that the company was pursuing only small rivals.

"Acceris has not targeted smaller players," Ms. Murumets wrote in an e-mail message. "In point of fact, and only after offering a license, Acceris filed a lawsuit against a major player" in the industry, ITXC.

Ms. Murumets, like Mr. Berman of Acacia, said she was confident the foundation would not find any reason for the patent office to reject the company's claims.

Test Central, which operates a Web site called Test.com and holds patents for online testing, is the only company to have contacted the Electronic Frontier Foundation since the list's release last week.

The testing patent is of particular concern to Mr. Schultz because the company sent letters describing its claims to a number of universities - suggesting it might eventually seek licensing fees from nonprofit institutions.

James Posch, the chief executive of Test Central, said the company had no intention of enforcing its patent against nonprofit institutions. He said Test Central would try to work with the foundation to develop a formal restriction exempting nonprofit users from its patent.

"We recognize the good E.F.F. is trying to do," he said. "We're a little bit concerned that they've been using a little bit heavier a hammer than they needed to with us."