US Patent Office to re-examine JPEG patent

By Steve Malone

Posted on 6 Feb 2006 at 11:10

The US Patents and Trademark Office is to re-examine the validity of the patent underpinning the JPEG (Joint Photographic Experts Group) image format, which is widely used to share computer images throughout the world.

The request for a re-examination came from the pressure group the Public Patent Foundation (PUBPAT). The US Patent No. 4,698,672 - popularly known as the '672 Patent - deals with image compression. In its response to a PUBPAT submission regarding a Tescher 4,541,012 patent showing 'prior art', the Patent Office found 'a substantial new question of patentability' which casts doubt on the validity of the JPEG compression patent.

The '672 patent is currently owned by a company called Forgent Networks which acquired the patent when it bought out Compression Labs in 1997. Since then, Forgent has aggressively pursued royalty claims from a large number of companies. According to company data, Forgent currently has outstanding litigation against some 40 companies for infringement of the '672 Patent. Among the companies that have been sued over the JPEG patent are some of the biggest names in the business including Apple, IBM, HP and Dell.

The litigation has proved a lucrative business. It has generated around $105 million in revenues primarily from licensing the '672 Patent to more than 50 different companies in Asia, Europe and the United States - the most recent licensee being JASC Software, the developer of the best selling PaintShop Pro program.

In its re-examination order the USPTO says: 'There is a substantial likelihood that a reasonable examiner would have considered the Tescher patent important in making a decision of the patentability' of the 672 patent.

Dan Ravicher, PUBPAT's Executive Director. 'This is the first step towards ending the harm being caused to the public by Forgent Networks' aggressive assertion of the patent, which would never have been issued by the Patent Office if they had known of the prior art that we submitted as part of our re-examination request'.

You can see the US Patent Office re-examination here.