Subject: [Asrg] C/R patents

From: "Jed Margolin" <[email-masked]>
Date: Mon, 12 May 2003 12:32:14 -0700

----- Original Message -----
From: "Yakov Shafranovich" <[email-masked]>
To: <[email-masked]>
Sent: Sunday, May 11, 2003 1:28 PM
Subject: [Asrg] C/R patents

> I finally found the actual patents, they are discussed in this story:
>
>
http://www.siliconvalley.com/mld/siliconvalley/business/columnists/mike_lang
berg/5565050.htm
>
> According to the story both patents are currently owned by MailBlocks,
Inc.
> The patent numbers are US# 6,199,102, filed August 26, 1997 and issued
> March 6, 2001; and US # 6,112,227, filed on  August 6, 1998 and issued
> August 29, 2000. Both patents can be looked up at the website of the US
> Patents and Trademarks Office
(http://patft.uspto.gov/netahtml/srchnum.htm).
>
> Abstract of patent #  6,199,102:
>
> A method is provided for preventing the delivery of unwanted electronic
> mail messages to a destination client. An original electronic mail message
> is first received from a source client at a destination server. Next, a
> reply electronic mail message is sent from the destination server to the
> source client requesting the source client to complete a registration
> process to register the source client's electronic mail address with the
> destination server. The original electronic mail message is only sent from
> the destination server to the destination client when the source client
> properly registers the source client's electronic mail address.

I am not a patent attorney, but I do know the following about U.S. patents:

1. The abstract of a patent has no legal significance.

2. The scope of the patent is determined by the claims.

3. The claims are interpreted by the Specification and can be further
limited by the prosecution history of the patent. If the Applicant made
a statement to the Examiner in order to get the patent allowed, and that
statement limited the scope of the invention, then the patent will be
limited
by that statement. (The complete file of an issued patent can be ordered
from the USPTO but it costs a few hundred dollars.)

4. The scope of the patent can be limited by statements made by the
inventor.

U.S. Patent 6,199,102 has 37 claims of which 4 are independent and 33 are
dependent. (Dependent claims further limit the independent claims.)

The first claim is:

-------
1. A method for filtering electronic messages, the method comprising:

receiving an electronic message from a sender, the message including an
address field containing a sender's address;

comparing the sender's address to a list of accepted senders;

sending a prompt back to the sender if the sender's address is not contained
in the list of accepted senders, wherein the
prompt is designed to be answered by a person and not a machine.
-------

This sounds really broad and there does not seem to be anything in the
Specification that would limit it.

The next area of attack is to find prior art.

The prior art listed on the patent consists of several U.S. patents and some
non-patent references whose earliest date is 1996.

The ability to get software patents is relatively recent and the Patent
Office has been criticized for not doing a good job of digging up non-patent
prior art for software patents.

If you want to knock the patent down you need to find prior art, such as a
published article somewhere, anywhere, in any country, in any language. It
doesn't have to have been widely published, just something that someone
*could* have obtained publicly.

Considering the message rule capability available in Microsoft Outlook and
Outlook Express I would be surprised if no one had publicly suggested using
it in the manner claimed by the '102 patent (maybe with a script).

A request for a patent re-examination is possible, but expensive. (Sometimes
the Patent Office initiates the re-examination process.)   A lawsuit to
invalidate a patent is also possible (and expensive.)

Of course, a patent owner presented with a knockout example of prior art,
and who acts in his/her own enlightened self-interest, could simply agree to
not enforce the patent.

Jed Margolin

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---

From: Yakov Shafranovich <[email-masked]>
Date: Mon, 12 May 2003 16:46:46 -0400

>and who acts in his/her own enlightened self-interest, could simply agree to

My point was to inform the group of existance of those patents. As for 
their challenge, I believe that Earthlink will probably challenge them anyway.

Yakov