Patent Dispute

Patent Dispute

The Braille Monitor

_July 1997

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PHOTO/CAPTION: Larry Israel

Patent Dispute

Threatens Prices of Braille Displays:

Alva Takes Aim at Everybody

Every time one turns around one finds another example of the disadvantages

facing producers and

consumers alike in a small technology market like the blindness field. Here

is the latest crisis hanging

over everyone interested in the refreshable Braille display technology used

in the portable note takers

and in the Braille screen displays of desktop and laptop computers. But this

time there may be

something consumers can do to help. Larry Israel, Chairman, President, and

CEO of Telesensory

Systems, Inc., wrote the following memo for the Braille Monitor summarizing

the history of the problem:

Subject: The Alva Patent Situation

date: May 28, 1997

Deane Blazie asked if I would provide you with some historical background

relating to the Alva

patent situation. In approximately mid-1992, Telesensory became aware that

U.S. patent 4,985,692

had been issued in January, 1991, to Jacob (Jaap) Breider and Arend Arends.

Jaap Breider is

President of Alva B.V. of the Netherlands, a firm which is a major supplier

of refreshable Braille

displays. We later learned that similar patents had been obtained in Europe,

Canada, and Australia, all

of which were assigned to Alva B.V. in the Netherlands, a company of which

Breider is Managing

Director.

The patent purported to cover what is commonly referred to as "cursor

routing." This function

typically involves some kind of switch near each Braille cell, which, when

depressed, will bring the

cursor on the screen to that position. This is claimed to be a convenience

to users of refreshable Braille displays. For instance, while reading the

information on the screen (which does not require moving the cursor), if a

typographical error is discovered which the reader wishes to correct, depressing

the cursor switch brings the insertion cursor to that letter, and the correction

can then be made quickly and easily.

In October, 1993, Telesensory received a letter from Jaap Breider claiming

that Telesensory's

Navigator line infringed on the subject patent and requesting discussions

about paying a royalty. (There may have been some earlier correspondence,

but this was the first time I had heard of it, based on my current file search.)

We also have good reason to believe that numerous other companies were similarly

approached at one time or another from that time until the present, including

Baum Elektronik of Germany, Frank Audiodata of Germany, Papenmeier of Germany,

Lameris BV in Holland, Blazie

Engineering in the USA, Tieman B.V. of Holland, KHS of Germany, and Metec

of Germany. In each

case Jaap Breider claimed that his patent was being violated by what had been

since the mid-80's a

common feature in virtually all Braille displays.

He threatened to institute lawsuits against various parties unless they agreed

to pay rather substantial

royalties. To the best of our knowledge, he has never filed a patent infringement

lawsuit, perhaps

because (as I will describe below) there is substantial doubt as to the validity

of his patent, nor is anyone paying royalties to him with respect to this

patent, as far as we know.

It was and is the opinion of Telesensory that the patent was essentially invalid

because, among other

reasons, (a) a number of products had been marketed in Europe and the USA

as early as 1985 which

used the same cursor-routing scheme that was now patented; (b) academic papers

had been written at

the University of Stuttgart (Germany) which predated the European patent application

by more than a

year and disclosed the idea of cursor routing; and (c) by the time Breider

applied for the patent, the idea was obvious (a bar to a patent in almost

every country) and was being widely used in many different, independently-developed

products.

The history of the U.S. patent is interesting because it has a bearing on

whether the patent is valid.

The application was filed on January 20, 1988. It claimed priority based on

a Netherlands patent

application filed January 23, 1987. This date is quite important, because

it is my understanding that if it

could be shown that a device embodying the same technology or idea was marketed

more than one

year before that priority date of January 23, 1987, the U.S. patent would

be invalid. I do not specifically know the effect on the patents in the other

countries, but I think it likely that the impact on their validity would be

similar (although patent law is sufficiently complex and variable from country

to country, that I would hesitate to make any general claims on this point).

Note that I have stated above that other products using this same idea were

marketed as early as

1985 in the USA and Europe. If that could be proven, then the various patents

would be invalid, since

any date in 1985 is clearly more than one year earlier than January 23, 1987.

As I will show in a

moment, that has in fact been proven.

Over the next few years considerable action took place in the European Patent

Office (EPO), mostly

in Munich, in what is called an "opposition." Various other manufacturers,

including Baum Elektronik

and Metec in Germany, argued to the EPO that the patent was invalid because,

among other reasons, of "prior art." It was exceedingly difficult

to reach a resolution because many documents were unclear and difficult to

recover since considerable time had elapsed. The EPO issued various interim

or tentative decisions, first favoring one side and then the other.

However, a very recent ruling by the EPO in Munich, dated May 5, 1997, contains

the following

points:

1. The Baum Braille-Box was publicly available in 1985.

2. The available descriptions of that device

indicated that it "destroys the novelty" of Claim #1 in the European

patent being examined (which is

basically the same as the U.S. patent).

3. If certain associated allegations were supported, for example, by affidavit

(a relatively easy matter),

then the patent could no longer be maintained in its present version.

The parties (Alva and Baum) were given two months more to submit additional

information. While

the patent holder still has the right to protest further, if that were all

there were to it, it is highly likely that the European patent would finally

have been rejected, and with it, all the other patents would probably fail

as well. However, there is a peculiarity in European law, as I understand

it, which allows a patent to be restated to try to make it OK, even after

it has been found to be invalid after it was granted (as here). I do not believe

this is possible under U.S. patent law.

There is little doubt that Alva will now rewrite the patent, along lines suggested

by the EPO, so that

the opposition and argument will still not reach an end. It is less clear

whether the patent can be

sustained under U.S. law since I don't think U.S. law permits rewriting the

patent once it has been

granted. If it's found invalid, that's the end of it. But, once again, I must

clearly state that I am not a

patent attorney, and this is a particularly arcane legal area, which is difficult

to understand with any

certainty.

So this still leaves considerable uncertainty, and it may well take years

to play this out to its final

ending. Meanwhile, valuable resources, which could be put to better use benefiting

blind people around the world, are being spent in a patent battle in Europe,

likely to be followed by one in the USA if necessary. The view of the many

companies objecting to Breider's patent is that he patented something which

was obvious and being widely used and which he did not, in fact, invent--as

most lay people would understand the term. They believe that he was able to

get his patents because no one in this small industry has patent lawyers busily

watching out for this kind of thing so that they can object at an early stage

(which makes the job much, much easier). The fact is that many patents are

granted which should not be, simply because no one is interested enough or

aware enough to object at an early stage. Most of the time it makes no real

difference.

In the interests of settling this matter and avoiding legal fees, a number

of companies have offered to

pay royalties to Breider in some commercially reasonable amount. Breider's

only demand until very

recently was for a royalty of four percent of the selling price of Braille

displays using cursor routing or its equivalent (in his opinion). This would

amount, for instance, to more than $200 on a typical 40-cell

Braille display and is quite a substantial amount, which would have to be

passed along to all customers.

After the May 5 EPO ruling of a few days ago and presumably with this information

clearly available

to him, Jaap Breider called me and asked if I was willing to settle on behalf

of Telesensory. I told him

that it was a nuisance and was taking time and that I would be willing to

pay him a moderate amount,

just to be rid of the matter, provided that I could persuade other major manufacturers

to do the same

(which I think could be done). He rejected my offer out of hand, which means

that the battle will

continue.

We are hopeful, as are other companies who manufacture Braille displays, that

this matter can

eventually be put to rest in some way which leaves all the parties feeling

reasonably satisfied. However,

it is unlikely that can be accomplished if Breider continues to insist on

an unreasonable royalty for a

product feature which all his competitors believe should not have been patentable

and for which a patent was obtained only because the patent offices erred

by dealing with an area in which they have little knowledge and where there

was little published information to refute the unsupported claims of the applicant.

In fact, when we have our day in court (which we will do if we are ever sued

for infringement here in the United States), we intend to argue (1) that Breider

was fully aware of the Baum Braille-Box at the time he filed his initial patent

applications in the Netherlands and the USA, (2) that it was wrong of him

not to disclose that information to the respective patent offices, and (3)

that his patent ought to be invalidated on those grounds alone without more

(although there are ample other grounds as well to invalidate the patent).

Cordially,

Larry Israel

Chairman/President/CEO

Telesensory Corporation

There you have Larry Israel's summary

of the situation.

Here is the history as Jaap Breider

described it to the Braille Monitor. Breider was a student in the

early 1980's studying psychology, particularly artificial intelligence and

cognitive engineering. He is

blind, and he concluded that his work would be easier if he had a Braille

display for his computer, so

he built one, and in February of 1984 he and a partner established a company

in Holland which they

called Alva, Inc.

Breider conducted some experiments using other blind students at his university.

He gave them

computer documents with spelling mistakes and timed them as they corrected

the errors. He determined that, if there were a way to bring the cursor to

the word requiring correction, the task could be completed much more quickly.

He took this idea to his partner, who designed and built the tiny switches

beside each Braille cell

within a week. Breider, who has been in this country for several months, could

not remember exactly

when this technology was patented, but he did not object to the January 23

date provided by Larry

Israel. He said that all the patent applications were submitted at approximately

the same time. He has

not been able to confer with his attorneys about the May 5 decision by the

European Patent Office, so

he was not willing to comment on the company's plans in the light of that

decision. He did say that he

does not at the moment plan to rewrite the European patent because he does

not believe it is necessary

since the court did not "take it off the table."

The obvious question to be answered is what date did cursor routing first

appear and how generally

was the concept adopted? Will knowledgeable and experienced blind users now

volunteer to prepare

affidavits about the dates they first had access to cursor routing and related

points? Some people may

have manuals or data sheets that pre-date the Alva Patent and therefore clearly

show prior art. Letters

or articles from 1985 might also help if they establish that the technique

patented was either obvious or

used prior to January 23, 1986, a year before the patent.

One particularly thorny point is that the patent claims that the ability to

keep one's hands on the

Braille cells while also activating a cursor-routing switch is an important

characteristic. But, as Larry

Israel points out, "This was possible with the bar on a VersaBraille,

which we considered logically

equivalent to the individual switches in a current cursor-routing arrangement,

and the provision of a

switch next to each cell was an obvious extension and provided nothing innovative

or new but was

simply an evolutionary growth in technology that many product developers saw

at about the same time."

Readers who believe that they may have information that could assist in demonstrating

that cursor

routing was available to users in 1985 should contact Larry Israel. Here is

the text of the request he

makes:

Telesensory Corporation is spearheading a group of manufacturers of Braille

products, including

Blazie Engineering and many others, who are organized to deal jointly with

these patent issues, with the

goal of holding down the cost of these products for blind users worldwide.

Any information you may

have can be sent to Larry Israel at Telesensory Corporation, 465 Bernardo

Avenue, Mountain View,

California 94043, (e-mail: [email protected]). If you have documentary

information, please send

Larry the best original copy you have and retain a copy for yourself. You

should also let Larry know if

you are willing to have your name and occupation identified specifically in

any information submitted to a patent office and if you are willing to sign

an affidavit regarding your knowledge and information, if requested to do

so."

Obviously no one wants to pay royalties for cursor routing to Alva. Deane

Blazie commented that he

did not want to spend money on royalties that would just drive up the prices

of technology for blind

users. Larry Israel agreed but pointed out that Telesensory is spending a

few thousand dollars every

month in legal fees, along with management time and resources, on this case.

As with most legal matters, the nuisance value makes it desirable to try to

settle even unfounded legal claims. But since Breider continues to be unreasonable

in Israel's opinion, it seems unlikely that the matter will be settled

anywhere but in court.

Rumors circulate suggesting that Alva is financially over-extended and that

these royalties would be a

helpful augmentation to the company's income. While Breider agreed that money

is always useful, he

categorically denied that Alva was in financial trouble. He admitted that

1995 had been a poor year for

the group, but he said that 1996 was quite good, and 1997 appears at this

point to be very good

indeed. He says that several of his European competitors are in a much weaker

financial position than

Alva.

He pointed out that in August of 1996 Alva purchased Berkeley Access, a division

of Berkeley

Systems. Such an acquisition took money and could not have been made if Alva

had not been in a

strong financial position. Alva has moved the sales and marketing part of

the operation to new offices in Emeryville, California, and development and

supervision to the Netherlands. The new entity in

Emeryville is now called the Alva Access Group, Inc. Among its other offerings,

it is the only supplier

for Macintosh-access products (Inlarge and Outspoken for Macintosh). Alva

is now working on

Windows 95 access using a refreshable Braille display.

When asked why it took Alva so many years to get around to pressing seriously

for licensing

agreements with the other producers, Breider said that he was busy building

his company and its

product line.

Breider is pleasant but cautious in conversation. He is convinced that this

technology belongs to his

company, and he intends to get the royalties that rightfully belong to him.

The American companies are

just as convinced that the technology was generally available before the Alva

patent applications were

filed. It seems pretty clear that this disagreement will be fought out in

court and that, whether it's large

licensing fees or fat lawyers' fees, blind consumers will be paying for the

final resolution of this battle.