Schneider Files Patent Infringement Suit Against Opto 22

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Thread Starter

Jeff Dean

I've taken this from the ARC Automation News headline website... Given the recent discussion on the sale of intellectual property, patents, and enforceability, this should be an interesting one to watch. Schneider Electric's Automation Business unit claims that Opto 22's Ethernet Brain products and associated industrial automation systems infringe on Schneider's 1998 US patent 5,805,442 purchased in 2000 from the original inventor Ken Crater of Control Technology Corporation. Schneider claims that the lawsuit is part of its policy of vigorously protecting and pursuing patent rights. Opto 22 claims that this lawsuit has caught them completely by surprise and is totally without merit. Opto 22 questions the validity of the patent, and Schneider's motives when the whole automation industry is Web-enabling their products. More complete story and ARC commentary (may require filling out a form): http://www.arcweb.com/arcweb/IndNews/indnews.asp?News=3DA#32200194123

 
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Alex Pavloff

More info on their patent is available at: http://www.delphion.com/details?pn=US05805442__ Here's the abstract: ----------------- "An integrated control system comprises one or more controllers each equipped to perform a control function and to gather data (ordinarily from sensors) relevant to the control function. Each controller contains computer storage means, such as computer memory, for storing the relevant data and instructions, associated with the data, for causing a remote computer to generate a visual display incorporating the data in a predetermined format; and a communication module for establishing contact and facilitating data interchange with the remote computer. The remote computer, in turn, also includes a communication module compatible with the controller-borne module, and which enables the remote computer to download the data and associated instructions from one or more controllers. The remote computer also includes a facility for processing the instructions to create a user interface encoded by the instructions, and which incorporates the data. In this way, controller data is coupled to instructions for displaying that data, and this totality of information is continuously accessible, on a freely selective basis, to the remote computer. " ------------------- Well geez guys -- everyone talking to their controllers over any sort of communication line had better start sending Schneider money. Since this patent lists Mr Crater as the inventor, I'd be interesting in hearing his thoughts on this.
 
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Ralph McDonald, P.E.

If I am reading this abstract correctly, then the network of Cambell Scientific CR10 Datalogers, autodialer modems, and headend software that I setup about 10 years ago might be in trouble. This was a system to monitor a group of wastewater pumping stations, report to a central sulfide control building, and control a bypass valve. What is the date of the patent? Ralph G. McDonald, P.E. Spicer Group
 
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Don Zunti, P. Eng.

If you had read more than just the abstract, you would have been aware that the patent is much more specific - it specifies that the communication interface includes a web-enabled controller module as well as communication over the internet and using a web browser. I'm not taking any position on the validity of the patent or the lawsuit, but the issue is a far cry from the comment about 'any sort of communication line'.
 
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Wallinius Mattias

No, but XML would lie in the risk zone and so do all selfdescribing data types. Shouldn't be to hard to get around that patent. /Mattias
 
All of the claims in this patent can be easily invalidated with prior art going back to the early 1990's. I expect that Opto 22 are confident about winning, although the $$$ aspect may be a different story. Of more concern is the Schneider 318 patent. Obviously many small OPC vendors want to know if they still have a business without paying for extortion to the now very predatory Schneider. What needs to happen to invalidate this patent ? Is there any publicly available prior art or legal precedence that will give the small companies some confidence ? Is the OPC foundation able to do anything stronger than revoke Schneiders membership ?
 
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Woodard, Ken CLEV

Patents need to have a quality of non-obviousness, and validity is certainly a question for the patent office in the allowance of this patent. Is it invention to take the following two things together? 1. Multi-tasking, PC-based control was well disclosed and documented prior to this patent application, "Direct Control of large Processes using a Micro-Computer", ISA "Advances in Instrumentation and Automation", Volume 48, Part I, Pg 603, documented the advantages of integrated display and control. 2. PC-based web-servers were well disclosed and documented prior to this patent, and public-domain products contained means to link process data to the displays, as well as to create programs (java) for display. Therefore, it is obvious to perform 1 and 2 on the same computer.
 
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Frank Iwanitz

Hi, two questions. First one: The patent is dated 1987. Technology comparable to the one claimed by the patent has been used over years since then (DDE, ActiveX controls, OPC, ...). Why did nobody mention the patent???? Second one: If the patent only describes the invented technology in a way as shown above, then this technology was already known years before the patent was born. What's about all these DCS (DISTRIBUTED CONTROL system) and SCADA (supervisory CONTROL and DATA ACQUISITION system) manufactured in the 80'ies? TDC 3000 by Honeywell and so on ... A number of the vizualisation companies (Intellution, Iconics, ...) have been founded in the beginning of the 80'ies. What have they implemented in their products, if not collecting data from controllers, sending them to applications on pc's and displaying it? Schneider has obviously taken information from the OPC foundation Web site and is sending Mails out to listed end-users demanding money from them. This patent is not the first one, that should be used to collect money from industry. I guess it will not succeed as others before. o.k. As you know, the opinion above is only my opinion and so on and so on .... Regards, Frank Iwanitz
 
To make sure there is no confusion, the patent involved in the suit against Opto22 (5805442) was filed in 1996. It was the 318 patent that was filed in 1987.
 
Yes, my name is on the patent as inventor, since I originally filed for it back in May 1996 (not 1998, which was the issuance date). The patent has since been sold to Schneider Automation, who is free to enforce it as they see fit. Anyone who thinks this incongruous should understand a few things: First of all, there is a great amount of patent activity and patent enforcement in our industry. A common practice among the major players is to protect their turf using patenting strategies, carving out areas of practice and keeping smaller companies from making compatible products. Usually, this activity is all "behind the scenes", since neither the patent holder nor the infringer wants the marketplace to know what's going on. Anyone in business cannot ignore this, or they will get killed. The only thing different in this case is that Schneider has elected to let some light into the process. Anyone who has any doubt about the prevalence of patents in our industry only has to go the US Patent and Trademark Office website and do a search on any company in our industry as "ASSIGNEE". The bigger the company, the more patents you'll find. Secondly, this is actually a case where the patent system worked as intended -- to protect an inventor against larger commercial forces. Here's the classic small business invention scenario: 1. Small company develops significant new technology or a significant new application of a technology. 2. Small company struggles for years to develop a growing market for new technology, and finally starts to gain a foothold. 3. Big company(s) copies technology outright, contracts with a Taiwanese firm to produce huge quantities at a very low price, and drives the small company out of business, thanking it for doing the expensive pioneering work of creating a marketplace. In the case of this patent, however, we tried an alternative scenario: 1. Small company develops an approach, unique at that time, that seems to hold great promise and files for a patent. 2. Patent issues a couple of years later (the USPTO wheels grind slowly). Small company immediately sends out polite letters offering licenses to all major companies in our industry. 3. Small company interprets resulting silence as "Why don't you go ahead and sue us. Heh." 4. Not having $1.5 million (not counting appeals) to pursue a patent suit, small company develops plan B, and opens discussions with a couple of major companies regarding outright sale of the patent. After a long negotiation process, this produces an agreement with Schneider Automation and small company receives large sum of money, along with rights to use other Schneider Automation networking patents. A couple of people on the list have questioned the judgement of the USPTO in this particular patent under "obviousness" provisions of US patent law. Keep in mind that when the patent was filed in 1996, this was hardly the case. We had an advantage in being well versed in Internet technologies, in that we were working with early beta versions of NCSA's httpd and thinking about how the concepts could be brought into the industrial realm before most of our industry even heard of the Internet. At the time the early work on the patent was well under way, I was giving seminars at industry conferences teaching automation folks which side of the "@" sign to place their username. Complaints of "obviousness" always occur after the fact, because every idea that comes into widespread use may seem "obvious" to those who are using it, since it has been integrated into their experience. Ultimately this gets sorted out by the USPTO and the courts. Is this a good system? No, it kinda sucks. But it's the system that is embodied in law today, and any small business person who ignores it soon becomes an ex-small business person. I would be overjoyed if the system were changed, and some initiatives are underway to do so. But it's going to be a major uphill battle, since the patent system is embodied in the laws of dozens of nations and in international treaties. There is also the commercial pressure of billion-dollar patent portfolios in multinational companies that will attempt to maintain the status quo. In the meantime, we have to deal with the reality of the laws and economic forces that exist, since ignoring them doesn't produce very good results <g>. Ken Crater [email protected]
 
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Lunnon, Robert

The concept of applying patent rights to software AT ALL is a silly idea. Patents -were developed to protect inventions with gestation times of years, in order to foster improvement after the period of exclusivity expires. For example drug development costs millions and takes years of work from highly qualified practitioners and had an approval process also several years long. With software development any kid can knock up a reasonably unique algorithm in his garage in twenty minutes and of course Software has a life cycle far shorter than the exclusivity period, this makes patents useless for protecting software. Those US citizens on the list shouldn't be lobbying against this particular patent but should instead be lobbying against the whole concept of patenting software algorithms or at least lobbying for modifications that make the forced disclosure good for the industry rather than a tool to extract $$$ from any passing developer. EG: Exclusivity limited to 2 years Forced disclosure of source code Anyone want a patent now ?
 
I make my living now mostly from what I know and what I write. While any kid can knock together software, can any kid properly debug it, understand the applications it was supposed to perform, and have the liability insurance to back it up when you use it? It takes on average, more than an hour per line of code to write, test and debug a software product for a finished product. If you don't give the developer some means of "extracting $$$" so he or she or they can eat, who will develop software? Not I. I will dig ditches, or wash cars. The idea that intellectual labor isn't hard to do, or should not be rewarded is silly. Why, it is the same argument that says that since you as an engineer don't need to get paid for what you know, I should hire you and pay you what you'd get at McDonalds. Shouldn't you be entitled to the fruits of your labor, at whatever the traffic will bear? Walt Boyes --------------------------------------------- Walt Boyes -- MarketingPractice Consultants [email protected] 21118 SE 278th Place - Maple Valley, WA 98038 253-709-5046 cell 425-432-8262 home office fax:801-749-7142 ICQ: 59435534 "Strategic marketing, sales and electronic business consulting for the small and medium-sized enterprise: http://www.waltboyes.com" ---------------------------------------------
 
Ken, None of the CLAIMS in the patent have anything to do with Internet technologies. The closest is claim 13 - "wherein communication modules connect to the Internet". All of the claims made are in fact functionality that was widespread in the industry before the patent was filed. It has to be seriously questioned whether there was any inventive step here. The patent could have been an improvement patent -using Internet technology to achieve the functionality, but no claim of that nature is made. I am glad you got some $$$ for the patent Ken, but I think its attractiveness to Schneider is not that it was patenting/protecting your development work, but that it was a patent already awarded for what is common industry practice. > A couple of people on the list have questioned the judgement of the USPTO in this particular patent under "obviousness" provisions of US patent law. Keep in mind that when the patent was filed in 1996, this was hardly the case. We had an advantage in being well versed in Internet technologies, in that we were working with early beta versions of NCSA's httpd and thinking > about how the concepts could be brought into the industrial realm before most of our industry even heard of the Internet.
 
Actually, there's probably a trivial way to counter any Ethernet or "Web" patent as new as this: Per a Don Lancaster article "Patently Horrible" at http://www.tinaja.com/glib/patnthor.pdf "You don't need any prior art to bust a patent. All you have to do is show that it would have been reasonably obvious to a 'practitioner in the field'." Opto-22 should just offer a $1000 bounty for every University Thesis or Degree Project brought to it's attention which proves relevant to this case by showing "Prior Art". These are all published and available in each University's library system and students will do a LOT of searching for $1000 pocket money! Since industry is usually a FEW YEARS (or even a DECADE) behind the Universities when it comes to the Web, I'd be very surprised if hundreds of "Prior Art" examples DO NOT show up using Web pages to peek inside & even control devices. And the nice thing about these "published records" is that both the students who submit them and the faculty who receive them *MUST* formally sign and file papers with the University as part of the degree paperwork. These declarations should stand up very well in court as legal "date of publication" records. In fact, the "book" I wrote for my Masters at the U of Minn has such a declaration dated and signed by me & the faculty reviewers bound in as the first page. regards - Lynn Linse
 
Responding to both Lynn's and Ken's messages: Obviousness of putting a web server in a controller is not the issue. I agree with Ken Crater that in 1994, when they were doing a lot of this work, only a few of us had ever had experience with the Web. I have been accessing the Internet for years with Telnet and using Gopher, Archie, and Veronica searches. Pretty primitive compared with Google on my Internet Explorer or Netscape browser page. My argument is that in the patent, there are no claims on the benefits of locating the web server in the controller that would not be obtained by locating the web server anywhere else on the network. In the 19th century there was a patent application which stands the test of time in which the application was for a pencil with an eraser on the end. The patent office denied this patent since the pencil still wrote, and the eraser still erased, and there was nothing new or NOVEL about the location of the eraser with the pencil other than convenience. I think that Opto22 can use this precedence to show that the patent is invalid since there is no novelty introduced. Patents are denied not only for obviousness, but are awarded for novelty of an invention. In my own humble opinion, there may be some novelty in locating a web server in a controller, but the patent did not claim any such novelty not achievable by locating the server anywhere else. I could be wrong, but that's my opinion after reading the patent. Dick Caro ============================================ Richard H. Caro, Vice President ARC Advisory Group 3 Allied Drive Dedham, MA 02026 USA Tel: +1.781.471.1123 Fax: +1.781.471.1023 E-Mail To: [email protected] Web: http://www.arcweb.com ============================================
 
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Blunier, Mark

It looks like the UK Patent office has gotten it right. Lets hope the USPTO can Figure it out too. "19. The Government's conclusion is thus to reaffirm the principle that patents are for technological innovations. Software should not be patentable where there is no technological innovation, and technological innovations should not cease to be patentable merely because the innovation lies in software." The full link: http://www.patent.gov.uk/about/consultations/conclusions.htm Mark Blunier Any opinions expressed in this message are not necessarily those of the company.
 
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Blunier, Mark

Walt Boyes wrote: > I make my living now mostly from what I know and what I write. While > any kid can knock together software, can any kid properly debug it, > understand the applications it was supposed to perform, and have the > liability insurance to back it up when you use it? No, thats probably why most of them put say that they are not liable for any damages. If you have any integrity, the reading of most shrink wrap liscense that comes with most software will make you sick. > It takes on average, more than an hour per line of code to write, test > and debug a software product for a finished product. > > If you don't give the developer some means of "extracting $$$" so he > or she or they can eat, who will develop software? Not having software patents wouldn't keep you from getting paid for writing software. I don't know any software writers that hold patents on software, but I know a lot of people that get paid for writing software. > Not I. I will dig ditches, or wash cars. > > The idea that intellectual labor isn't hard to do, or should > not be rewarded > is silly. You will still be rewarded, you will still be paid. But you shouldn't be able to stop other people from doing 'intelluctual labor' becuase you have a patent. > Why, it is the same argument that says that since you as an > engineer don't need to get paid for what you know, I should hire you > and pay you what you'd get at McDonalds. I don't get paid for what I know, I get paid for applying what I know. But if my employer thought that the 'would you like fries with that' guy can do my job, he would have hired him. > > Shouldn't you be entitled to the fruits of your labor, at whatever the > traffic will bear? Usually, but not always. The guy that has a heart attack at a ball game would probably be willing to pay a lot more for a doctor's care to keep him alive than what the doctor charges (but he'll still complain when he gets the bill). Mark Blunier Any opinions expressed in this message are not necessarily those of the company.
 
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Actually, what it all boils down to is whether or not Opto 22 is willing to pony up the million dollars or so it's going to take to fight the suit. Schneider only has to have one claim upheld in order to win it. I got involved in one of these things about 3 years ago. Everyone I talked to agreed the patent was just plain silly, but my company was the one being sued, and none of them offered to help despite their apparent outrage.... We decided the risk of losing was just too high, with over 400 claims to wallow through, each different from the preceding one by a fine semantic hair, detectable only by a post doctorate philosopher. We caved. Rick Daniel
 
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Mojo Engineer

Opto won't cave. These guys have always carried the anti-establishment flag. Not to mention the industry wide support that's behind them. Watch this one close.
 
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