McAfee’s services patent raises questions

By obtaining a new patent for how it delivers software services via the Web, Corp. may have cornered the market on what is viewed by some as a major source of future growth. Opinion on the matter is split between lawyers and vendors, while McAfee says that it is just protecting its business.

Disagreement was stirred by last week’s announcement that has been granted the patent on its technology and business model for delivering software as a service through Web browsers. One patent expert whose company challenges patents thinks the McAfee case could be a “winner” for his business and be a first step to lawsuits, while others expressed similar sentiments in online message boards. But competing security companies and ASPs (application service providers) are untroubled by the news.

The software-as-a-service model, which sends software updates, or even entire programs, to a subscriber through a standard Web browser, is seen as a source of potentially huge growth in a number of markets and is at the core of business models at many companies. Security vendors hope to use the technology to instantly deliver antivirus and other security updates to their customers.

But McAfee’s patent also might be seen as overly broad. Because of this, doubts have been raised about the validity of the patent, with critics citing pre-existing work, or “prior art,” in the area.

“On its face, it’s hard to see how anyone could see this as new,” said Charles Cella, a former patent attorney and current chief executive officer (CEO) of BountyQuest Corp., a company that specializes in challenging technology patents. Patents are only supposed to be granted to new, non-obvious ideas.

“(The patent) definitely strikes me as falling in the category of patents that are surprisingly broad,” Cella said, adding that it is surprising that anyone could be granted a patent on the technique so long after similar products started appearing. The patent might be interpreted to cover the business model of all ASPs, meaning that those companies might have to pay licensing fees to McAfee to continue operations, Cella said.

But that’s not going to happen, said McAfee CEO Srivats Sampath. The patent was obtained defensively in an attempt to protect McAfee’s intellectual property for the future, Sampath said. The ASP model is not covered by the patent because it relates specifically to McAfee’s offerings of security services, he said.

“We are not actively on a jihad to find people who are acting on the patent,” he said, dismissing the notion that the company would pursuit litigation.

Some companies may still wish to challenge the scope of the patent, but they will have a tough road ahead of them. Challenging patents is a long, difficult process, Cella said, and usually results in a narrowing of the patent’s scope, rather than an invalidation.

One method of narrowing or invalidating a patent is to demonstrate that prior art existed one year before the patent was filed, Cella said. McAfee’s patent application was filed in 1998.

“There is a very high likelihood that there are ASP-type models that have been out there before 1997,” Cella said.

Despite the questions surrounding the patent, Cella expects that McAfee will derive money and influence from it.

“It’s clearly enforceable on its face,” he said. Questionable patents are often successfully enforced when the company controlling them is big enough, has enough to money to litigate the patent if need be and controls a broad patent – three conditions that are met in this instance, he said.

“I expect this patent to be a thorn in the side of a lot of companies,” Cella said.

Not every company is so sure.

“We don’t believe it will affect our business,” said a spokesman for Symantec Corp., a McAfee competitor that already offers some security services. Even so, Symantec’s legal and product teams are looking into the matter, he said.

Another of McAfee’s competitors, antivirus company Trend Micro Inc., which shares a cross-licensing pact with McAfee, has no worries about the patent. The company checked with its attorney after learning of the patent and decided that “it’s not going to really have any affect on Trend or our business,” now or in the future, according to Barbara Woolf, U.S. director of public relations.

Microsoft Corp., whose Windows Update Web site and .Net initiative both might conceivably fall under the patent’s purview, declined to comment for this story.

ASPs — the group of companies that might be most seriously threatened by the patent — have little to worry about, said Jim O’Reilly, communications director for the ASP Industry Consortium, a trade group.

“I’d be surprised to see that this had any particular impact beyond offerings of (McAfee’s) particular service set” of security offerings, he said. McAfee likely obtained the patent as “they are concerned because they see others in the industry moving towards this model,” he said.

O’Reilly doubts that McAfee will try to extract licensing fees from ASPs.

“I don’t think this was their intention,” he said, also noting that ASPs have been in business for between three to five years, thus demonstrating clear prior art.

Rather than a threat, the patent and such a large company obtaining it is “very strong news because it offers a validation of the ASP model,” O’Reilly said.

BountyQuest’s Cella doubts whether competitors and ASPs are as safe as they think they are, saying that McAfee may have gotten this patent for defensive reasons, but more than likely, “McAfee does intend to enforce this patent.”

In enforcing it, the “patent … will produce major royalties for McAfee.”

As to how such a patent — which in his view affords protection to an already widely used idea — might be granted, Cella said that government patent examiners are limited in the range of sources they are allowed to examine when they research patent applications. Patent examiners are rarely allowed to use much common knowledge to vet applications, he said, noting however that the examiner who worked on this application seems to have conducted good, thorough research.

Cella’s own company, BountyQuest, employs a wide range of researchers to find prior art on questionable patents after a bounty has been placed on that patent. Cella has offered to waive the bounty fee required to challenge McAfee’s patent, as he expects that extant prior art could narrow this patent.

“My guess is that this is one where we could find a winner,” he said. Corp., in Sunnyvale, Calif, can be contacted at BountyQuest in Boston can be contacted at