British Telecom sues Prodigy over U.S. hyperlink patent

British Telecommunications PLC (BT), which earlier in the year said it had discovered that it owns the U.S. patent for the invention of the hyperlink technology used on the Internet, has sued U.S.-based Prodigy Communications Corp. for copyright infringement.

The London-based telecommunications company filed the suit in federal court in White Plains, New York, on Wednesday. Judge Barrington D. Parker, Jr. will oversee the case, a court spokesman confirmed Friday. BT declined to give details about any damages the former state-owned U.K. telecommunications company is seeking from Prodigy.

“We are looking for appropriate reparations,” said BT spokesman David Orr.

Early in the year after discovering in a routine check that it owned the patent for the hyperlink, BT wrote to 17 U.S. ISPs (Internet service providers), including Prodigy, asking them to pay for the privilege of using the technology through licensing agreements. The suit filed against Prodigy, which claims to be largest consumer DSL (digital subscriber line) ISP in the U.S., is the first suit BT has filed to protect its hyperlink patent, according to Orr.

Prodigy on Friday charged that BT came after it first because Prodigy was the first commercial ISP in the U.S. Of the 17 ISPs on BT’s payment list, Prodigy stands as the initial one under legal attack.

“Given that Prodigy was the first commercial Internet service provider in the United States, it is no surprise that British Telecommunications would single us out for this lawsuit,” said Dan Iannotti, legal counsel for Prodigy, in a statement.

Charging BT with stifling the advancement of technology, Iannotti said the BT lawsuit is a petty attempt to attack innovation. Prodigy is calling on ISPs to unite and fight BT’s claims.

“This week’s lawsuit filed by British Telecommunications against Prodigy Communications threatens how consumers connect to and maneuver on the Internet,” he said. “This lawsuit is a blatant and shameless attempt by BT to capitalize on the initiative and success of Prodigy and other pioneers of the Internet. Prodigy intends to vigorously defend this lawsuit and protect the Internet experience that consumers enjoy today. We expect our fellow Internet service providers and other companies using the Internet to join us in this challenge.”

Specifically, BT says that it has what it calls the Hidden Page patent, which was filed in the United States in 1976 and granted in 1989, giving the company the intellectual property rights to the hyperlink technology, BT spokesman Simon Gordon told the IDG News Service in an interview in June. Hyperlinks connect text, images, and other data on the Internet in such a way as to allow a user to click on a highlighted object on a Web page in order to bring up an associated item contained elsewhere on the Web.

BT, which holds about 15,000 patents worldwide, found that similar patents were filed in other countries, but have since expired. The U.S. patent does not expire until October 2006, Gordon said.

“Early this year we wrote to 17 top U.S. ISPs asking to be reimbursed for the use of the technology. We’ve heard back from the majority of those companies, all saying that they need to review the matter and get back to us,” Gordon said.

BT has hired U.K.-based technology development and licensing company Scipher PLC to broker licensing agreements with the U.S. ISPs. BT said that it would not pursue patent claims with individual users, as it would “not be practical.”

Gordon declined say how much BT expects to charge for licensing fees or how much the company expects to make from its claims on the patent, but agreed it would be a sizable sum. “We realized the value of this one patent three years ago and have been reviewing with our legal experts which was the best way forward,” Gordon said.

There were around two billion pages on the Web as of January this year, according to the Internet Society Organization (ISOC), a trade association based in Reston, Va. Depending on whether a page is a privately run or commercial, typically pages have between one and three hyperlinks, or between 50 to 100 hyperlinks according to ISOC.

Tim Berners-Lee, is generally credited as leading an effort, with Robert Cailliau, to write the underlying protocols – including HTTP, or hypertext transfer protocol – for what later came to be known as the World Wide Web, at the CERN nuclear research center in Switzerland in the late 1980s. Berners-Lee’s work was based on, among other things, earlier work carried out by Ted Nelson, who is generally acknowledged to have coined the term hypertext in his 1965 book, “Literary Machines.”

Berners-Lee who also founded the World Wide Web Consortium (W3C) in 1994, of which BT is currently a member, is aware of BT’s claims that it holds the U.S. patent to the hyperlink but has been very cautious about commenting on it.

“I haven’t looked at that particular patent, so I can’t formally comment on it. But I can say that Web development is seriously threatened by frivolous patents, though you can’t quote me as saying I called that patent frivolous,” Berners-Lee said to the IDG News Service on Oct. 5 at the London launch of GlobalCenter Inc.’s new Web hosting center.

According to BT’s Orr, the company is wholly unconcerned about generating any negative publicity by suing for the use of such a commonly used Internet technology. “We’re looking for no more or no less than is appropriate for the rights to our intellectual property. It is a reasonable action,” Orr said.

BT, in London, can be reached at Prodigy, in Austin, Tex., can be contacted at Scipher, in Middlesex, England, can be contacted at The World Wide Web Consortium (W3C) can be contacted at The Hidden Page patent can be accessed at Sect1=PTO1&Sect2=HITOFF&d=PALL&p=1&u=/netahtml/srchnum.htm &r=1&f=G&l=50& ;s1=’4873662′.WKU.&OS=PN/4873662&RS=PN/4873662.

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