Company expands case over alleged infringement of file compression patent.
Almost a year to the day after filing patent infringement lawsuits against 31 companies, including Adobe Systems Inc., Apple Computer Inc., Dell Inc. and IBM, Austin, Texas-based Forgent Networks Inc. last week said that its wholly owned subsidiary Compression Labs Inc. has filed suit against Microsoft Corp. for alleged infringement on the patent for JPEG file compression.
In an interview with eWEEK.com last year, Forgent spokesperson Michael Noonan said that Forgent owns the algorithm used in the JPEG file protocol to compress data for encoding, decoding and transport. The company has already received licensing revenues totaling about $100 million from more than 38 companies that use JPEG, including a $16 million licensing deal with Sony back in mid-2002.
On Friday, Noonan told Publish.com that while companies such as Hewlett-Packard Co., Google Inc. and Yahoo Inc. have filed counter lawsuits against Forgent, other companies including Adobe and Macromedia Inc. have since signed licensing deals with the company.
Click here to read more about Forgent's legal actions.
"All kinds of companies use all types of tactics, and every company, depending on the counsel they receive internally, make their decisions accordingly— and in some cases, a judge and jury will have to decide," Noonan said.
Forgent filed the Microsoft suit in the U.S. District Court for the Eastern District of Texas, Marshall Division, less than a week after Microsoft filed a complaint in U.S. District Court for the Northern District of California asking that court to invalidate any infringement or enforceability claims relating to the patent.
"It's unfortunate that, despite Microsoft's recent inquiries about licensing the patent, [Microsoft] chose to file a lawsuit, leaving us no alternative but to assert infringement claims against it," Forgent CEO Richard Snyder said in a statement.
"We are committed to the intellectual property program and our objective remains to protect our intellectual property assets from infringement, and where appropriate to collect a reasonable royalty fee, thus maximizing shareholder value," Snyder said.
Microsoft's decision to file its complaint has precedent. Last month the U.S. District Court of Appeals overturned a $520 million jury verdict against the Redmond, Wash.-based software giant for infringing on Web-browser technology patents owned by Eolas Technologies. The Appeals Court determined that the trial court should have allowed Microsoft to demonstrate its contention that it had not infringed on Eolas' patent because other software developers had developed comparable technology before the Eolas patent was filed.
Jupiter Research senior analyst Joe Wilcox said that he believes Microsoft is trying a similar tactic to fend off Forgent. Stressing that he is neither a patent nor IP attorney, Wilcox surmised that if the Eolas retrial upholds Microsoft's contentions, Forgent might have a difficult time defeating Microsoft.
"It's an unusual situation because you've got all these people rallying behind Microsoft [because] so many are liable and vulnerable to Forgent's claims. The question is not, 'Where is the JPEG used?' It's, 'Where isn't it used?'" Wilcox said.
Wilcox also pointed out that if Microsoft were to lose its case against Forgent, Microsoft could use the loss to its advantage because Microsoft could conceivably establish its own digital file format, just as it has developed formats for video and audio.
