An Absurd Patent

U.S. Patent 4,736,308, the first patent under the heading “Absurd Patents” in “Against Software Patents” is described: “For example, Apple was sued because the HyperCard program allegedly violates patent number 4,736,308 a patent that covers displaying portions of two or more strings together on the screen, effectively scrolling with multiple subwindows. Scrolling and subwindows are well-known techniques, but combining them is apparently illegal.” The League calls this an “outrageous result.” Based on this description alone, any reasonable person would have to agree.

But I am that inventor and Apple was actually sued on a prior related patent, 4,486,857. Because my patents were misrepresented, I researched the other patents described in the League’s article and am reporting my results.

There is much the League did not say about my patent and the circumstances surrounding it. First, it did not describe my background. In 1963 I worked on the software for the first computer designed to be a timesharing computer. I was at Xerox PARC in its early days, wrote two articles for the CACM and a book on user interface design. My patent covers a commercial product called Zoomracks which introduced a new computer metaphor called the card and rack metaphor. Although there is a MS/DOS version, Zoomracks was marketed primarily on the Atari ST. Zoomracks developed a strong base of users who used it for a very broad range of applications, but it was a financial struggle largely because Atari did poorly. In August 1987, Apple Computer introduced HyperCard which is based on a similar, but more limited card and stack version of the metaphor.

I was then faced with having invested six years of raising money, developing a product, marketing it, and proving its value in the market, only to find I was in debt, my customer base was on a dying computer and Apple was giving away free a more polished and featured, although less elegant, version of the metaphor. While Apple may not have set out to rip Zoomracks off, it was aware of it (having seen it under non-disclosure), of HyperCard’s similarity to Zoomracks, and Zoomracks’ patents.

HyperCard created expectations that Zoomracks could not meet, and other companies began to develop HyperCard clones. Meanwhile, I asserted my rights, sued and settled with Apple licensing the patents. Apple is to be applauded for respecting my patents.

IBM was less respectful: We had twice brought our patent to its attention with respect to products like HyperCard and we had visibly asserted our patents and sued and settled with Apple by the time IBM decided to bundle what many consider to be a HyperCard clone. I spent six months patiently trying to deal with IBM. Finally IBM representatives flew to San Francisco to show us prior art-earlier technology-invalidating our patents that they claimed to have. When they arrived, they refused to show us the prior art, “for fear the patent office would recertify our patents in error.” Even if IBM had been straightforward with me during the six months, to accept such an assertion without evidence would have been naive.

Faced with a choice of accepting IBM’s offer of 0.2% of the $5 million IBM is said to have paid to license the token ring patent, or to accept its challenge to “sue us” if we wanted to see the prior art, IBM left me no choice but to fight. But I have chosen to fight in the court of public opinion where possible, rather than the civil courts where, because of its financial strength, IBM has the advantage. I added a detailed description of my dealings with IBM to my book[16] and sent copies of my book to the members of the Commission on Patent Reform when they asked for comments.

Based on my experience I formulated Heckel’s Principle of Dealing with Big Companies: There is no such thing as a free lunch; unless you’re the lunch.

With Apple and IBM, I did battle against large companies who were sophisticated about intellectual property, rather than small ones that were not. I felt it was in everyone’s interest to force companies and the courts to make decisions about software patents so the rules and the marketplace realities can be clear to all. not just the sophisticated few. This article is written in that same spirit. While it is a personal issue, I write to clarify the software patent issues in general, to raise he level of discussion and because like most good inventors, I am curious about what the truth is.

One can only understand the need for patents in the light of a competitive marketplace. We need a heavy to show what the innovator faces as Humphrey Bogart needed Sidney Greenstreet in The Maltese Falcon. IBM has already presented itself in that role; it will reappear as did Sidney Greenstreet.