Newspapers Sued for Violating Web Patent

By: Carl Sullivan

A dozen small newspapers scattered across the country have been sued in the U.S. District Court of Northern California for infringing patents that allegedly apply to technology used by their Web sites. Publishers generally declined to speak on the record about the suit, but several privately expressed fears that the patents could apply to nearly all of the Web sites run by the 1,468 daily newspapers in the United States.

The patent holder, Paul C. Heckel, 62, of Los Altos, Calif., sued the newspapers Jan. 6 after they failed to respond to letters sent last fall notifying them of the alleged patent infringement and offering licenses for the technology in question.

The San Mateo (Calif.) Daily Journal, which was included in the suit, already has settled with Heckel, according to Publisher Jerry Lee. He declined to comment further.

Cinergy Communications Co. of Evansville, Ind., which hosts the Web site for the Kentucky New Era in Hopkinsville, has reconfigured its Web site and settled the case, said Robert Bye, vice president and general counsel for Cinergy.

And the Gettysburg (Pa.) Times bought a license before the lawsuit was filed, Heckel said.

The two patents — RE 36,654, issued in 2000, and 4,486,857, issued in 1984 — cover technology that Heckel said he has been developing since the 1980s. Both concern the use of software to group multiple files into a system that allows computers to display abbreviated portions of the files on a single screen.

Heckel said the patents cover some technologies that allow Web sites to display the headline and abstract of a news story with a link to another file that displays the entire story. The ability to “zoom” into a related file from a Web page is apparently a key element of the complex patent claims.

Although patent 4,486,857 expired last fall, a patent holder can still sue for past infringement, according to Heckel. This is the same patent that Apple Computer Inc. was accused of violating in developing its HyperCard software. Apple settled that case with Heckel in 1989, reportedly for six figures.

Several of the newspapers plan to file a motion for dismissal, said Dawn Phillips Hertz, an attorney with Butzel Long of Detroit and general counsel of the Michigan Press Association, who is representing four of the defendants. “We’ve been sued in Northern California, and this does not strike us as being the appropriate forum since none of these defendants have any substantial contact with California,” she said. Hertz added that her clients are performing “due diligence to determine the nature and extent of this patent.” She is representing the Cadillac (Mich.) News; The Daily Standard of Celina, Ohio; The Daily Nonpareil, Council Bluffs, Iowa; and The Tryon (N.C.) Daily Bulletin.

None of the dozen papers named in the suit is owned outright by a major chain, but Lee Enterprises Inc. of Davenport, Iowa, owns half of the Shawano (Wis.) Leader, which is a defendant. Greg Schermer, Lee’s corporate counsel and vice president for interactive media, said the chain has hired a patent attorney in California to review the claim. He encouraged the other defendants to wait for that analysis before deciding how to respond.

Publisher Michael Eastman of the Free Lance of Hollister, Calif., was just served with the suit Feb. 12, and could not comment.

The Davis (Calif.) Enterprise was also served recently, but is turning the matter over to its Web hosting service, TownNews.com of Moline, Ill., said Publisher Foy McNaughton. Lee Enterprises is a majority owner in TownNews.com.

Officials at The Daily Item in Lynn, Mass., also named by the suit, did not return a phone call.

Two newspapers initially named as defendants, the Roswell (N.M.) Daily Record and the Daily News of Kingsport, Tenn., have been dropped from the suit because subsequent investigation determined that their sites did not infringe Heckel’s patent, according to his attorney, Kathleen M. Walker of San Diego. She said several of the remaining defendants have asked for and received 30-day extensions on the deadline for their response to her client.

Contrary to publishers’ fears, not all newspaper Web sites would infringe on his complex patent, Heckel said. For a patent to apply to a product, he explained, that product must meet each of the “claims” established in the patent. If a newspaper Web site’s display technology didn’t meet all of the claims, the patent wouldn’t apply.

Still, Heckel said, he believes that at least 60 newspaper Web sites do infringe. That’s how many cease-and-desist letters that have been sent so far by Walker. Those letters offered licenses to publishers “to facilitate quick resolution, keep licensing rates low, and to avoid protracted litigation.” The one-time licenses were offered at $1 for each print copy in circulation, as listed in the 2002 Editor & Publisher International Year Book, according to the letter, which also offered a 35% discount if newspapers responded within 30 days. Walker, Heckel’s attorney, said there are a number of additional papers that could be subject to litigation.

A person familiar with the case speculated that Heckel is targeting smaller papers in hopes of building a war chest that can be used to sue larger ones.

Heckel wouldn’t comment on his legal strategy, but said he’s merely defending his rights as an inventor. He is the founder of Intellectual Property Creators, which has lobbied Congress and filed friend-of-the-court briefs on behalf of patent holders. His Web site (http://www.ipcreators.org) includes information about this suit in particular and patents in general.

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