In November, Twitter disclosed in an amendment to its S1 filing that IBM was demanding licenses for three patents issued in 2006 that it claimed that Twitter was infringing upon. As far as we know, IBM didn’t file a lawsuit against Twitter, and this took place shortly before Twitter held its initial public offering.
This dispute appears to have been resolved, but we don’t know all of the details, and it’s questionable if we will ever learn about them. Here’s what the amendment said about the matter:
From time to time we receive claims from third parties which allege that we have infringed upon their intellectual property rights. In this regard, we recently received a letter from International Business Machines Corporation, or IBM, alleging that we infringe on at least three U.S. patents held by IBM, and inviting us to negotiate a business resolution of the allegations.
The three patents specifically identified by IBM in the letter were U.S. Patent No. 6,957,224*: Efficient retrieval of uniform resource locators, U.S. Patent No. 7,072,849*: Method for presenting advertising in an interactive service and U.S. Patent No. 7,099,862*: Programmatic discovery of common contacts.
Based upon our preliminary review of these patents, we believe we have meritorious defenses to IBM’s allegations, although there can be no assurance that we will be successful in defending against these allegations or reaching a business resolution that is satisfactory to us.
* I added the links
This claim of infringement in the amendment was pointed out in a Gigaom article, IBM says Twitter infringes pre-Twitter patents.
Twitter didn’t have many patents assigned to it at the time – much less than many technology companies often do when filing an initial public offering. Somehow, between the time that Twitter filed the amendment to the S1 (a form that companies going public are required to file by the SEC), and now, the relationship between Twitter and IBM changed. As Eweek told us yesterday, Twitter Buys 900 IBM Patents in Cross-License Agreement. It appears that the transaction may have been discovered after IBM issued a press release, IBM and Twitter Announce Patent and Cross-License Agreement.
The United States Patent and Trademark Office patent assignment database lists a patent assignment from IBM to Twitter covering 943 granted patents, shown as being executed on December 30, 2013, and recorded on January 16th, 2014. The USPTO assignment database doesn’t include the terms of the transaction, and neither does the press release or the EWeek article (nor any of the other media sites that I saw reporting upon the transaction).
Of the 3 patents listed in Twitter’s amendment to their S1, only one of them is among the patents that were assigned to Twitter, 6,957,224- Efficient retrieval of uniform resource locators. It’s possible that a number of other patents were licensed to Twitter, but we don’t know how many or which.
None of the sources that I visited to see discussion on the transaction provided a list of the patents that were purchased by Twitter, so I thought I would provide a list of those. I actually broke that up into three lists. We don’t know if Twitter agreed to buy patents from IBM as if it were some type of settlement for the infringement that IBM was claiming. Or if discussion between the two companies brought Twitter an awareness that they needed a beefier patent portfolio to help protect them from infringement claims.
Either way, I wanted to see what was included in the assignment (which is listed at the USPTO), though we don’t know what was covered in the licensing agreement. Both the assignment and the licensing deal should help Twitter stave off patent infringement cases, even if none of the patents involved are directly on point with any potential infringement cases since the broad ownership may provide fuel for a lawsuit in response that might cover practices used by a company complaining of infringement.
Do any of the patents acquired help Twitter?
Are any of them head scratching in terms of what they do cover?
Actually, there seemed to be some patents that fit into both categories, and I’m going to provide links to those so that you can take a closer look yourself. I’m also listing the other patents, along with their patent numbers, and you can cut and paste the patent number into the USPTO’s patent search to look those up if you would like.
These are patents that involve the Web, and looked like they could possibly be useful to Twitter in the future based on their titles, though many are older. Looking at the descriptions and claims for these patents at a deeper level of scrutiny left me wondering how many of these, if any, are patents that someone at Twitter might have selected. I hope for Twitter’s sake that unnamed patents that might have been part of the licensing agreement might prove to be more useful:
- Method And Apparatus For Improving Speech Recognition Accuracy (US Patent # 6370503)
- Selecting Overlapping Hypertext Links With Different Mouse Buttons From The Same Position On The Screen (US Patent # 6374272)
- Implementing Automatic Learning According To The K Nearest Neighbor Mode In Artifical Neural Networks (US Patent # 6377941)
- System And Method To Provide Secure Navigation To Resources On The Internet (US Patent # 6381579)
- Bookmark Set Creation According To User Selection Of Selected Pages Satisfying A Search Condition (US Patent # 6408316)
- Efficient Retrieval Of Uniform Resource Locators*** (US Patent # 6957224)
- Method And System For Specifying A Cache Policy For Caching Web Pages Which Include Dynamic Content (US Patent # 6988135)
- Compressing Index Files In Information Retrieval (US Patent # 7028045)
- System And Media For Simplifying Web Contents, And Method Thereof (US Patent # 7058695)
- Method, System, And Apparatus For Generating Weblogs From Interactive Communication Client Software (US Patent # 7653692)
- System And Method For Securely Hyperlinking Graphic Objects (US Patent # 7653814)
- System And Method For Identifying And Defining Idioms (US Patent # 7657421)
- Ranking Method And System (US Patent # 7660723)
- Embedding, Processing And Detection Of Digital Content, Information And Data (US Patent # 7660991)
- System And Method Of Building Proven Search Paths (US Patent # 7668854)
- Method And System For Providing A Search Index For An Electronic Messaging System Based On Message Threads (US Patent # 7672956)
- Peer-To-Peer Instant Messaging And Chat System (US Patent # 7675874)
- Techniques For Providing Suggestions For Creating A Search Query (US Patent # 7676460)
- Method, Apparatus, And Program For Refining Search Criteria Through Focusing Word Definition (US Patent # 7676462)
- Page-Ranking Via User Expertise And Content Relevance (US Patent # 7676464)
- Method And Apparatus For Searching Data (US Patent # 7676759)
- Method To Generate Semantically Valid Queries In The Xquery Language (US Patent # 7680782)
- Method Of Detecting And Tracking Groups Of People (US Patent # 7688349)
- Dynamic Selection Of Complementary Inbound Marketing Offers (US Patent # 7693740)
- System And Method For Dynamically Updating Web Page Displays (US Patent # 7698632)
- System And Method For Ranked Keyword Search On Graphs (US Patent # 7702620)
- System And Method For Managing Web Applications (US Patent # 7711723)
- Technique For Detecting And Blocking Unwanted Instant Messages (US Patent # 7711781)
- Method, System, And Computer Program Product For Providing An Instant Messaging Interface With Dynamically Generated Message Buttons (US Patent # 7716294)
- System And Method For Web Based Sharing Of Search Engine Queries (US Patent # 7725526)
- Automatic Signature Generation For Content Recognition (US Patent # 7725727)
- Method And Apparatus For Filtering Short Message System Spam (US Patent # 7729710)
- Fast-Approximate Tfidf (US Patent # 7730061)
- Apparatus For Selecting Documents In Response To A Plurality Of Inquiries By A Plurality Of Clients By Estimating The Relevance Of Documents (US Patent # 7743062)
- System And Method For Providing Dynamic Presence Information As Collected By A Mobile Device (US Patent # 7746226)
- System And Method For Positional Representation Of Content For Efficient Indexing, Search, Retrieval, And Compression (US Patent # 7747629)
- Household Internet Connection Monitoring And Troubleshooting Through Voice Based Telephony Devices (US Patent # 7747732)
- Webpage Generation Tool And Method (US Patent # 7747941)
- Method And System For Detection Of Authors (US Patent # 7752208)
Patents from the bigger list below may also describe processes and technology that could directly benefit Twitter as well.
There were a few that did cause me to wonder how useful they might be to Twitter, and there are more in the list below, but these stood out to me on a pass through the titles of the patents in the assignment:
- Quartz Defect Removal Utilizing Gallium Staining And Femtosecond Ablation (US Patent # 6346352)
- Intelligent Redirection Of Vehicular Traffic Due To Congestion And Real-Time Performance Metrics (US Patent # 7689348)
- System And Method For Tracking And Billing Vehicle Users Based On When And In Which Road Lanes Their Vehicles Have Been Driven (US Patent # 7667618)
- Wiretapping VOIP Calls (US Patent # 7684547)
- Secured Medical Sign-In (US Patent # 7756726)
Here are the remainder of the patents assigned by IBM to Twitter. Again, to see the actual patents, paste the patent number into the USPTO’s patent search: