This is really weird. RIM paid almost a billion $$$ for a patent even though
one of its
employees seemed to have been there first, but the company never took his ideas
seriously.
April 16, 2006
In Silicon Valley, a Man Without a Patent
By JOHN MARKOFF
MENLO PARK, Calif.
GEOFF GOODFELLOW is a Silicon Valley entrepreneur who came up with an idea that
resulted in
a $612.5 million payday. But he will never see a penny of it. He remains little
known even
in Silicon Valley and, perhaps most surprising, he doesn't really mind.
And herein lies one of the stranger tales about innovation and money in the
world of
technology.
A high-school dropout, Mr. Goodfellow had his light-bulb moment in 1982, when
he came up
with the idea of sending electronic mail messages wirelessly to a portable
device . like a
BlackBerry. Only back then, there was no BlackBerry; his vision centered on
pagers. He
eventually did get financial backing to start a wireless e-mail service in the
early
1990's, but it failed.
So, in 1998, he moved to Prague and bought a bar. While he was there, the
BlackBerry did
come along. Tending bar, he believed that everyone had forgotten that he had
initially come
up with the idea of wireless e-mail.
Almost everyone had, that is, except for James H. Wallace Jr., a Washington
lawyer for one
of the companies involved in a patent dispute over Mr. Goodfellow's invention.
Mr. Wallace represented NTP, a company aggressively defending its patents for
wireless
e-mail. He flew to Prague two days after first speaking to Mr. Goodfellow in
early 2002 to
introduce himself.
Mr. Goodfellow says that NTP was concerned that his earlier work might
undermine its patent
claims, and the company wound up going to some lengths to ensure that it did not.
"I kind
of had a big grin on my face that someone had dug deep enough to find the
person where it
all began," Mr. Goodfellow recalled. "He basically wanted to hear my story."
On a subsequent visit a year later, as Mr. Goodfellow remembers it, Mr. Wallace
introduced
him to a travel companion by saying: "Geoff's the inventor of wireless e-mail.
My client
patented some of its implementation workings."
Mr. Wallace, in an e-mail response to a reporter's questions, disputed the
quotation. But
two things are certain. Mr. Goodfellow, an early participant in Silicon Valley's
grass-roots computer culture, disdained the notion of protecting his ideas with
patents.
And Thomas J. Campana Jr., a Chicago inventor with no such qualms, patented the
idea of
wireless electronic mail almost a decade after Mr. Goodfellow's original work.
Mr. Campana, who died in 2004, was a founder of NTP, and his patent push
yielded a bonanza
for the company, which will receive $612.5 million in a settlement reached last
month in
its patent infringement suit against Research in Motion, maker of the
BlackBerry.
For legal and technology experts, the tale of Mr. Goodfellow's pioneering work
is evidence
of the shortcomings of the nation's patent system, which was created to reward
individual
creativity but has increasingly become a club for giant corporations and
aggressive law
firms.
Several legal experts suggested that Mr. Goodfellow's work might have
constituted important
"prior art" . earlier public information that is relevant to a patent
application . that
should have been disclosed to patent examiners and the courts by both sides in
the dispute.
"I think there is a potential ethics issue," said Mark A. Lemley, a Stanford
professor who
specializes in patent law. "The basic key is the attorneys have the obligation
to disclose
everything they know about his prior artwork and make him available as a fact
witness."
DESPITE what might have been, Mr. Goodfellow says he has no regrets. His scorn
for patents
is widely shared by many innovators in Silicon Valley, especially open-source
software
developers, whose technology competes with products from companies like
Microsoft. But it
remains a deeply divisive viewpoint.
"You don't patent the obvious," he said during a recent interview. "The way you
compete is
to build something that is faster, better, cheaper. You don't lock your ideas
up in a
patent and rest on your laurels."
The initial encounter with Mr. Wallace in Prague was only the beginning of Mr.
Goodfellow's
indirect role in the BlackBerry case. NTP, he says, seemed intent on
neutralizing him as a
complication to its patent case.
NTP hired Mr. Goodfellow as a consultant; invoices show he was paid $4,000 a
day . about
$19,600 in all . for several days' work in 2002, including two trips to meet
with lawyers
in Washington. As part of a formal contract, he signed a nondisclosure
agreement,
prohibiting him from revealing any information or consulting with any other
parties during
the period of the lawsuit.
At one meeting in Washington, when Mr. Goodfellow described his technology at a
white board
in a conference room, Mr. Wallace insisted that the other lawyers not take
handwritten
notes for fear of leaving a paper trail, Mr. Goodfellow says. Another meeting,
he says,
focused on which claims in NTP's patents were least likely to be compromised by
Mr.
Goodfellow's prior work.
In an e-mail response to a reporter's question about NTP's contacts with Mr.
Goodfellow,
Mr. Wallace maintained that Mr. Goodfellow was retained because he had been
mentioned in
news articles from the early 1990's "regarding a product called RadioMail" .
his effort to
commercialize the wireless e-mail idea . but that Mr. Goodfellow "could not
locate any
documentation beyond these articles regarding the product."
As it happens, he had documented his wireless e-mail concept even earlier.
In the early 1970's Mr. Goodfellow, then a teenager, was hanging out at SRI
International
here, generally getting under foot until he was hired in 1974 as an assistant
computer
operator in the laboratory of the pioneering computer researcher Douglas C.
Englebart.
By the early 1980's, the Arpanet, the computer network that preceded the modern
Internet,
was being used by thousands of academics, scientists and military officers .
and by Mr.
Goodfellow, who realized that it was possible to relay a mail message from the
network to a
newfangled alphanumeric pager that had just been introduced by a nearby
company, Millicom,
of Sunnyvale, Calif., which called its service Metagram.
In 1982, he published his idea on a widely read Arpanet mailing list called
Telecom Digest
in a note titled "Electronic Mail for People on the Move."
The service, he wrote, "allows Arpanet users to send messages to people on the
MetaNet
without having to run and find a terminal with a modem on it or go through the
human
dispatcher, i.e., so you can now do fun things like be driving down the road
and have a
message appear that says: [YOU HAVE NEW MAIL]."
Mr. Goodfellow went on to become a founder of the world's second commercial
Internet
company, Anterior Technology (later renamed RadioMail), in his apartment here
in 1986.
Beginning in 1990, at roughly the same time AT&T hired Mr. Campana to develop
pager
technology into a wireless mail gateway, Mr. Goodfellow set out to
commercialize his idea,
ultimately receiving $3 million from financial backers such as Motorola.
RadioMail was introduced in 1991, and the next year Mr. Goodfellow embarked on a
partnership with Research in Motion, a Canadian company, and Ericsson, the
Swedish
telecommunications giant. But like a number of Mr. Goodfellow's projects,
RadioMail was
ahead of its time, and he left the company in 1996. During the height of the
Internet
bubble, Mr. Goodfellow, a self-taught software engineer, would speak
caustically about the
hype pervading the era, referring to the surplus of "zero-billion-dollar
industries."
He walked away from Silicon Valley during the dot-com boom without the great
wealth that it
had afforded so many. But if he is miffed, it is because so much of the history
has been
forgotten.
"I don't want to sound bitter," he said. "I'm overjoyed that what I saw more
than 20 years
ago is now de rigueur."
Today, Mr. Goodfellow's invention and its fate are a curious but significant
footnote to
the bitter patent battle between NTP, whose only assets are the Campana
patents, and
Research in Motion, which has come to dominate the market for wireless
electronic mail
handsets.
Although the NTP patents have been tentatively invalidated by the United States
Patent
Office, a jury upheld NTP's infringement suit in 2002, and R.I.M. chose to
settle the legal
fight for fear of a federal court injunction against its popular service.
And Mr. Wallace, the NTP lawyer, rejects the idea that Mr. Goodfellow's work
casts any
further shadow over his client's patent claims.
Mr. Wallace said by e-mail that he was not aware of Mr. Goodfellow's 1982
article . though
Mr. Goodfellow says he described his 1982 work in detail to NTP lawyers . and
that NTP's
patent claims turn on integration with a "destination computer," not a pager.
In any case, Mr. Wallace added, "the devil is in the details.
"Suppose I write something saying that teleportation is possible by merely
converting
matter to energy, beaming the energy to a distant location and reconverting
energy back to
matter," he said. "Does this mean that my statements compromise the patents of
the first
person to actually make such a system work? No patent attorney would argue such a
thing."
Others take a different view. "The moral of the story is that for a long time
now the
patent system has been misused," said Mitchell D. Kapor, founder of the Lotus
Development
Corporation, the software publisher, and an adviser to Mr. Goodfellow in the
early 1990's.
"If it had been properly used, NTP would never have been issued its patents,
and they never
would have had a basis to pursue a lawsuit against R.I.M."
DURING the court case, R.I.M. and NTP wrangled over three earlier developments:
work by
some University of Hawaii researchers; a Motorola patent; and work by TekNow, a
company in
Phoenix. Mr. Goodfellow's company and 1982 system were not mentioned. (R.I.M.
executives
did not respond to telephone and e-mail requests for comment.)
Although his role went unnoticed both by the federal courts and patent
examiners, Mr.
Goodfellow's invention is woven into the very fabric of the Internet. The
computer network
assigns different addresses, known as ports, now numbering more than 65,000, to
different
services like electronic mail or the World Wide Web. To this day, Port 99
remains set aside
for Mr. Goodfellow's original brainstorm: pushing an electronic mail message to
a wireless
pager.
Mr. Goodfellow sold his bar in Prague in 2004 and returned to Silicon Valley to
help his
brother run an Internet photography business. He is now back in the thick of
innovation,
serving as the chairman of a start-up Eritrean company working on
voice-over-Internet-protocol technology.
In his spare time he volunteers as a disc jockey at KZSU, the Stanford student
radio
station. He said his show, beat.net, is his way of continuing to look for the
technology
edge.
"I'm really interested in the intersection of technology and entertainment,"
said Mr.
Goodfellow, who just turned 50. "These days I'm still trying to spend my time
doing new
things."
--
Michael Perelman
Economics Department
California State University
Chico, CA 95929
Tel. 530-898-5321
E-Mail michael at ecst.csuchico.edu
