Updates on OB10 US patent - Current status

Resume

OB10 has applied for a US patent (which is currently being examined) and has received a European patent on an "Communication routing apparatus". The original application was filed in the US on December 3rd 2001 and the European patent was granted on October 29th 2008 by the European Patent Office (EPO). There is however a 9 months period where a "Notice of opposition" can be sent to EPO (i.e. by the end of July 2009).


The US patent describes a middleware product (e.g. an ESB) where the ESB acts as an intermediary messaging hub between many IT-systems. It basically describes how electronic invoices received from multiple sources and in multiple formats are converted into a standardized format. Finaly the invoices are converted into the desired format of the intended receivers (multiple formats). Static and dynamic data is added in the conversion process to the standardized format.


Current status of US patent
The transaction history for the patent application is made available by the United States Patent and Trademark Office on the PAIR system (Patent Application Information Retrieval - Search for Application number 10/006267).





The transaction history shows that the patent was rejected on October 30th 2008. New arguments/remarks were received on March 17th 2009 along with amendments to claim 18 and claim 48). The patent was then forwarded to an examiner on May 19th 2009 and I assume that it is still under examination.

Amended claims
OB10 has amended text to two claims in the application (see latest version as of March 17th 2009 here):

18.(Currently Amended) An invoice routing apparatus comprising:

• an invoice receiver for receiving data corresponding to a plurality of invoices from a plurality of sources;
• a database for storing input invoice mapping definitions;
• an input processor device for processing the data corresponding to the plurality of received invoices within said invoice routing apparatus, the data for each invoice being converted by said input processor into an intermediate invoice in a standard intermediate form having predetermined characteristics and to provide the intermediate invoice in a data warehouse; the input processor configured to select an invoice mapping definition from the database in dependence on the sender of each received invoice and using the selected input invoice mapping definition when converting said data for the received invoice into said intermediate invoice;
• an output processor device configured to convert each of said intermediate form invoices obtained from the data warehouse into a final invoice in a form selected in dependence on an identity of a party being invoiced, the output processor obtaining an invoice destination identification from each intermediate invoice and selecting an output invoice mapping definition in dependence on the invoice destination identification; and
• an invoice transmitter device for transmitting each of the final invoices from said invoice routing apparatus to the party being invoiced;
• said input processor device further being configured to:
• add static data to the data corresponding to the received invoices when processed into said standard intermediate form;
• add dynamic data to the data corresponding to the received invoices when processed into the standard intermediate form; and,
• validate the data corresponding to the received invoices when processed into the standard intermediate form before transmission by said transmitter to the party being invoiced.

48. (Currently Amended) An invoice routing method comprising:

• receiving data corresponding to a plurality of invoices from a plurality of sources;
• storing input invoice mapping definitions;
• providing an input processor device and configuring the input processor device for performing an input processing of the data corresponding to the plurality of received invoices, converting the data for each invoice into an intermediate invoice in a standard intermediate form having predetermined characteristics and providing the intermediate invoice in a data warehouse;
• configuring the input processor device for selecting an invoice mapping definition from the store in dependence on the sender of each received invoice and using the selected input invoice mapping definition when converting said data for the received invoice into said intermediate invoice;
• providing an output processor device and configuring the output processor device for performing an output processing for converting each of said intermediate form invoices obtained from the data warehouse into a final invoice in a form selected in dependence on an identity of a party being invoiced,
• configuring the output processor device for obtaining an invoice destination identification from each intermediate invoice and selecting an output invoice mapping definition in dependence on the invoice destination identification; and
• transmitting each of the final invoices to the party being invoiced;
• said input processing by said input processor device further including:
• adding static data to the data corresponding to the received invoices when processed into said standard intermediate form;
• adding dynamic data to the data corresponding to the received invoices when processed into the standard intermediate form; and,
• validating the data corresponding to the received invoices when processed in the standard intermediate form before transmission to the party being invoiced.

The amended claims above shows that OB10 is trying to patent:

1. A piece of software (an apparatus) used to convert invoices 1) from multiple sources and formats, 2) to a standardized format and 3) finaly converted and delivered to multiple formats and destinations. Such an apparatus is "off the shelf" functionality in many middleware products and was "off the shelf" functionality at the time of application.
2. A business method involving the convertion of invoices 1) from multiple sources and formats, 2) to a standardized format and 3) finaly converted and delivered to multiple formats and destinations. This is a well know business model offered by many service providers and value added network operators prior to the application of the US patent. This business model is today also known as the "Three corner model".

As mentioned in the above: The software functionality (apparatus) and the business method has been described publicly prior to the application of the US patent. (e.g the TradeCard solution - see "Notice of opposition" against OB10's Communication routing apparatus patent)

References

US Patent Claims on a Communication routing apparatus as of March 17th 2009

United States Patent and Trademark Office - USPTO

"Notice of opposition" against OB10's Communication routing apparatus patent

I feel very stongly about the patent OB10 has received on an "Communication routing apparatus". See my previous post on the subject. To me it is like if somone reinvented the weel and then claimed to be the original inventor eventhough everyone else is driving around in cars.

I will keep updating this post with references to examples of common practice and publications dated before the orginal filing of the patent. If you would like to add something to my list please contact me or make a comment.

Protocol conversion has been common practice for 20+ years
We have had Value Added Networks in Denmark for more than 20 years. I have colleagues who have worked there and I know what they did for a living. They were not just network operators - they were value added network operators (VAN). The value add was to connect any customer via any protocol to other customers via any other protocol. (This is the protocol part of the OB10 patent.) They connected businesses and the public sector in b2b, b2g and g2g scenarios. Since way back his was everyday business for several companies providing services to the health sector the automotive industry and in eprocurement. This has been so common that no-one could imagine that someone would take out a patent on this practice.

Expired US Patent 5,708,828 from January 13th 1998 by Coleman [added June 12th 2009]
Coleman got another amazing patent very similar to the OB10 patent. Fortunately this patent has expired due to "NonPayment of Maintenance Fees". The title of the patent is "System for converting data from input data environment using first format to output data environment using second format by executing the associations between their fields". The existance of this patent was used as one of the reasons to reject several claims in the US version of the OB10 patent on October 30th 2008. The exmainer quoted the following lines from Coleman:

"the present invention comprises an improved system and method for converting data between different formats or types. The present invention converts data to a pre-defined generic data object or generic data type and then converts data from this generic type to the new format. This simplifies the conversion process."

The examiner also compared the two illustrations of the patents (see below) and stated that

"Figure 2B clearly discloses applicant's invention as shown below. One can easily see the similarities by the comparison of Figure 1 of the instant invention."

So the Coleman patent has clearly shown the USPTO and the EPO that the generic protocol and content transformation was prior art.

UN/EDIFACT [added June 6th 2009]
Well EDIFACT has been around for several years. Here you can find definitions of EDIFACT messages from 2000. These messages format were used (and are used) by different industries to exchange business business documents in a standardized format. The VAN operator would then as a value added service offer to do content conversions from and to various customer formats. To do such conversions would most often be the rule rather than the exception. There were many advantages to this approach for the customer: 1) Version changes in the standardized format would be dealt with by the VAN, 2) The company could out source the conversion and configuration. 3) The company would not have to deal with supporting many different protocols and content formats for all their business partners.

Commerce One and xCBL [added June 6th 2009]
Commerce One was a very successfull company doing business in the area that is described by the patent prior to 2000. Look here at an announcement from December 17 1999, where Commerce One announces an updated version of the XML-based de-facto e-invoicing standard - xCBL. It was made available at a number of repositories - one of them being BizTalk.org operated and owned by Microsoft. BizTalk.org was the home of a number of XML Schemas for different purposes and BizTalk was a middleware product that could do (gues what) protocol conversion and content conversion. The same was the case for the Commerce One products I believe. The characteristics of the OB10 patent are that static and dynamic data is added to the input protocol and the input content. But there is nothing novel to that. It is part of what you would have to do for this setup (see illustration) to work.

The illustration above was found on the Internet Archive Wayback Machine from May 2000.


The method of cross-translation with OmniMark [added June 8th 2009]
OmniMark from Stilo is a pearl-like language used to do content transformations. I has around since the late eighties and was in the beginning used by CD-ROM developers, technical documentation experts and CD-ROM publishers [Source: Omnimark at Work: Getting Started, Architag Press, 1997]. OmniMark supports (and supported) a content transformation model called cross-translation, which is a combination of an up-tranlation and a down-translation. The idea of a cross-translation is that you can set up a number of up-translations from various formats to a standardized format (could be SGML or XML). The tool makes it relatively easy to do such transformations from unstructured or structured data because you are guided by the DTD or the XML-Schema. The second part of the cross-translation is to do a down-translation to one or more output formats. To add static data to this process is a no-brainer (this is specific to the European patent). See also the Guide to OmniMark 5.0 from 2000

OmniMark also had the capability to send and receive data on different transport protocols. What protocols that were available in 2000 could be further. Anyway - the book about OmniMark programming cited above clearly shows that the described method of content conversions were common knowledge as early as 1997, and thus does not deserve to be part of a patent in 2000. I am furthermore confident that service providers / value added network providers used OmniMark in 2000 to support thier business.

The TradeCard Solution described publicly in October 2000 [added June 10th 2009]
TradeCard provides hosted technology, online services connecting buyers, suppliers and their service providers. In October 2000 TradeCard published a Technical Overview of their platform. Here are som quotes from the Technical Overview:

XML provides the TradeCard system with a mechanism for translating and integrating business data from disparate systems. Thus, TradeCard can ensure the free exchange of business documents, regardless of format or application.
...
Translation Services
All business documents are stored as XML within the TradeCard system. The TradeCard Messaging Infrastructure makes it possible to have multiple data formats within a single business transaction. For example, a seller may upload an invoice from an automated supply chain system directly into the TradeCard system. Then the buyer may view the invoice in HTML via a web browser. A freight forwarder may send the advance shipping notice in EDI format. All of these document types are stored internally in the TradeCard system as XML. Yet externally, the customers of TradeCard are not required to have XML compliant interfaces on their systems.
...
Message Broker
The web browser is only one of many methods that can be utilized to access the TradeCard system. All non-browser access to TradeCard is achieved by messaging. Messages are delivered in a variety of mediums and formats including SMTP, FTP, EDI, and custom formats. The TradeCard Messaging Infrastructure converts the messages to TradeCard XML formats. Message queuing services are provided by IBM MQSeries.

The Technical Overview clearly shows that the "invention" that was claimed by OB10 had indeed already been implemented and described by TradeCard and others in the industry. The European patent contains added characteristics describing how static and dynamic data is added to the input protocol and the input content (also mentioned earlier). These characteristics are not described in the TradeCard Technical Overview, but there is no invention in adding static and dynamic data. You cannot do protocol conversions without adding dynamic data and unfolding keys to static data (e.g. an address) is trivial and is also an implicit and trivial feature of middleware poducts like the IBM MQSeries used in the TradeCard solution.


References
EDIFACT on Wikipedia
Internet Archive Wayback Machine
Omnimark at Work: Getting Started, Architag Press, 1997
TradeCard Technical Overview

OB10 patent on ESB middleware and VANs pattern?

OB10 has received a patent on an "Communication routing apparatus" by the European Patent Office (EPO). The original application was filed on December 3rd 2001 and the European patent was granted on October 29th 2008. There is however a 9 months period where a "Notice of opposition" can be sent to EPO (i.e. by the end of July 2009).

An attempt to patent an old pattern known from middleware products and VANs
The patent describes a middleware product (e.g. an ESB) where the ESB acts as an intermediary messaging hub between many IT-systems. It basically describes protocol conversion and content conversion between 1) senders 2) the hub and 3) receivers.

[Note on June 5th 2009: This is my interpretation of the patent and I have tried to describe the patent with a more familiar terminology. I have however been corrected today by a patent attorney. The characteristics of the patent are that static and dynamic data is added to the input protocol and the input content (see added text below in italic). But really - there is nothing to it - and in my mind this does not change anything. This was apparently added to the European patent because the first description was found to be known by EPO. So please be aware that there is a difference in the text between the US patent and the European patent! You should go to the source for an authoritative description.]

1. Data can be received by a hub from different IT-systems (senders) on many different transport protocols. (The patent describes an external system producing an electronic invoice as an example of it's use). A new input transport protocol only needs to be added once. Several input systems can use the same transport protocol but could also use different protocols. [Added June 5th 2009: Dynamic data is added to the input signal. In other words the hub creates a new envelope for the data with "transaction code, a transaction id and the mapping definition used". Nothing new here - you need an envelope so you need to do that!]


2. Data is then converted to an intermediate form (by the hub). It is described how the original invoice in one format is transformed to a neutral invoice format by the middleware product. This could for instance be the upcoming Cross Industry Invoice from UN/CEFACT or Universal Business Language from OASIS. [Added June 5th 2009: Static data is added to the data. E.g. name and address of the source of the invoice. Again it is quite common to unfold information from a key. If an input invoice only has a supplier identifier then you should insert the name and the address of the source.]


3. The next step is that the data is converted from the neutral format to the desired format of the receiver. (e.g. this could be a conversion from the Cross Industry Invoice to the SAP idoc format).


4. Finally the data is sent to the receiver on a transport protocol supported by the receiver. New transport protocols only needs to be implemented once in the system.

I my view this is standard functionality in many middleware products and most ESB's. I also believe that the described pattern of transformations of protocols and content describes exactly what Value Added Network Operators has been making a business on for the last 20+ years. The "VA" (Value Added) in the VAN acronym - is to do transformations on protocols and contents like it is described in the patent.

One of the inventors is also advisor to an EC expert group on e-invoicing
One of the inventors of the patent, Stefan Foryszewski, is also advisor to the European Commission's Expert Group on Electronic Invoicing. The group was formed in November 2007 with the task to establish a European Electronic Invoicing Framework by 2009. The purpose of the expert group is defined here:

"By Decision 2007/717/EC, the Commission has set up an Expert Group on electronic invoicing (e-Invoicing). The tasks of this Group will be to identify the business requirements, to allocate responsibilities for the execution of specific work and to propose the necessary steps for the creation of the European e-Invoicing Framework. This framework is to establish a common conceptual structure to support the provision of e-Invoicing services in an open and interoperable manner across Europe." Source: Original call for applications

"The (purpose of the) European e-Invoicing Framework is to establish a common conceptual structure, including business requirements and standard(s), and propose solutions supporting the provision of e-Invoicing services in an open and interoperable manner across Europe." Source: Mid-Term Report of the European Commission Expert Group on e-Invoicing

The original call does not require the applicant to sign a "patent non-assert agreement" nor does it require the applicant to inform about patent rights that might be covered by the work. This should perhaps be the case with future expert groups?

I asked Stefan Foryszewski the following questions in an email on May 25th 2009 but have (so far) not received any answer:

"Dear Stefan Foryszewski,

I write to you in my role as Technical Director in the PEPPOL project. I have some questions regarding the OB10 Patent on a "Communication routing apparatus" submitted by yourself and some colleagues (http://bit.ly/Kh95m). There is only a few weeks to make objections to the patent and I want to make sure that I understand the implications that the patent has on the Framework for Interoperability and existing Value Added Network operators and other service providers.

Can you please explain how an FFI compliant instance (e.g. PEPPOL) would be (or would not be) affected by the patent? Such a framework would have a standardized format for e-Invoices (e.g. CEN/ISSS BII in UNCEFACT CII syntax or OASIS UBL syntax) and transformations between this format and other invoice formats would be the norm for most service providers. The same would be the case for the transport standards. Is this not exactly what you are describing in your patent? How do you intend to enforce your patent? Are you just protecting a pattern that can be used freely by anyone?

My personal opinion is that the patent is describing an already established pattern for exchanging and transforming e-Invoices. (Event at the time of filing in 2001).

Best regards
Mikkel Hippe Brun"

Possible threat to global e-invoicing

Electronic invoices are specifically mentioned in the patent, but other types of business documents are also covered. I am neither a developer of middleware products nor a Value Added Network operator / Service Provider. I am however the technical director of the PEPPOL project (Pan European Public Procurement Online) which is an ambitious European e-procurement infrastructure. I do not see the patent as a direct threat to the PEPPOL infrastructure. But it is (in my mind) a direct threat to the service providers connecting to the infrastructure and the middleware products used to making it possible.

It all depends on whether service providers and suppliers of middleware products will oppose the patent and whether OB10 will seek licenses for the use of its patent.

I urge suppliers of Middleware products and service providers to send an opposition to the patent. This could hit you hard! I have been told that an opposition has to be made for each individual country covered by the patent, so it is not a trivial task lying in front of us. [Added June 8th 2009 - I have made a new blogpost where I am collecting evidence that could be used for an opposition.]

Appeal to OB10
So my appeal to OB10 is to quickly come up with a "patent non-assert statement". There is a saying that if you are not part of the solution then you are part of the problem. Private companies and government institutions will have to spend lots of time and money to oppose your patent. It does not bring us anywhere and it confirms the impression that more government regulation is needed. You are putting yourself in a delicate position and you are not helping the industry. Save us that burden NOW! Participate in the expert group and let us change the landscape of global electronic invoicing. There are 25 million SME's in Europe that will be participating in electronic business processes within the next 10 years. Let us help each other to get them "connected". There is so much money to be saved and and also a lot of money to be made. Let us not delay this for one second.

Links:

Patent: "Communication routing apparatus" on European Patent Office homepage

Latest version of amended US patent as of March 17th 2009

Direct link to PDF of patent on "Communication routing apparatus" where information about the 9 months "opposition period" can be seen at the bottom. For some reason it is just the first page you get in the PDF.
Full text of European patent

Patent: "Communication routing apparatus" on Google Patent Search homepage. Observe: US patent text - not European.

European Patent Office (EPO)

EPO Notice of opposition