More Information About PMC
John's Early Background
Born in Newark, NJ, John’s early attraction to broadcast communications began in the late 1950s with visits to his grandparents’ remote summer home in New Hampshire. When a local UHF television station, WRLP-TV, was constructed in the woods at the summit of a hill nearby, young John became a regular nightly visitor, learning from the station engineers, one of whom spent his days slowly enlarging a small “CATV” cable system which he owned in the valley below.
WRLP was among the first remote television stations in the U.S., devoting most of its broadcast time to retransmitting the signal of WWLP-TV, a network affiliate in Springfield, Mass. However, WRLP was a fully functional television station with studio and control room facilities for producing, recording, editing and cutting in local segments, including commercials. Here John was able to observe first-hand the hardware and manual control strategies that went into generating and transmitting a broadcast signal. Local TV stations of this nature, and the CATV system in the valley, were early forerunners to cable and other public and private TV systems, which later became the basis for the cable industry and, eventually, significant aspects of the Internet.
After graduating from Yale in 1966, John served in the Navy, first studying to become a communications officer at the Naval Schools Command in San Diego then going to sea and serving successively as a Cryptography Board member, an Electronic Materials Officer, and an Operations Officer. This provided him with technical awareness that his early inventions would reflect. John has said that he views the naval ship, in this case the USS Aeolus (ARC3), as a floating private communications system, complete with extensive management protocols. He also had the opportunity to work on the ship with Western Electric consultants who were on the leading edge of communications engineering at the time.
“At the heart of my interest was a fascination with computers,” explains John. “Early on I could see that the ability to automate self-contained or local communications had as much to do with software as hardware. In my mind an aspect of what I was doing involved automating broadcast and cable transmission stations, such as the radio shack on my ship or the television station on our hill top, by placing computers in essential control positions where sailors or station engineers had stood, interconnecting station equipment to permit the computers to perform control functions previously performed manually, and by providing network protocols necessary to make possible automated operations.”
An Education for Innovation
John believes that his education and early career played a significant role in his development as an inventor. In addition to the time spent on his New Hampshire hilltop and his involvement in naval communications as a midshipman from 1962 and as an officer from 1966 on, there was a strong formal education. John was educated at Kent School, Yale, The University of London and the University of Pennsylvania’s Wharton Business School. He studied history, economics and business management, including finance and operations research.
In the early 1970s he went to work in the treasury department of ASARCO (American Smelting and Refining Company), a Fortune 200 non-ferrous metals company founded in 1899. After filling positions in financial analysis and cash management, John became responsible for pension fund investment management and reporting. At ASARCO John had extensive exposure to computers and computing systems as Secretary of the committee that oversaw the Management Information Systems Department. There he had unlimited use of the company’s IBM mainframe computer for financial and economic modeling, risk analysis, and various creative forms of in-house systems analysis and software development.
After ASARCO he joined a division of Pfizer where he served as Comptroller and chief financial officer. In 1978 he was named a Vice President in the New York representative office of Hambros Bank Ltd., the British merchant bank, where he engaged in early forms of venture capital and private equity financing. It was while at Hambros that John first got hands-on exposure to patent law. Various venture capital opportunities he evaluated were protected with patents, and John hired a college classmate, Tom Scott, then a patent attorney at Cooper, Dunham, to evaluate the strength of their coverage.
In 1977, while still at Pfizer, John married Kazie Metzger, a graduate of Duke and Harvard Business School, who was then working as a financial analyst and strategic planner for RCA American Communication. RCAAC was the division of RCA, which by launching the Satcom I satellite in 1975, made it possible for Home Box to go directly from local interconnect cable distribution to full regular national broadcast distribution in 1976 and also enabled the development and launch, within a few years, of a host of new national cable networks, including the Turner Broadcasting System (TBS), the Entertainment and Sports Programming Network (ESPN) and the Cable News Network (CNN).
In 1980, considering himself technology-savvy, John decided to explore developing patentable technology as an inventor. He started by exploring how to solve a problem confronting newly launched, advertising-supported, cable television networks such as ESPN and CNN. This problem was: to prove to advertisers that their commercials they paid these network to transmit to local cable “headends” were actually retransmitted by the local headends to actual viewers. Without a reliable system to provide such proof, the prices, normally quoted “per thousand viewers”, that cable networks could get for transmitting commercials would remain significantly below the corresponding prices per thousand that conventional television broadcast networks could get.
To solve this problem, John and his co-inventor, Jim Cuddihy, a former RCA engineer who is also named on PMC’s patents, designed an independent proof-of-performance auditing system whereby digital identifier codes, uniquely identifying each commercial, could be embedded in each commercial and broadcast in the network transmission from television network origination stations. Embedding and transmitting such digital identifiers would automatically result in the local cable headends retransmiting them, making them available subsequently to be detected by, stored at, and collected from the independent system’s monitoring equipment located in output transmissions of the local cable headends.
Having designed this proof-of-performance system, John met with various friends and contacts who were well placed in media, advertising agency, and advertising industry associations, to learn whether the system he and Jim Cuddihy had designed would meet advertisers’ requirements. To his dismay, he learned that a system with embedded digital identifiers had already been designed. More importantly, this prior-art system had been introduced commercially and had failed because no one, neither broadcasters nor advertisers, was willing to pay for it. As John now says, “I was told that broadcasters were able to sell all their available commercial time without any need for an independent proof-of-performance verification system.” More specifically, John says, “I was told that we needed to design a system that broadcasters and cablecasters could foresee increasing their revenues and profits rather than just manage their costs.”
At the time, microcomputers were becoming commercially available to early adaptors for use in their homes, and IBM was actively considering introducing its first IBM PC to the market. John and Jim Cuddihy were well aware of this development and recognized it as representing a stage in a long-standing and easily projectable trend widely recognized as expressed in “Moore’s Law”. (Moore’s Law holds that every 18 months the capacity of computer memories and the speed of computing doubles and the cost of computing is cut in half.)
Knowing that embedded digital identifiers could serve a vital role in enabling the automation of broadcasting and cablecasting transmitter stations and networks, thereby increasing capabilities while cutting costs of operation as Moore’s Law implies, John and Jim undertook to design and disclose to the U.S. Patent and Trademark Office the most fully functional automation system within their capacity to foresee. Besides identifiers, such an automation system would contain control signals embedded in broadcast and cablecast transmissions. It would include automation of viewer stations as well as transmission stations. It would entail automation of computer networks, for example, to include television segments. It would entail parallel processing.
At the urging of a venture consultant, John incorporated in 1981 the corporation that evolved into PMC, and several friends became its earliest outside investors. John retained Darby & Darby as patent counsel and was advised to include in a single disclosure all the concepts that he and Jim were then working with. That disclosure was filed as a 45-page document in the U.S. Patent and Trademark Office on Nov. 3, 1981. The first U.S. patent, No. 4,694,490, issued on Sept. 15, 1987. Before this first patent issued, a second application, totaling 550 pages, disclosing further work of John and Jim, was filed in the U.S. Patent and Trademark Office as a “continuation-in-part” of the original 1981 filing. Besides Darby & Darby, patent law firms that have handled the prosecution of aspects of these PMC applications have included, Pennie & Edmonds, Hunton & Williams, Fish & Neave and Goodwin Procter. A second U.S. patent, No. 4,704,725, issued on Nov. 3, 1987, followed by U.S. patents issued in 1990, 1992, 1993, 1994, and 1999.
Soon after filing the first patent application at the U.S. Patent and Trademark Office in late 1981, John began approaching various corporations in search of partners to join in the commercialization of PMC’s intellectual property.
“Many who could understand the inventions I was describing thought they were things out of science fiction,” recalls John. “They never thought a business could grow out of it, let alone an industry.”
By the early 1990s, companies with whom John was talking began to see promise in PMC’s portfolio of issued and pending U.S. patents for their own commercial objectives. PMC-issued patents were licensed to Starsight Telecast (later a part of GemStar, which would become the owner of TV Guide), which took a license in 1994 that covered delivery of scheduling systems. Also in 1994 Thomson (now Technicolor), the French electronics firm that has acquired parts of RCA, took a license for its program guides. This was followed in 1995 and 1996 with licenses to SONY and The Weather Channel. A suit against DirecTV ensued in 1997 in the ITC with an appeal won in 1998.
Claiming PMC's US Patent Portfolio & TRIPS
At about that time in early 1994, John commenced a series of trips to Glasgow, Scotland to explore with patent attorneys there how to claim PMC’s U.S. patent portfolio. “The European Patent Office is typically more stringent than the USPTO in what they consider patentably distinct,” explains John. “It is on this basis that the different patents in a portfolio are separated from one another and claimed.” The law firm John engaged in Glasgow, Cruikshank & Fairweather (now a part of Marks & Clerk), worked closely with John, tutoring him on the craft of drafting and claiming patentably distinct applications. “My European attorneys in Glasgow were the experts in this important field,” John says, “And I wanted to learn from them. Those attorneys were something like personal trainers. They put me through the ringer and I emerged more disciplined and in a stronger position for it.”
Later in 1994, the agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), part of the General Agreement on Tariffs and Trade (GATT), was an early global patent harmonization effort that the U.S. participated in. Administered by the World Trade Organization (WTO), TRIPS established minimum standards for many intellectual property regulations.
Among the effects of TRIPS in the U.S. was that after June 8, 1995 patents would have a 20-year term from filing, providing an effectively shorter period of coverage. Prior to this date, a U.S. patent term was 17 years from date of issuance. This was intended to minimize the focus on filing continuations until infringing products were being sold and eliminate so-called “sub-marine” patents. Relying on the guidance of PMC’s European attorneys and working with PMC’s domestic U.S. attorneys, John was able to file a large number of patents in the USPTO before the June 8, 1995 date, thereby providing the broadest and most effective coverage for PMC’s U.S. patent portfolio.
Litigation, Re-examinations and the Issuance of Further Patents
Beginning in 2000, litigation was initiated by PMC against: DirecTV; Thomson, the electronics firm; Scientific Atlanta, a maker of set top boxes for cable TV; Echostar, the operator of Dish Network; Motorola; and others.
Two of these defendants, DirecTV and Scientific Atlanta, initiated a number of reexamination proceedings in the USPTO, and then sought to have the pending litigations stayed. (Ultimately, these reexaminations would backfire for the defendants, as the USPTO confirmed many of the claims of PMC’s patents. In fact, for two of PMC’s patents, all the claims were confirmed.) After these reexaminations were initiated, the USPTO examiners suspended the examination of all PMC pending applications, with the exception of two. The stated reason for this suspension was to obtain the benefit of the views of the Board of Patent Appeals and Interferences as to the two so-called “test case” applications and the seven reexamination proceedings.
Meanwhile, the examination of PMC’s large number of pending patents at the USPTO had reached a point where two were appealed to the Board of Appeals and Interferences. In 2009 PMC won both appeals. On the basis of these decisions, the USPTO examiners began moving forward, allowing and issuing PMC’s previously pending patents. In 2010, 41 patents issued, and a further 14 patents issued in 2011. In the spring of 2011 Ocean Tomo named John Harvey as the top-rated inventor of 2010 in the field of wireless technologies. After performing an analysis of the quality of 16 of John Harvey and Jim Cuddihy’s patents, Ocean Tomo declared that the quality of these patents averaged in the top one tenth of one per cent of all the patents issued by the USPTO in 2010.
All of PMC’s patents enjoy either 1981 or 1987 priority dates for covering patentable prior art because those are the years when the first two patent applications were filed. As a result of UPSTO delays, those patents that were filed prior to the implementation in the U.S. of the 1995 TRIPS treaty, which began to issue in 2010, have 17-year terms. Current PMC patents will not begin to expire until 2027.
A Powerful Idea
John Harvey continues his work as an inventor. He also finds time to serve in leadership positions of numerous charities, including as Chairman of St. Paul’s Cathedral Trust in America, a non-profit organization whose mission is to engage American supporters of London’s great cathedral, which since 604 A.D. has embodied the spiritual life and heritage of the British people and Anglicans worldwide.
One of John’s favorite books is The Most Powerful Idea in the World, by William Rosen. In it the author recounts the story of focal aspects of the Industrial Revolution and tells the story of the men responsible for it and the machine that drove it, the steam engine. He also tackles the question that has long challenged historians: What made eighteenth-century Britain such fertile soil for inventors? Rosen’s answer focuses on a simple notion that had become enshrined in British law the century before: that inventors have the right to own and profit from their ideas.
“For true innovation to occur multiple events need to take place, often simultaneously, many of which are hard to control,” says John. “As Mr. Rosen points out in his insightful book, the Industrial Age was more encouraging to innovation than ever before because of new incentives for inventors which enabled them to own and profit from their ideas. In the late 18th and 19th Centuries the incentives that patents and other forms of intellectual property afford fueled widespread and growing prosperity and raised living standards. As an inventor I’m proud to be able to play a role in such an important enterprise.”