Two years before Google’s humble beginnings in a Silicon Valley garage, David Hoyle was working on his own internet inventions in a bare-bones family apartment in Destrehan in 1996.
“I didn’t even have a garage. I had a kitchen table,” Hoyle said.
That table was where Hoyle started a company called Big Easy Technology.
When he, his wife and two daughters weren't eating at the kitchen table, Hoyle sat there and fiddled with hardware and designed software. In 1997, he created a disposable business card that contained personal information and could be inserted into a floppy disk drive so the information could be uploaded onto a computer. He also scribbled notes and diagrams laying out an idea for collecting information on the internet to create targeted online advertising.
Targeted online advertising – those now-ubiquitous ads that focus on a product that a computer user was recently searching for online – has become the primary business model for Big Tech firms like Google, yielding trillions of dollars.
And it was Hoyle, at his kitchen table in Destrehan, who patented a 14-step process for collecting a user’s demographic information and “interaction with the computer” to serve up "advertising that is relevant to what the user is doing at any particular time."
Recently, a federal court ruled Hoyle had standing to seek compensation from Google and other tech firms for their use of concepts he said he invented in Destrehan. Hoyle argues he should have been granted 20 years to develop his own targeted online advertising product under patents he received, or to license them to others for a fee. Meanwhile, the U.S. Supreme Court is considering serious questions about the way the government has treated small-time inventors’ patents in the internet age.
Hoyle applied for the first patent for "computer interface method and apparatus with targeted advertising" on July 17, 1998. He developed a toolbar function called “CandiBar.” The patent was granted by the U.S. Patent Office on Oct. 31, 2000. It included detailed descriptions and diagrams of CandiBar’s interface and ads that appear under a search bar.
The patent office granted Hoyle two additional, more refined targeted advertising patents in 2003 and 2004.
Google, meanwhile, wasn’t even incorporated until September 1998, two months after Hoyle’s B.E. Technology filed for its first targeted advertising patent. Google filed for its first search engine patent in 2000, but it didn’t fully pursue a patent that included targeted advertising until 2003.
The U.S. Patent Office rejected that application in 2006, specifically citing two of Hoyle’s patents as proof that Google couldn’t lay original claim to certain aspects of what it was trying to develop.
“When the Patent Office rejected them, what they did was they just cut the 32 claims referencing targeted advertising. They didn't contact us,” Hoyle said. “They are a trillion-dollar company based upon targeted advertising and they don't have the rights for this revenue.”
Hoyle said Google eventually received a patent that didn’t include targeted advertising but continued to develop its targeted advertising products anyway. Hoyle said Google should have contacted B.E. Technology because Google used “demographically targeted advertising” that infringed on his patent from 2003.
Enter attorney Shea Dixon, whose late father, Dave Dixon, knew a thing or two about inventing in New Orleans. Dave Dixon came up with the New Orleans Saints, the Superdome, the USFL pro football league and a major pro tennis tour, World Championship Tennis.
Shea Dixon says he had met Hoyle at a Louisiana Technology Council event and never really understood what Hoyle’s company did. Later, he learned about the dispute with Google and wanted to help. He believes Hoyle was bamboozled out of his rightful share of online advertising's massive profits, and New Orleans, by extension, missed a chance to become a tech hub.
“There've been probably $4 trillion between Google, Facebook and everyone else that have infringed this patent,” Dixon said. “They knew exactly how to do the steps and this patent to make it work. And they did, successfully.”
And Dixon alleges the U.S. government helped Google pull it off.
Michelle Lee was Google's director of patent strategy when the Patent Office rejected Google's first advertising patent application in 2006.
B.E. Technology sued Google and 18 other companies for patent infringement in 2012. But before the case could be reviewed, Michelle Lee left Google and became the director of the U.S. Patent Office branch in Silicon Valley. In 2015, then-President Barack Obama nominated her as Undersecretary of Commerce for Intellectual Property, putting her in charge of the whole U.S. Patent and Trademark Office.
Three years earlier, the America Invents Act had overhauled the U.S. patent system in 2012, creating a new dispute process outside the federal courts, under a new Patent Trial and Appeal Board.
The America Invents Act also granted Lee, as Patent Office director, power to appoint PTAB judges to adjudicate cases and even to name herself to a panel that could overturn PTAB decisions. Dixon said it’s unclear if Lee invoked those powers in relation to any of B.E.’s patent review cases, but he thinks the system is stacked in favor of Big Tech.
“They always ruled in favor of Google,” Dixon said. “Is that a stacked deck? Yeah, that's a pretty stacked deck. That's pretty much the definition of it.”
The PTAB not only rejected B.E.’s patent infringement claims, it tossed out most or all of the claims in B.E.’s targeted advertising patents.
Inventors – and at least one retired federal judge – refer to the Patent Trial and Appeal Board as the "Patent Death Squad” because it’s killed about 2,000 patents since it was first formed in 2012, according to a recent analysis by Bloomberg News.
Big Tech supports the PTAB, saying it helps weed out trolls who file for patents they'll never develop and stymie innovation. Hoyle says he’s no troll. He said he tried hard to monetize his targeted advertising invention until he was knocked off-course by Hurricane Katrina in 2005 and disputes with his business partners.
Several cases have gone through the federal circuit court and even to the U.S. Supreme Court challenging different aspects of the PTAB process. Multiple federal circuit judges have questioned the Patent Office director’s authority to create panels of appellate judges.
The high court is now considering a case called USA v. Arthrex that argues the PTAB panels are unconstitutional because the judges were not appointed with the advice and consent of the U.S. Senate. B.E. filed a friend-of-the-court brief in the case, arguing the PTAB process violates inventors’ rights to due process.
At one point during oral arguments March 1, Chief Justice John Roberts called it a “charade” that the Patent Office director could name additional judges to re-adjudicate cases.
“It really doesn't sound like any kind of adjudication that we would accept in a system characterized by due process,” Roberts said.
The court is expected to rule on the Arthrex case in July, and based on comments from the justices in March, Dixon and Hoyle feel the court is likely to rule for Arthrex and, possibly, could go further to shut down the PTAB until Congress takes action to fix it.
BE Technology recently won the right to move forward with a separate patent lawsuit it filed last year against Google and Twitter in Delaware federal court, passing a test for proceeding to trial that few small businesses have managed.
WWL-TV reached out to Google’s press office for comment in April and again in May. It responded with automated messages saying it was reviewing the request, but never answered any of the station’s questions.
The station also got no response to questions posed to Lee through her current employer, Amazon Web Services, where she is a vice president.
Hoyle left New Orleans after Hurricane Katrina. He said he will keep fighting for licensing fees that he believes are due to the company once known as Big Easy Technology. He still pines for what could have been, if he’d been able to develop the concept into a money-maker while still in the Big Easy.
“Imagine the money that Google has generated and think of what would have happened had that money been located here in New Orleans, how different the community would be,” Hoyle said.