My thanks to David D Goodman for sharing his inventor story about his technology related inventions including a video transmit receive pair that works over home telephone lines
Tara: Please could you tell me a little bit about where you are based, your background and how and why you started inventing?
David: I was born in Detroit, Michigan in 1953 and lived there until I graduated from Cass Technical High School in 1971. Then I went to the University of Michigan, where I studied a variety of technical topics. I graduated in 1975 and began a Master’s program in environmental engineering at MIT in September of that year. I graduated two years later, but quickly found out that environmental applications, however important they may be, were not well suited for me. I do better work creating responses that are either right or wrong, or building something that either works or doesn’t. I decided signal processing and programming fit that description much bettor, so I started work with a defense contractor in 1980.
My Dad, Harold Goodman, was awarded a patent – 2,628,804 – for an attachment to the press used on wooden tennis rackets (which were the only kind, at the time.) The attachment allowed one to clamp 3 balls against the netting, enabling one to carry all the necessary equipment with one hand. We had a lot of fun selling on consignment to local sporting goods stores other retail outlets. He made it for $0.10, it sold for $0.50, and we kept $0.25, for a nice profit. It sold pretty well, because it was no big decision on the part of the buyer, who typically saw it hanging in a small space at the checkout counter.. But he couldn’t find a way to the national market.
I didn’t pick up on my father’s hobby until 1987. What happened in 1987 is this: a friend of mine bought a device that provided a solution to a common household dilemma. One has a VCR and TV in the main entertainment area, and a second TV, but no VCR, in the master bedroom. The product included a black box that connected to the VCR, or other video source, and transmitted the video signal to a companion black box that connected to the 2nd TV. At the same time, the boxes enabled one in the master bedroom to control the VCR picture using the handheld controller. The controller would work because the master bedroom box would pick up the infrared signal and transmit it back, in electrical form, to the main entertainment area. The box at that location would recreate infrared pattern in front of the VCR so, for example, if one pressed the “pause button” in the bedroom, the picture would freeze even though the VCR was elsewhere in the house.
My friend asked me to install this. I did, but he returned it anyway – the device required a thin wire to run between the boxes, and the two-way communication worked over that path.
I believe many people would share the sentiment of my friend. The device was, however, a good product because the wire was so thin one could tuck it out of sight, or out one window and in through another. Running a wire in this manner would not be a show stopper for everyone, and the product, called “the Rabbit” sold well enough.
Four Inventions of David D Goodman and a Brief Description of the Stories Behind Them (Copyright David D Goodman 2011)
1. A Video Transmit Receive Pair that Works over Home Telephone Lines
One of the inventions described in Patent 5,010,399
A big improvement on the foregoing is, of course, to use wiring already in place in the house. Not only would there be no wires to install, the video signal could drive TVs at multiple locations.
But using active telephone wires for communication of video and infrared signals is counterintuitive. Not only did telephone signals share the path, other devices of varying designs were connected, and the network was not a line connecting two points, i.e. there were many splits. So it took a while before I considered the possibility.
The product I designed also comprised a black box that connects to the VCR, or other video source, and another that connects to the remote TV. (One can add extra receiver boxes to connect additional TVs.) Rather than making a second connection to a newly installed wire, however, each box connects to the nearest telephone jack, thereby creating a conductive path between the two over pre-installed wiring. A necessary feature, of course, is this – the boxes worked without affecting telephone communications.
I wrote a patent application and assigned to Inline Connection Corporation, a company I formed in 1988. The application was submitted in July, 1989, and US Pat No. 5,010,399 issued in April, 1991, with Bob Domnitz as a co-inventor. (Bob has a Phd in electronics from MIT, and Inline hired him to do improvements and refinements on the prototype I built.)
I licensed this product to a company called Terk Technologies in 1994. For reasons that are too complicated to explain in this space, the device did not get produced until 1999. It sold for three years in Radio Shack and Best Buy, among other places. One can find a few, today, on sale in the aftermarkets of Amazon and Ebay.
References to the Video Transmit Receive Pair on the Web:
- Listing of the product on Amazon
- An article from the British journal New Scientist, published in 1991 just after the patent issued.
- Another article from the same journal, published seven years later. They use the European patent number. (The web-page only shows part of the article…subscribers get the full article.)
- The Radio Shack User’s manual
- Some reviews.
- An article from the NY Times.
2. The Overvoice Apartment/Hotel Internet System
US Pat. No. 5,844,596
As I was designing products to transmit over the telephone wiring in a house, I was also thinking about transmission over the telephone wiring in apartments and hotels, among other places. The telephone wires in those facilities are particularly economical for communication of signals other than voice. The economy derives from the fact that the wire pairs leading to each apartment or guest room all converge to the same “wiring closet” in the basement. As a result, one can apply signals onto short paths leading to a large number of subscribers simply by bringing a package of signals to that single location.
I spent considerable time trying to interest companies in using the idea for video distribution through apartments and hotels. But I got nowhere. Then 1995-96 arrived, the Internet had captured the country’s fancy, and an inventor had only to walk down the street with a digital idea in order to attract investors. I shifted focus from video to Internet, and got a good investor right away.
The investor was CAIS, Inc, a Washington, DC ISP. According to our contract Inline Connection, stood to recover a small part of the ongoing revenue stream from the subscribers CAIS enlisted in each building. Although Inline’s “cut” was relatively small, I was pleased because it represented part of the ongoing revenue stream.
The first Overvoice deployment was in June, 1997. It was, as one can verify from archived news websites, the very first high-speed Internet system for hotels and apartments. It was also the first time, I believe, high-speed internet was offered to a residence as part of a regular deployment, rather than a “trial” in a selected neighborhood.
The system used the wiring closets as described above. One very high speed Internet link was brought to that point, and the link was separated into multiple paths by an ordinary Ethernet hub, exactly as might be used in a classic LAN (local area network.) Each path was connected to two pairs of telephone wires that led to the wall jacks in the rooms up above. (Signals transmitted upwards on one pair, and returned on the other pair.) The system was exactly the same as the Ethernet systems that provided hi-speed Internet into an office, except that the wires carried telephone communication.
To manage the telephone signals, inexpensive passive electronics, i.e. capacitors, inductors, and resistors were added to both the hub and the wall plates. The wall plates had two jacks – an ordinary telephone jack and an ordinary Ethernet jack. The small electronic components created a separation so that the two signals were directed in the correct manner. There were no black boxes with a million transistors – Overvoice hardware cost next to nothing, and was transparently embodied in the wiring connectors.
Two weeks after Overvoice was first deployed, Microsoft called up CAIS and said “we want to see this.” I learned how it felt to have Microsoft asking after a system I invented. (CAIS was an excellent company for an inventor and the best I’ve worked for but, for one reason or another, I wasn’t among those to visit Microsoft and describe what I built.)
In 1999, CAIS went IPO, and got $135 million. On the inside cover of the prospectus was a picture of the OverVoice wall jack, entitled “Meet Jack.” They did not however, offer me cash in return for transferring all rights in the patents. With the exception of one offer (in which they had an option to buyout that included some cash) they only offered stock. Wall Street starts to get suspicious when the inventor accepts cash in return for what the invention might bring.
When CAIS installed a system, they required the customer (i.e. a hotel or apartment owner) to subscribe to their Internet “feed” going forward. The hope was that Overvoice would dominate the market because it needed no visible electronics and did not connect to a 110V outlet. Rather than pay another ISP for the high-speed connection, these owners would subscribe though CAIS if they could use OverVoice.
After a year or so, certain competitors achieved the same result as OverVoice using familiar electronic black boxes. Despite the complexity, these systems didn’t cost much more, because electronics are inexpensive when manufactured in volume. So the Overvoice economy was apparently a relatively small factor when viewed against the costs of installation and operation over a number of years. My system was installed in over 600 hotels and several apartment buildings, but CAIS, like most hi-tech startups, went out of business in 2001.
The Overvoice electronics were so inexpensive, I believe I could have manufactured them myself, and made good money simply selling the parts to whoever was interested. But I, like CAIS, was as attracted to “the ongoing revenue stream,” and I missed this opportunity. When new management took over, CAIS terminated Inline’s contract, and essentially all the IP rights and ownership became, once again, sole property of Inline.
A part of the Overvoice story that I like is this. At least one office building was always located next to any given hotel where Overvoice was deployed. In most of these buildings, the workers would get data through (what is known as) an Ethernet LAN – Local Area Network. These consist of an electronic hub and 2 wire pairs connected between the hub and each computer. When the Internet became popular, data from the web began to move over these networks along with the data already using the LAN. The LAN operated at 10 million bits per second. Each worker, as a result, enjoyed high-speed Internet. (If the 10 million bits were split among all the workers, the resulting speed would not be impressive. But Internet usage is such that one using the net receives signals perhaps 1% of the time, leaving the high-speed stream of Internet data dedicated, to a large extent, to anyone using the system.)
Focus now moves back to the hotel. The wiring configuration in those buildings was nearly identical to the office wiring next door – 2 wire pairs running from a point of concentration to multiple end users. And so it was that an Ethernet hub and a few $0.25 parts to separate the telephone signals, (i.e. capacitors, inductors, and resistors) were the only requirements necessary to bring the hotel guests the same Internet data rate enjoyed by their commercial neighbors.
Hotels and apartments have long provided Internet using wireless systems or systems that run over specially installed wires, and Overvoice is gone and forgotten. There are no more installations, no one talks of it, and it would be hard to show it even happened except for some marvelous media that came out at the time, and got the story just right. Here are a few items:
Who was the first to make hi-speed Internet available to the masses? CNN has an answer.
Here is another video, this one produced by a local Wash DC station – for a video spot, it describes the technology very very well.
3. Self-Install DSL
Inline’s complaint is expressed in several places. Here is the expression by the Delaware judge in the last ruling she handed down:
“Inline alleged that EarthLink used its patented system, without
permission, to make DSL products more attractive to consumers. According to Inline, although alternatives to the DSL products offered by EarthLink exist, using the Inline system allows products to be offered without incurring installation charges every time a new DSL customer is added, merely by having the customer “self-install” filters and modem devices within the home.”
Earthlink and the other ISP were targets because they rented DSP links from the telephone companies to provide their subscribers with high-speed connections.
Later, in 2005, Inline moved to enforce the patents against Verizon. As a telephone company, Verizon made both telephone and Internet service available to its subscribers.
In Feb, 2007, Inline lost the trial to Earthlink in Delaware district court. (The other ISP left the trial for reasons that are confidential.) The jury, moreover, invalidated the three patents on four different counts of patent law.
But Inline’s investor appealed to the Delaware judge to overturn the jury. Her response came down in Feb, 2010, and it completely revalidated the patents. All three were ruled valid on all four counts – (a) validity, (b) non-obviousness, (c) enablement, and (d) written description. The jury’s verdict of non-infringement was not overturned. Here is the 70 page ruling by the Delaware judge.
The non-infringement verdict, and some of the rulings that might set precedent, in the case, were appealed by the investor to the US Federal Appeals Court in 2010. After that court makes its ruling, the Verizon case, which is stayed pending the appeal, can resume in Delaware Court.
4. Automatic Installation of Peripherals into USB
and other PC Ports – 6,704,824
When CAIS deployed Overvoice, there were only two high-speed ports on the laptops that hotel guests might use in their rooms, but they were both unsatisfactory. One port was the parallel printer port, and the other was the PCMCIA slot. The printer port needed and adapter to enable it to connect to Ethernet, and the PCMCIA slot needed a card for the same reason. While it was possible for CAIS to provide these to their customers, that was not an ideal solution, because it put a burden on the hotel to keep one available in the room at all times. Additionally, each adapter required a CD to supply the laptop with the software to make it run. The adapters were not particularly large but everyone seemed to agree they were unwieldy.
Shortly after Overvoice was deployed, an announcement was made that a new high speed port for PC would be shortly introduced – the USB port. And it was clear USB enjoyed wide acceptance – this would be the standard high-speed port for a PC. While the USB port would also need an adapter to connect to Ethernet, management felt it to be better than the alternatives, because it could be permanently attached to the furniture in the room, and the software would be available on Windows so there was no need for a CD. Everyone was pleased.
Then the team received the unexpected news that Windows would not include the required software after all, and the USB to Ethernet adapter would require a CD. It was a big disappointment. Management asked me if I could do something about this, a challenge that, I believe, would energize anyone pre-disposed to invent. After a while I devised what I believe to be a very good solution, which works approximately like this. The necessary software is stored in the adapter and, upon connection to the PC, a special mechanism automatically installs this software in the computer, completing all the steps necessary for communication. I submitted a patent application, and was awarded US Patent 6,704,824.
Tara: What sort of importance do you place on protecting you ideas via patents or other means? Do you ensure all your ideas have patentable aspects?
David: Patents have primary importance. I’m impressed by those people who can create success from a new idea while being open, all the while, to competition from those who pick up on their innovation after they learn of it. I never felt I had insight into how those individuals could be confident they could fend others off. Actually, I’ve never even interviewed one about that question.
Tara: How do you go about promoting your invention ideas, do you contact possible companies with the idea of licensing your product inventions or do you like to maintain control and manufacture and sell them yourself?
David: I tried to manufacture my consumer electronic product using the “Maquilladora” factories just across the border in Mexico, but I needed more funds. My hotel/apartment product, which came later, was different in this regard. It was very inexpensive to manufacture and sell. But, as I describe in the writeup, I missed the opportunity to capitalize that way. I found an investor who, like myself, wanted to leverage the arguably dominant advantages of my system so they could sell internet subscriptions, in addition to making a one-time hardware sale. That was a mistake – the system was dominant enough to sell all over, but not to leverage in such a grand manner.
Tara: From an initial invention idea how long would you normally expect it to take to get a product to market, based on projects you have worked on?
David: As an example, I was trying to sell electronics that would convert the telephone wires in apartments and hotels into conductive paths that would serve the same purpose that the coaxial cables in those buildings. I felt there was a demand because the cable companies owned the coaxial cables, and there were new providers on the market, like DirecTV. The new players needed their own conductive path, and I wanted to sell them one. But their business apparently had other compelling issues and, although I received attention, I never made good progress in over two years of effort. When the Internet began to be appreciated, however, it was the ISPs that needed a new path, and their efforts to grab market share were frenzied, like other Internet start-ups. And so it was that one could not walk down the street with a digital idea without attracting investors. I signed a contract in November, 1996, and the system — Overvoice — was commercially deployed in June, 1997.
Tara: Did you learn anything bringing your first invention to market that changed the way you worked on subsequent ideas?
David: I was more savvy in choosing a partner, i.e. an investor or a manufacturer. However, I may have shied away from the idea of building products myself because I gave too much weight to the difficulties I had with the first product. As described above, this backfired — I might have made a nice profit making and selling hotel/apartment internet hardware.
Tara: What advice would you give any aspiring inventor with an idea?
I believe that one must address all issues that might cause the product to fail. Always run scared.
I like to think that I’ve had a lot of ideas, but I’ve never put in a serious effort into one that was a loser.
Tara: Does an aspiring inventor need to know all aspects of how their invention could be made eg. manufacturing processes and materials or is an idea itself enough? If an inventor is does not have the knowledge of this themselves what would you suggest?
David: At least in my area – electronics — I believe it is an unusual person who has the skills to be sufficiently intimate with all the technology required to take a product from idea to market. I found that contracting and interviewing experts worked very well. One must pick a good expert and I would first, of course, assess the person’s expertise in the field. Additionally, there should be no big egos, because always seems to get in the way. The person should admit what they don’t know, i.e. give an indication of how certain they were of their contentions. And the person must agree to contractually “work for hire,” i.e. they get paid hourly and all “new ideas,” are assigned to the one who hires.
Lawyers, and especially patent lawyers, fall within the category of experts on which one must rely. The problem is this area, the legal one, is that one runs into the problem of defensiveness. The attorney may always hedge on his or her responses because of fear of malpractice, reputation, or something like that. It’s hard to get an answer! One may not even be able to get data by reading between the lines.
I worked with this particular attorney, whom I still consult with every now and then, who had the foregoing problem licked. He described how he solved it by, if I remember correctly, telling me that “if I respond to every question with an honest assessment of what I believe, I have done the right thing and, additionally, I cannot rightfully and I will not likely be open to malpractice or similar types of problems.” I and this guy understood each other perfectly — I never asked him for an answer that was sure to hold up, and he never gave me one. (“Do you think this idea can get adequate patent protection, Walter?” “Well, Dave, I would say the chances are slightly better than even.”)
I consider all input (i.e. data) when addressing a problem, e.g. opinions from 3 electronic designers. And I give all input, implicitly, a different weight in arriving at a decision. I would collect very little of that if the expert only recited the laws of nature, or another type of statement that was not open to challenge. And so, this particular attorney was invaluable — I’d have much more data, indeed, if all attorneys responded in the same manner.
Tara: Are there any inventions you have recently worked on that you are able to share?
David: I can talk about some of them. This smartphone business, i.e. iPhone, Android, Blackberry and others, is ripe for innovation. I mean, they each have optical in (a camera,) optical out (a screen) sound in (a microphone) sound out (speaker), GPS signals in, Bluetooth, Wifi, and 3G for 2-way wireless communication and (client) USB for two way communication. So I’m always thinking about applications. Here are three:
a) One important signal not on the above list is infrared light. This can be used to control audio-video equipment. It is not included, I believe, because the “industry” wants Bluetooth signals to be the ones that control this equipment in the future. But all AV stuff responds to IR, so far, so IR is VALUABLE. There are several ideas for adapting an Android phone so it can transmit IR signals, but the techniques on the web and the applications in the USPTO, in my opinion, have serious shortcomings. I have devised a technique that, I believe, may get it right.
b) Automobile systems that let one do “hands-free” communication with a smartphone are common in upscale cars and becoming more popular. The driver’s voice is received from a microphone on, for example, the steering wheel, and the incoming voice plays through the speakers. These signals connect to the smartphone via Bluetooth. But pickup of the driver’s voice is always suboptimal and is sometimes unacceptable. There are many systems that address the issue but they seem to fall short. That provides a potential opportunity, and I have some ideas that look promising.
c) Some of the upscale smartphones have what is called a “front camera.” This camera is located on the same side as the screen, and enables one to conduct a “video call.” (The primary camera is located on the back, so it is not useful for this purpose.) Like PC video calls, however, good eye contact between the two parties is not possible. This is because each party must look at the camera, which is located at the side of the screen, in order to appear to be “looking straight ahead,” when their image is recreated at the other end. If one is looking at the camera, however, one cannot look into the eyes of one’s companion as they appear on the screen. This is a difficult problem but I have an idea that, I believe, has a chance.
Are you an inventor with an interesting story to share? Please get in touch via the contact form or email tara (at) ideasuploaded (dot) com