Inventor John Harvey: A 30

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I NUENTOR JOHN HnRUEY:
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BY: MARK CANTEY
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OUERN I GHT SUCCESS
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September 2012
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r----~~llJ~~TORY
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ohn Harvey's inventions can't be readily seen,
yet they are an important part of devices and
equipment that most people use daily.
His inventions can be found in set top boxes that
decode cable and satellite TV signals; in video
games and in the digital networks that drive mobile
computing and communication; and also in the manner in which digital data is formatted and transmitted. Companies that license John's inventions reflect
the fundamental nature of his ideas. They include
Cisco Systems, Motorola Mobility (now owned by
Google), the Weather Channel, and Sony.
John's is a quintessentially American success story
that continues to unfold. A late-blooming inventor,
he faced and surmounted patent filing challenges;
endeavored to raise funds to commercialize his inventions; and, after scores of refusals by established
businesses to joint venture with him, John eventually
had to go to court to prove that his patents were being infringed in order to realize any of the economic
value of what he had created.
After more than three decades of struggle, and
with the dedicated support of family and longtime
friends, John is finally starting to achieve the recognition and success that he deserves.
John's invention odyssey begins in the 1950s, long
before he left a career in finance to establish Personalized Media Communications, a small business that
still is family run.
Born in Newark, NJ, John, whose father was an
Episcopal priest, had an early interest in computers
and communications. As a boy he spent summers at
his grandparents' home near a hilltop in New Hamp. shire where he observed first-hand the construction
and operations of an early broadcast television .station.
"WRLP- TV was among the first remote television stations in the U.S," says John, a spry 68-year
old. "It was a fully functional TV station with studio
and control room facilities for producing, recording
and editing local segments. Spending a summer in
and around the station and its engineers was invalu-
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able to my later interests. It let me see firsthand how
broadcast technology worked."
Local TV stations like WRLP 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.
'
John struggled for years not only to refine and document his ideas, but also to steer them through the
arduous patent filing process and secure capital to
bring his ideas to market. John's ideas were not easily understood, but he, his wife, KazieMetzger, and
his friends and lawyers would not give up. "It was
the classic case of good ideas and bad timing," he
says. "We needed more time and cash."
John recalls that his inventions, which included
decryption methods for broadcast signals and an addressable and controllable network, much like today's Internet, "sounded to most people more like
science fiction than enabling technology." More than
ten-year search for funding to commercialize his
ideas led nowhere. But that did not stop companies
from using his inventions in their products. Eventually, PMC had to sue some of them for John to get
paid.
John's determination to make important diseoveries in information transmission technology that
were patentable, and to stay the course, resulted in
64 USPTO-issued patents. As many as 40 more are
likely to issue in the next two years.
Early Interests
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U.s. Naval Officer
After
graduating
from
Yale in 1966, John joined
the Navy with assignments
as an Electronic Materials
Officer and, later, as a Communications Officer on the
USS Aeolus. He saw the
ship as "a floating private
communications
system,"
and reveled in its protocols.
Onboard, he had the opportunity to work with West-
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em Electric consultants who at the time were on the
leading edge of communications engineering.
This experience provided him with technical
awareness that would be reflected in his early inventions. In college John befriended fellow ROTC
member Tom Scott, who was to remain a loyal friend
for 50 years and for most of that time PMC's primary
patent attorney. (Tom, now head of intellectual property practice at Goodwin Procter, still works closely
withPMC.)
"I understood early on that automating self-contained or local communications networks had as
much to do with software as hardware.
"My inventions focused significantly on 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 once stood, interconnecting the station
equipment permitted the computers to perform control functions previously performed manually."
•
ceived hands-on exposure to patent law, evaluating
early stage businesses that relied on patents.
After this pivotal experience John decided to pursue inventing full-time. In 1980, he began to explore the possibility of developing inventions systematically on his own. John filed his first patent,
4,694,490, a 45-page document, on November 3,
1981 with Jim Cuddihy, a friend and former RCA
engineer who is also named on PMC patents. This
first patent did not issue until September 15, 1987.
"When John Harvey asked us to consider using his
first patent shortly after it issued, we thought he was
ahead of the times," recalls Dr. Ron Katznelson, who
at that time was the Director of New Technology Development at General Instrument Corporation. "His
patent described a multitude of integrated television
and data applications for which we had not seen an
economic path to commercialization.
I am glad to
see that commercialization is possible today" said Dr.
Katznelson, a successful inventor with 23 patents.
"Those who could understand
the invention thought it was something out of science fiction,"
recalls John. "They never thought
a business could grow out of it, let
alone multiple industries."
Full-time Inventor
John's third patent, '4,965,825, issued in 1990.
The '825,550 pages long, was an elaboration on the
ideas that grew out of the first filing, providing additional disclosures. Another four patents issued over
the course of the next decade. In addition, because
of the broad range of inventive concepts in his early
applications, John filed 327 new patent applications
in 1995, which provided further elaboration on the
original seven patents
John and Kazie Harvey
One-of-a-Kind Rights
Following the service John managed financial assets and profiled risk. He obtained a business degree from the University of Pennsylvania's Wharton
School and eventually joined Hambros Bank Ltd.,
the British merchant bank, where he engaged in venture capital and private equity investing. Here, he re-
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Starting in 2003, the original seven patents entered
reexamination at the Patent Office - an extended
process that was not entirely done until 2012 - as
the result of litigation with Thomson, the electronics
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finn, and Scientific Atlanta, a maker of set top boxes for cable TV. Fortunately for PMC, the USPTO
eventually reaffirmed most of the claims on almost
all of the patents, making them even stronger than
before.
Nevertheless, the Patent Office suspended processing most ofPMC's 327 new applications while these
reexaminations were pending. The PTO chose to
examine two of the pending applications, however,
both of which eventually appeared before the PTO
Appeal Board. In 2009, the board, after extensive
review, determined there to be significant allowable
subject matter in the two applications.
As a result, and with the reexaminations of the earlier patents substantially complete in 2009, the PTO
restarted the examination of PMC's other pending,
but suspended, applications. Given the long pendency - nearly 15 years - the PTO examiner began
processing the applications as promptly as possible.
Since 2010, 57 patents based on the suspended applications have issued, and will not expire until at
least 2029. These patents, issued on the basis of
the PTO Board rulings, provide PMC a portfolio of
uniquely strong patents.
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John Harvey Today
Today, the PMC team includes patent prosecution
expert and John's long-time friend, Tom Scott, and
Kazie, his wife of 35 years, who is a principal of
PMC. A former cable executive and Duke and Harvard Business School grad, Kazie Metzger, makes
the day to day operating decisions along with Gerald
Holtzman, another PMC principal and Kazie's high
school classmate in Corpus Christi, TX. Gerald, an
attorney, manages the headquarter operations from
Sugar Land, TX. Kazie and Gerald have known each
other for more than 50 years. Jim Cuddihy, co-inventor on many ofthe PMC patents and an electrical
engineer, originally worked with Kazie at RCA in
the 1970s. Finally, John and Kazie's eldest daughter,
Kitty serves PMC as a market analyst. Like her dad,
Kitty was a United States Navy officer, and holds
a graduate degree in International Relations from
Johns Hopkins. This is truly a family business!
John Harvey continues to invent. He is finally be-
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ing recognized as a pioneer in network technology
and decryption, and one of the leading inventors of
the digital age. 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 worldwide.
"John is a man on a mission," observes Kazie.
"Nothing gets in the way of his devotion to inventing. He's undaunted by adversity, oblivious to distractions, and always willing to learn new things,
even if it is how to file a better patent than most lawyersdo. He not only has a brilliant mind but a thick
skin and good support system. For John and PMC
it really has been a family affair, and his success is
due in no small part to all of the members pulling
together and believing in him."
For more information about John Harvey
and Personalized Media Communications,
please visit www.personalizedmedia.com