Google Sued For Patent Infringement For Keeping Track Of How Many Ads People Click On

from the thank-you-patent-system dept

Tue, Aug 5th 2008 6:26am — Mike Masnick

It still seems rather amusing (if not twisted) that some patent system supporters are trying to convince the world Google would be harmed by an absence of software patents. Instead, it seems increasingly obvious that it would only serve to help Google, who is a regular target of questionable patent infringement lawsuits. Take the latest such case as an example. A company by the name of Web Tracking Solutions, which ironically enough, doesn't appear to have much of a web presence (if any), has sued Google for patent infringement, claiming that its patent on third-party on-line accounting systems is being violated by Google's AdSense offering.

Try to read the patent without gagging over the question of what the USPTO was thinking when it approved this as a "non-obvious" process. Basically, it describes a system for tracking ad clicks on third party websites, and then showing that information (how many clicks, etc.) for customers of an ad service. In other words, apparently the USPTO thought that the idea of actually accounting for how many ad clicks were made by an advertising service to its clients is somehow deserving of monopoly protection. I would imagine that Google would be perfectly fine losing its own patents if it meant not having to defend against these sorts of lawsuits on an all too regular basis.

Thank you for reading this Techdirt post. With so many things competing for everyone’s attention these days, we really appreciate you giving us your time. We work hard every day to put quality content out there for our community.

Techdirt is one of the few remaining truly independent media outlets. We do not have a giant corporation behind us, and we rely heavily on our community to support us, in an age when advertisers are increasingly uninterested in sponsoring small, independent sites — especially a site like ours that is unwilling to pull punches in its reporting and analysis.

While other websites have resorted to paywalls, registration requirements, and increasingly annoying/intrusive advertising, we have always kept Techdirt open and available to anyone. But in order to continue doing so, we need your support. We offer a variety of ways for our readers to support us, from direct donations to special subscriptions and cool merchandise — and every little bit helps. Thank you.

–The Techdirt Team

Filed Under: ad clicks, audits, patents
Companies: google

81 Comments

If you liked this post, you may also be interested in...

Reader Comments

Subscribe: RSS

View by: Time | Thread

Willton, 5 Aug 2008 @ 6:54am

In other words, apparently the USPTO thought that the idea of actually accounting for how many ad clicks were made by an advertising service to its clients is somehow deserving of monopoly protection.

No, it did not. The USPTO only decides whether a piece of claimed technology is novel and nonobvious to a PHOSITA (person having ordinary skill in the art) at the time the invention was made, and whether the disclosure sufficiently teaches the technology and enables a PHOSITA to practice the claimed invention. Whether something deserves monopoly protection is not a question the USPTO has the power to decide.

If you think that this would have been obvious to one skilled in the art in 1995, by all means, show us some prior art.
[ link to this | view in thread ]
angry dude, 5 Aug 2008 @ 7:09am

poor Google
Google doesn't need patents anymore - they are too big and sitting on piles of cash from IPO
Patents are needed to prevent a small to medium size tech company from being cannibalized by the giants like Google or MShit
Those google founder punks were really really lucky to be on Stanford campus in the mid 90s...
[ link to this | view in thread ]
Jason, 5 Aug 2008 @ 7:22am

Re: poor Google
How does Google not needing patents anymore (your words) have to do with Google getting sued over a patent?

While I agree with you that patents are supposed to help the smaller guys, if you don't take advantage of the patent and actually bring a product to market, you should not be allowed to pull this "patent troll" type of behavior. It's your own fault for not getting the idea to work in the marketplace. Suing a company, just because they can work better than you in a certain area (competition), doesn't give you right to sue.

Also, I believe Software Patents should never have been granted as we see too many cases involving what is obviously the natural progression of the business. Yes, back in 1995, it may not have been foreseeable, but given the nature of software now, I think the USPTO needs to amend the rules on software patents.

Lastly, why does the fact that the Google founders are from Stanford have to do with this patent?
[ link to this | view in thread ]
ehrichweiss, 5 Aug 2008 @ 7:23am

Re:
When the USPTO grants a patent, they are in essence granting the patent holder monopoly protection for that technology. If they were not then why are they able to sue google for something they don't have a temporary monopoly on?

And I can find plenty of prior art if I dig out some of my old code from 1995. Sorry bro but just because one used a 3rd party server to do the accounting does not mean it was novel or non-obvious.
[ link to this | view in thread ]
Anonymous Coward, 5 Aug 2008 @ 7:25am

Re:
I would dispute that a lack of prior art is proof positive that an idea is non-obvious. Just because nobody cared to do it doesn't mean that it was a difficult thing to come up with. Website traffic tickers have been around for an age and this isn't more than half a step beyond that idea.
[ link to this | view in thread ]
ehrichweiss, 5 Aug 2008 @ 7:25am

Re:
oh yeah,

I should have mentioned that since the USPTO is now questioning whether software patents should even have been granted in the first place, this thing is going to be dismissed pretty quickly.
[ link to this | view in thread ]
Anonymous Coward, 5 Aug 2008 @ 7:28am

Re: Re: poor Google
How does Google not needing patents anymore (your words) have to do with Google getting sued over a patent?

Their point was that Google is big enough now that it doesn't need to be afraid of other corporations taking advantage of it the way smaller companies do. Like Web Tracking Solutions. Which has been around since before 1996.
[ link to this | view in thread ]
Anonymous Coward, 5 Aug 2008 @ 7:30am

Re: Re: Re: poor Google
Oh, whoops -- just realized the GP is angry dude. Nevermind, he doesn't have a point. He just likes throwing rocks whenever someone mentions patents.
[ link to this | view in thread ]
angry dude, 5 Aug 2008 @ 7:53am

Re: Re: poor Google
Perhaps you should know, little clueless, that there is no definition of a "software patent"

And there won't be any in the future

Live with that punk
[ link to this | view in thread ]
eleete, 5 Aug 2008 @ 7:54am

Prior Art
Man can't wait to see the prior art come pouring out of this case, that patent is gonna get a squashing.
[ link to this | view in thread ]
Anonymous Coward, 5 Aug 2008 @ 7:57am

Re: Re: Re: poor Google
I think the definition of a "software patent" is pretty clear, angry dude. That is, it's a patent on software.
[ link to this | view in thread ]
angry dude, 5 Aug 2008 @ 8:02am

Re: Re: Re: Re: poor Google
Clear to whom ?

BTW there are 2 types of claims usually encountered in patents: method (or process) claims and apparatus claims
Neither one is unique to software: processes have been patentable since the patent system inception (the very first US patent was in a fact a process patent)
and apparatus is an actual physical device, software-driven or not - doesn't matter
Do your homework first punky
[ link to this | view in thread ]
Michial, 5 Aug 2008 @ 8:08am

If Software Patents are revoked
If the USPTO decided to revoke Software Patents and not allow them any more what will happen to those of us holding valid Patents?

I for one have spent clost to $15k having my patent issued, and would be quite unhappy if they revoked it or decided that it was a "mistake" to allow software patents in the first place.
[ link to this | view in thread ]
wasnt me!, 5 Aug 2008 @ 8:08am

Re: Re: poor Google
if there were no more patents:

1- every one including would loose there patents
2- no one has patents so no one could sued google for patent infringement.
[ link to this | view in thread ]
angry dude, 5 Aug 2008 @ 8:16am

Re: If Software Patents are revoked
Relax dude

nobody can "revoke" "software patents" because nobody can clearly define them

it can only lead to an ugly legal mess and the giant legal loophole for infringers to steal all kinds of inventions (including hardware devices) by maskerading them as "software"
This would pretty much equate to the complete destruction of the US Patent system
I am not joking
[ link to this | view in thread ]
angry dude, 5 Aug 2008 @ 8:25am

Re: Re: If Software Patents are revoked
To clarify the situatiomn a littkle further for techdirt punks

Many established fields with long traditions of patentability have experienced transition from analog to digital (aka "software") representations

For example, audio reproduction technolgy, like recorders etc (remember Dolby) used to be analog and nobody had a problem with patentabily of those methods (like Dolby noise reduction) Of course it was before the advent of open-source and before any of you punks were born
Now audio is purely dugital, and the same technologuies like ausio filtering are now implemented in digital form, - meaning software

Now is the question: Should the fact that at some point a particular technological field moved from analog to digital representation deny future patentabily for new inventions in that field ?
And what would be a legal ground for even starting to think in this direction ?
[ link to this | view in thread ]
Jason, 5 Aug 2008 @ 8:42am

Re: Re: If Software Patents are revoked
nobody can "revoke" "software patents" because nobody can clearly define them if "software patents" aren't clearly defined, then the USPTO shouldn't even be issuing patents for software. Someone has to have a definition in place in order for the USPTO to hand out patents, or else what would they judge against? Also, the USPTO can revoke patents as long as it's proven that they were granted falsely. Just because something is ill-defined doesn't mean it's immune from this. I don't know where you get your logic from, but it doesn't make sense.
[ link to this | view in thread ]
Evil Mike, 5 Aug 2008 @ 8:46am

Re: poor Google
Back for another lesson are you?

I warn you, my rates have doubled. But, if you need the education... such is life.
[ link to this | view in thread ]
Anonymous Coward, 5 Aug 2008 @ 8:47am

Re: Re: Re: poor Google
1. Yes, there is no universal definition for a software patent, but there are people trying to define it. For example, the Foundation for a Free Information Infrastructure calls a software patent, "a patent on any performance of a computer realized by means of a computer program". It's not necessarily perfect, but it still shows that there is at least some definition of a software patent.

2. Why must you resort to calling people names ("little clueless", "punk", etc.) when they are trying to have a debate? You can't argue your point in a have to resort to name calling?
[ link to this | view in thread ]
angry dude, 5 Aug 2008 @ 8:49am

Re: Re: Re: If Software Patents are revoked
Jason,

Are you coming from retarded family ?
Seriously dude, I am worried about your mental retardation
[ link to this | view in thread ]
MLS, 5 Aug 2008 @ 8:49am

Rejoinder
"It still seems rather amusing (if not twisted) that some patent system supporters are trying to convince the world Google would be harmed by an absence of software patents."

It is obvious from your initial article that you read Mr. Duff's comments. However, it is also obvious, based upon your initial article and this one, that you missed entirely the substantive content of his comments.

"Try to read the patent without gagging over the question of what the USPTO was thinking when it approved this as a "non-obvious" process."

The question to ask is not "Is it obvious in 2008?", but "Was it obvious in 1996 when the application was filed?" Based upon the references cited on the face of the patent both the applicant and USPTO appear to have agreed that the allowed claims were each novel, non-obvious, and enabled. If there is better relevant, non-cumulative. prior art available (publications, factual assertions supported by affidavit under oath, etc.), then this will likely come out fairly early in the lawsuit.

Your general (note, I use the word "general" and not "absolute") distaste for patents is well documented. A view held on the basis of some objective evidence concerning the patent system per se is one thing, but a broad brush stroke suggesting that inventors and their lawyers are trying to "put one over" on the public insults the integrity of inventors and their lawyers alike. Perhaps there are exceptions, but in my experience I have never observed, nor would I ever condone, the preparation and submission of a patent application without a good faith belief by both the inventor and his/her lawyer that the claims presented were not preempted by the known prior art.
[ link to this | view in thread ]
angry dude, 5 Aug 2008 @ 8:53am

Re: Re: Re: Re: poor Google
"a patent on any performance of a computer realized by means of a computer program".

Ha
That "definition" would include pretty much everything, from your cell phone to the ABS brake-control module in your car (which you don't have of course)

And btw, nobody gives a shit about "Foundation for a Free Information Infrastructure"
[ link to this | view in thread ]
Jason, 5 Aug 2008 @ 8:59am

Re: Re: Re: Re: If Software Patents are revoked
Again, with the personal attacks instead of some actual content.

All I was pointing out was that if something wasn't clearly defined, the patent office shouldn't have granted a patent in the first place, which would in turn negate the "you can't revoke software patents because they aren't defined" logic. If you don't agree with that, prove me wrong and show me why instead of attacking me.
[ link to this | view in thread ]
Jason, 5 Aug 2008 @ 9:05am

Re: Re: Re: Re: Re: poor Google
angry dude, the Foundation for a Free Information Infrastructure is " a non-profit organisation based in Munich, Germany, dedicated to establishing a free market in information technology, by the removal of barriers to competition. The FFII was largely responsible for the rejection of the EU software patent directive in July 2005, working closely with the European Parliament and many partners from industry and civil society." http://en.wikipedia.org/wiki/Foundation_for_a_Free_Information_Infrastructure

I would suspect they have a good amount of experience in this area and would be more apt than you or I to come up with a definition of a software patent.
[ link to this | view in thread ]
Matt, 5 Aug 2008 @ 9:12am

Re: Re: Re: Re: Re: poor Google
No need for the offense language friend, we're all just trying to have a civilized debate. We'd appreciate it if you could join us.
[ link to this | view in thread ]
Anonymous Coward, 5 Aug 2008 @ 9:13am

Re: Re: Re: Re: Re: If Software Patents are revoked
Just ignore the troll. He pops up every time the word "patent" appears on this blog, and then proceeds to prove, time after time after time, that he's a complete jackass. Don't ask him to counter your arguments -- he won't, because he doesn't have a counter to your arguments, and he's incapable of formulating one. For the record, he has never once responded with an even remotely logical counter to any argument on this blog. However, he does like to call people "punks" and "retards," which seems to be his only defense against those who disagree with him -- which is everyone.
[ link to this | view in thread ]
Willton, 5 Aug 2008 @ 9:22am

Re: Re:
When the USPTO grants a patent, they are in essence granting the patent holder monopoly protection for that technology. If they were not then why are they able to sue google for something they don't have a temporary monopoly on?

I'm not disputing that. What I am disputing is the notion that the USPTO makes the policy judgment on what technology is "deserving" of protection and what is not. The USPTO is merely following the law on the criteria for obtaining a patent, as laid out by Congress. It is not making the decision of whether something is "deserving."
[ link to this | view in thread ]
Willton, 5 Aug 2008 @ 9:26am

Re: Re:
And I can find plenty of prior art if I dig out some of my old code from 1995. Sorry bro but just because one used a 3rd party server to do the accounting does not mean it was novel or non-obvious.

Fine, then show it to us. I'm sorry, but your bald assertion doesn't hold water without something to back it up.
[ link to this | view in thread ]
Kilgore Trout, 5 Aug 2008 @ 9:30am

Re: Re: If Software Patents are revoked
I thought one could not patent an algorithm - isn't that pretty much what software is?
[ link to this | view in thread ]
Jon, 5 Aug 2008 @ 9:31am

Re: Rejoinder
[...]in my experience I have never observed, nor would I ever condone, the preparation and submission of a patent application without a good faith belief by both the inventor and his/her lawyer that the claims presented were not preempted by the known prior art.

I think this makes you a better lawyer?? than most encounters I have had and observed. There are plenty of corporate lawyers who are getting paid to expand their respective companies interests. It is a classic example of conflict of interest.

Do I do what is morally/ethically right or do I do what my employer wants?

Sadly, the need for food, shelter, and a new BMW typically win out.

Disclaimer: Yes I am a bit cynical regarding corporate America and their priorities.
[ link to this | view in thread ]
Mike (profile), 5 Aug 2008 @ 9:32am

Re:
If you think that this would have been obvious to one skilled in the art in 1995, by all means, show us some prior art.

Really, Willton, as a law student, you should know that new and non-obvious are separate things. Prior art is only needed to prove that something was new. Non-obvious is different altogether.
[ link to this | view in thread ]
nunya_bidness, 5 Aug 2008 @ 9:35am

Re: Re: Re: Re: If Software Patents are revoked
Audio is not purely digital, you are the retard.
[ link to this | view in thread ]
Mike (profile), 5 Aug 2008 @ 9:37am

Re: Rejoinder
It is obvious from your initial article that you read Mr. Duff's comments. However, it is also obvious, based upon your initial article and this one, that you missed entirely the substantive content of his comments.

Ah, so typical of an MLS respond. Claim that I don't get it, but fails to actually enlighten. It's his typical backhanded insult.

So, honestly, are you suggesting that Duffy DID NOT claim that Google would be harmed by the removal of software patents?

The question to ask is not "Is it obvious in 2008?", but "Was it obvious in 1996 when the application was filed?" Based upon the references cited on the face of the patent both the applicant and USPTO appear to have agreed that the allowed claims were each novel, non-obvious, and enabled. If there is better relevant, non-cumulative. prior art available (publications, factual assertions supported by affidavit under oath, etc.), then this will likely come out fairly early in the lawsuit.

Ah, just like Willton. Pretending that prior art is the determinant of obvious. It's not. Prior art tells you if it's new. Non-obvious is a different question altogether.

Perhaps there are exceptions, but in my experience I have never observed, nor would I ever condone, the preparation and submission of a patent application without a good faith belief by both the inventor and his/her lawyer that the claims presented were not preempted by the known prior art.

Well, as you yourself recently admitted (or, were you lying?) you no longer have anything to do with patents in your practice. So, perhaps you've missed the way patents are treated over the last decade or so.

But, either way, you again act as if prior art is the determining factor of obviousness.
[ link to this | view in thread ]
non angry dude, 5 Aug 2008 @ 9:39am

my my
I saw the band "Angry Dude" last night, they played their hit song "Punks and Retards".
[ link to this | view in thread ]
Kevin, 5 Aug 2008 @ 9:50am

Obvious and Not new
A developer here, for 15 years. I can say it was not obvious, not new, and not even especially clever in 95.
[ link to this | view in thread ]
Kevin, 5 Aug 2008 @ 9:53am

d*mnit
It really detracts from the impact to have to correct an attempt at pithy :). Rather: "I can say it WAS obvious"
-Best
[ link to this | view in thread ]
eleete, 5 Aug 2008 @ 9:58am

Re: Re: Re:
Was it a 'bald assertion' when you told me computer programs weren't covered under copyright and that I was not an author ?
[ link to this | view in thread ]
eleete, 5 Aug 2008 @ 10:03am

Re: Re: Re: Re:
Oh yes, you asked me to provide a quote of your nonsense ramblings.
"Mr. Eleete, I've seen your website, and it appears to me that you are a computer programmer, not an artist or an author. So I find it a bit disingenuous of you to make these bald assertions as if you would know what drives an author or an artist."
So clearly it is YOU who are making 'bald assertions' on this site. Not sure how you let that fact slip your mind, but you come off as quite arrogant about your point of view.
[ link to this | view in thread ]
angry dude, 5 Aug 2008 @ 10:11am

Re: Re: Re: Re: Re: Re: poor Google
"The FFII was largely responsible for the rejection of the EU software patent directive in July 2005"

Ha-Ha-Ha

Mine was allowed by the EPO earlier this years without any citing of this...

You see, punky, as I said before, the fact than some significant part of an invention can be imoplemented in software (and pretty much everyhitng nowdays includes some software component) doesn't make it a "software patent" per se
[ link to this | view in thread ]
Jason, 5 Aug 2008 @ 10:32am

Re: Re: Re: Re: Re: Re: Re: poor Google
You are right, when some piece of software is part of a larger system (say the ABS brakes you used earlier), it isn't covered by a "Software Patent" since the system as a whole is patented. However, that's not the issue with the patent mentioned. The patent mentioned is strictly software, no other components. So, if you can show me how everything is fine with just software, please enlighten me.

Also, don't assume that EVERYTHING these days has software components. There are plenty of phones/watches/etc with no software whatsoever.
[ link to this | view in thread ]
The Mad (Patent) Prosecutor, 5 Aug 2008 @ 10:57am

Obviousness
To Mike et al.:

There seems to be some confusion regarding the standard for obviousness. While in some limited cases, a determination of obviousness does not require that all of the features be shown in the prior art, in most cases (and, in general, the strongest case for obviousness) involves multiple prior art references that, when combined, indeed do show each and every features recited in the claim, and the references further provide a teaching, suggestion, or motivation to combine the references to provide the claimed invention.
[ link to this | view in thread ]
Therapist, 5 Aug 2008 @ 11:03am

Re: Re: Re: poor Google
Angry dude,

Do you have some strange compulsion to stick the word "punk" into every comment? Do you have trouble with the English language? Are you such a "retarded punk" that you can't debate with substance so you do so with tragically poor style? Do you realize that people might actually take you seriously if you used reason in you arguments?

Since you seem to have trouble understanding any of my previous questions, I would like to kindly ask you to return to you branded community under a bridge like any self-respecting troll should.

Thank you,
Therapist
[ link to this | view in thread ]
MLS, 5 Aug 2008 @ 11:03am

Re: Re: Rejoinder
See #75 at:

http://techdirt.com/articles/20080711/0107111647.shtml

Read it, and feel free to ask me for any clarification. Once done, kindly refrain from further scurrilous attacks on my integrity. I may disagree with some points you make, but to my knowledge have never openly or impliedly accused you of dishonesty. I would appreciate reciprocal courtesy.

Re Professor Duffy's post at Patently-O, it was directed to those who deal with the USPTO and its ever changing policy concerning the standards to be applied by patent examiners when acting upon applications pertaining to methods and apparatus embodying what is colloqually referred to as "software". Perhaps the important aspect of his post was his comments noting that the USPTO is crafting and implementing policies that are unwarranted under controlling judicial precedent.

Your comments concerning "prior art" are incorrect. What constitutes prior art for purposes of determining if a claimed invention is patentable is defined in Sections 102 and 103 of Title 35. In the parlance of patent law, Section 102 is associated with "anticipation", and Section 103 is associated with "obviousness".
[ link to this | view in thread ]
Katie, 5 Aug 2008 @ 11:06am

3, 2, 1...
Wow, this comment thread didn't make it three posts before devolving into an idiotic flamewar.

@Jason:

That kind of depends on how you define "software", which is one of the major points of contention in the software patents fiasco. Is firmware software? It most certainly meets the definition the FFII gives.

In that case, you'd be hard-pressed to find an electronic device on the market today that doesn't contain software. Hard-wired ICs for watches have been extinct for about a decade. Practically every watch, radio, and waffle iron in existence today contains an eight-bit microcontroller running firmware from a ROM image, typically compiled from C or written directly in ZASM or TASM.

Those eight-bit micros are ubiquitous because they can perform any simple computation function and cost about $0.01 apiece when purchased in bulk, which is many orders of magnitude cheaper than fabbing your own ICs every time you make a new product.
[ link to this | view in thread ]
MLS, 5 Aug 2008 @ 11:08am

Re: Re: Re: Rejoinder
colloqually...should read...colloquially
[ link to this | view in thread ]
angry dude, 5 Aug 2008 @ 11:15am

Re: Re: Re: Re: poor Google
Ok therapist

from now on I will use the indefinite article "blya" when addressing you

k terapevtu blya
[ link to this | view in thread ]
Willton, 5 Aug 2008 @ 11:22am

Re: Re:
Really, Willton, as a law student, you should know that new and non-obvious are separate things. Prior art is only needed to prove that something was new. Non-obvious is different altogether.

I'm aware, but you need at least one piece of prior art to base your assertion that something is obvious. A bald assertion that something is obvious is not convincing.
[ link to this | view in thread ]
Willton, 5 Aug 2008 @ 11:25am

Re: Re: Re: Re:
Was it a 'bald assertion' when you told me computer programs weren't covered under copyright and that I was not an author ?

When did I say that computer programs wre not covered by copyright? You're making shit up.
[ link to this | view in thread ]
MLS, 5 Aug 2008 @ 11:28am

Re: Re: Re:
See 43 above. Should you choose to eventually practice patent law, a good habit to develop is to read 102 and 103 each time before preparing a response to an office action, a pleading, etc.
[ link to this | view in thread ]
Willton, 5 Aug 2008 @ 11:37am

Re: Re: Re: Re: Re:
Oh yes, you asked me to provide a quote of your nonsense ramblings.
"Mr. Eleete, I've seen your website, and it appears to me that you are a computer programmer, not an artist or an author. So I find it a bit disingenuous of you to make these bald assertions as if you would know what drives an author or an artist."
So clearly it is YOU who are making 'bald assertions' on this site. Not sure how you let that fact slip your mind, but you come off as quite arrogant about your point of view.

Have you seen your website? Nevermind the fact that the spelling and grammar of your website's text is deplorable and very unbecoming of one who claims to be an author; there's very little evidence of photography (1 measley photograph) or videography on your website, and there's no evidence of any works of authorship thereon either. I was basing my opinion off of your website, and if that's not evidence of your lack of authorship, then you've got some explaining to do.
[ link to this | view in thread ]
Mike (profile), 5 Aug 2008 @ 11:43am

Re: Obviousness

There seems to be some confusion regarding the standard for obviousness.

No, there's no confusion. The problem is with the current standard, as we've discussed for years. The patent office for years basically assumed that you needed prior art for obviousness. That's been pushed back (just slightly) by KSR, but not nearly far enough.

Obviousness and new are two different things. It's a shame that the patent office still refuses to recognize this.
[ link to this | view in thread ]
eleete, 5 Aug 2008 @ 11:45am

Re: Re: Re: Re: Re: Re:
and the question was asked...
Where is your website ?
[ link to this | view in thread ]
Willton, 5 Aug 2008 @ 11:47am

Re: Re: Re: Re:
See 43 above. Should you choose to eventually practice patent law, a good habit to develop is to read 102 and 103 each time before preparing a response to an office action, a pleading, etc.

My bad. I know that some 102 prior art is necessary to declare something obvious under 103. I guess I just didn't articulate it well.
[ link to this | view in thread ]
Mike (profile), 5 Aug 2008 @ 11:48am

Re: Re: Re: Rejoinder
Read it, and feel free to ask me for any clarification. Once done, kindly refrain from further scurrilous attacks on my integrity. I may disagree with some points you make, but to my knowledge have never openly or impliedly accused you of dishonesty. I would appreciate reciprocal courtesy.

MLS, on a near daily basis you accuse me of dishonest activities and/or immoral activities.

I have noted various inconsistencies in your claims, and pointed them out.

Re Professor Duffy's post at Patently-O, it was directed to those who deal with the USPTO and its ever changing policy concerning the standards to be applied by patent examiners when acting upon applications pertaining to methods and apparatus embodying what is colloqually referred to as "software".

Indeed, but as a part of that, he pretty clearly stated that Google would be hurt by the changing definition.

That was the only point I raised. And you still are not denying it. Instead, you talk about some totally unrelated point.

So, again, do you deny that Prof. Duffy was suggesting that Google would be harmed by getting rid of software patents? If not, then please apologize for suggesting that I was mistaken in pointing that out.

Your comments concerning "prior art" are incorrect. What constitutes prior art for purposes of determining if a claimed invention is patentable is defined in Sections 102 and 103 of Title 35. In the parlance of patent law, Section 102 is associated with "anticipation", and Section 103 is associated with "obviousness".

Again, as I pointed out to MPP, I have a serious problem (and have, for many years) with the way the USPTO judges obviousness. They have merged it with "new" such that they do require prior art -- but that's not correct and it's not the way the system was supposed to function.
[ link to this | view in thread ]
Willton, 5 Aug 2008 @ 11:52am

Re: Re: Obviousness
No, there's no confusion. The problem is with the current standard, as we've discussed for years. The patent office for years basically assumed that you needed prior art for obviousness. That's been pushed back (just slightly) by KSR, but not nearly far enough.

Obviousness and new are two different things. It's a shame that the patent office still refuses to recognize this.

Read the statute, Mike. 35 U.S.C. 103 states:

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

So yes, prior art is necessary as a matter of law in order to declare something obvious. KSR does not dispute that in the slightest.

Next time you want to show off how much you know about patent law, make sure you actually know the law.
[ link to this | view in thread ]
Willton, 5 Aug 2008 @ 11:56am

Re: Re: Re: Re: Rejoinder
Again, as I pointed out to MPP, I have a serious problem (and have, for many years) with the way the USPTO judges obviousness. They have merged it with "new" such that they do require prior art -- but that's not correct and it's not the way the system was supposed to function.

See my post above quoting 35 U.S.C. 103. Mike, if the law did not intend for prior art to be required in determining obviousness, then it would not have been written that way. Your assertion on how the the system was supposed to function is entirely wrong.
[ link to this | view in thread ]
The Mad (Patent) Prosecutor, 5 Aug 2008 @ 12:00pm

Re: Re: Obviousness
Mike:

While I agree that there is a problem with the standard for obviousness, I doubt I mean it the same way as you. I think the so-called "TSM" test was better law, and better policy. KSR is, of course, an exception to the general rule that the prior art must disclose all the features of the claims (and why I stated "in most cases). That being said, I believe that the bar for patentability should be lowered (at least requiring "TSM").

Although this is not legal advice, this is how one generally proceeds when infringement is asserted (I think this is important to keep in mind, because it demonstrates that the accusation need not put someone out of business). The "infringer" has a non-infringement/invalidity opinion prepared. It costs a few thousand dollars, but uncovers the best prior art that was not found during prosecution of the application. At the point, the "infringer" is free to continue infringing, since the "infringer" knows (and will so communicate to the patentee) that the patent is worthless because there is all this 102/103 prior art.

Without going into further details, I believe the point is made - the issuance of an overbroad patent is not the end of the world. The "infringer" has to spend a few dollars, but in the end the "infringer" can still continue to do what they do, secure in the knowledge that the patent is invalid.
[ link to this | view in thread ]
MLS, 5 Aug 2008 @ 12:27pm

Re: Re: Re: Re: Rejoinder
"MLS, on a near daily basis you accuse me of dishonest activities and/or immoral activities."

Perhaps you may have interpreted comments that way, but it has never been my intent to in any manner suggest or imply dishonesty on your part. I have raised "moral" and "ethical" issues, but in those situations they were directed to others in the context of seeing nothing wrong with knowingly securing and using unauthorized content.

"So, again, do you deny that Prof. Duffy was suggesting that Google would be harmed by getting rid of software patents?"

Professor Duffy did not express an opinion on whether or not Google would be harmed. His reference to Google was to take one of its better known patents, set out its broadest claim, and then analyze that claim against case law and USPTO policy. It was used merely as an example to help the reader better understand the issues associated with USPTO policy. You use examples to illustrate points you are making. I see no reason to deny Professor Duffy the same opportunity (as well as anyone else for that matter).

Regarding what constitutes "prior art", it is important to realize that it embraces far more than merely printed publications. Use of an invention, offering to sell or actually selling an invention, and various other acts that most certainly are not printed publications are all pertinent. Where I believe you may be confused is the jurisprudence associated with implementing the "obviousness" standard set forth in Section 103. Printed publications have never been the sole criteria by which obviousness can be established. They certainly have been and still are very compelling ones, but there are numerous other means at hand, as the CAFC has consistently noted.
[ link to this | view in thread ]
Actual Inventor, 5 Aug 2008 @ 12:54pm

Re: Rejoinder
I love the way Mike seems to blend the years together in his mind.(my guess is that he would attribute it to his economic training and the time space continuum) I often wonder what was/is obvious to him at any giving time. I recently challenged him to stop the patent process by publishing a paper on what will be happening next that is obvious, since because it is obvious...it should be easy. Still waiting for his paper. The use of search for advertising...and the existence of Google in 1996 were non-existent...except for the obvious exception of the company that filed this patent.
[ link to this | view in thread ]
MLS, 5 Aug 2008 @ 1:38pm

Re: Re: Rejoinder
People keep talking about prior art, when what is really required is evidence of prior art. A printed document that can be authenticated is very good evidence. A written offer to sell that is likewise authenticated is likewise pretty good evidence that the "on sale" provision of 102 might pertain. What is not evidence, however, is an opinion or recollection that is not backed up by anything other than "in my opinion" or "I recollect".

Everything is obvious once the solution is provided, unless, of course, one subscribes to the long-ago discredited "flash of genius" test.

You are right on point noting that novelty and obviousness are determined at the time an invention is created, and not at some later date. If this patent is as "obvious" as some seem to believe, then it should not be particularly difficult to demonstrate why this is so.

As Cuba Gooding said in "Jerry MacGuire"..."Show me the money!" It applies with equal force here, substituting "evidence" for "money".
[ link to this | view in thread ]
Mike (profile), 5 Aug 2008 @ 2:17pm

Re: Re: Re: Obviousness
Read the statute, Mike. 35 U.S.C. 103 states:

I'm familiar with the statute, Willton, though it's always nice of you to patronize.

So yes, prior art is necessary as a matter of law in order to declare something obvious. KSR does not dispute that in the slightest.

Yes, the law is wrong and the interpretation of the law is wrong. It's one of the biggest problems with the patent system today in fact.

This failure to actually look at obviousness and to only focus on prior art is a travesty. It's why so many bad patents get approved.

Next time you want to show off how much you know about patent law, make sure you actually know the law.

Again, this is not about what the law specifically says, but the overall purpose of the patent system -- which is to approve only patents on inventions that are new AND non-obvious. It's a mistake of law that the two have been merged.
[ link to this | view in thread ]
Willton, 5 Aug 2008 @ 2:57pm

Re: Re: Re: Re: Obviousness
Yes, the law is wrong and the interpretation of the law is wrong. It's one of the biggest problems with the patent system today in fact.

Huh? Wait, you're saying that the law, as written, is wrong? I could understand you saying the law is bad or ill-conceived, but wrong? Then you say the interpretation of the law is wrong? So, according to you, we have the wrong interpretation of a wrong law?

Are you feeling alright?

This failure to actually look at obviousness and to only focus on prior art is a travesty. It's why so many bad patents get approved.

Mike, if you're going to declare something as obvious, you have to have a basis upon which to declare it. Prior art serves as such a basis upon which to decide obviousness, as something can only be obvious based upon what is already known in the art, i.e. prior art. You can't say something is obvious without any substance to stand on. The law can't be as nebulous as "it's obvious because it's obvious"; such a standard would be unworkable.

I'm curious: what do you think should be the standard for obviousness? If using prior art as a basis for declaring obviousness is "a travesty," then what would you have the standard be?

Again, this is not about what the law specifically says, but the overall purpose of the patent system -- which is to approve only patents on inventions that are new AND non-obvious. It's a mistake of law that the two have been merged.

But they haven't been merged. Prior art is only used in an obviousness analysis in order to determine what was known at the time of the invention. From there, one determines what would be obvious to one skilled in the art, given the state of the art. If you don't use the state of the art at the time the invention was made as a starting point for obviousness, then obviousness loses its meaning.
[ link to this | view in thread ]
Mike (profile), 5 Aug 2008 @ 3:09pm

Re: Re: Re: Re: Re: Obviousness
I'm curious: what do you think should be the standard for obviousness? If using prior art as a basis for declaring obviousness is "a travesty," then what would you have the standard be?

I've explained before (multiple times):

(1) Peer review from those skilled in the art.
(2) Independent invention as proof of obviousness.
[ link to this | view in thread ]
MLS, 5 Aug 2008 @ 3:11pm

Re: Re: Re: Re: Obviousness
"Again, this is not about what the law specifically says, but the overall purpose of the patent system -- which is to approve only patents on inventions that are new AND non-obvious. It's a mistake of law that the two have been merged."

In its most basic sense patent law requires that a claimed invention be "useful", it has to be "new" (determined by the numerous factors specified in Section 102), and, even if "new" under Section 102, it must also be "non-obvious" per the additional requirement stated in Section 103. Importantly, Sections 102 and 103 have not been merged. To the contrary, each is a requirement that must be satisfied before a patent on a claimed invention can issue.

The need to satisfy both the "new" and "non-obvious" requirements has been around since the Supreme Court's decision in 1850 in the matter of Hotchkiss v. Greenwood.
[ link to this | view in thread ]
MLS, 5 Aug 2008 @ 3:31pm

Re: Re: Re: Re: Re: Re: Obviousness
"(1) Peer review from those skilled in the art."

This is what the USPTO is supposed to be doing, and is one of the reasons why some have referred to the Patent Reform Act of 2006 House and Senate bills as being "deform", and not "reform". Many of the "problems" associated with patents can be directly traced to USPTO management.

"(2) Independent invention as proof of obviousness."

This has always been one of the many factors considered when measuring a claimed invention against Section 103.
[ link to this | view in thread ]
Willton, 5 Aug 2008 @ 4:17pm

Re: Re: Re: Re: Re: Re: Obviousness
I've explained before (multiple times):

(1) Peer review from those skilled in the art.

That's the whole idea behind the Patent Office.

(2) Independent invention as proof of obviousness.

That's it? Hell, non-obviousness jurisprudence is far more searching than that. If obviousness is only to be found on such a narrow criteria, something tells me that more patents would be allowed under this test for obviousness than the current one. (By the way, how does one prove independent invention?)

This seems like a pretty limited test, considering it comes from a guy who abhors patents.
[ link to this | view in thread ]
LTDLP, 5 Aug 2008 @ 5:20pm

Rationalize all you want ...
but it does not change the fact that these patent lawsuits are becoming absolutely ridiculous.

And, it is quite obvious to the casual observer that the costs incurred are passed on to the consumer.

Yeah ! Way to go you little guy inventors.
[ link to this | view in thread ]
MLS, 5 Aug 2008 @ 5:51pm

Re: Rationalize all you want ...
I wonder what litigation cost in Sybaris circa 500 B.C. if someone infringed a patented cooking recipe (rounded up to current $$, of course).
[ link to this | view in thread ]
eleete, 5 Aug 2008 @ 5:59pm

Re: Re: Re: Re: Re: Re:
First off, you never once mention grammar or spelling as reason for your 'bald assertion'. Second, Regardless of the reasons you site, I am still afforded copyright protection. There are no 'Willton' tests to see if you like the content before it is protected. People can read for themselves what you said. You were wrong and cannot admit it, but that's ok. We all sense that.
[ link to this | view in thread ]
Mike (profile), 5 Aug 2008 @ 7:09pm

Re: Re: Re: Re: Re: Re: Re: Obviousness
This is what the USPTO is supposed to be doing, and is one of the reasons why some have referred to the Patent Reform Act of 2006 House and Senate bills as being "deform", and not "reform". Many of the "problems" associated with patents can be directly traced to USPTO management.

Huh? What does that have to do with peer review by those actually skilled in the art?

This has always been one of the many factors considered when measuring a claimed invention against Section 103.

Um. No, it has not. It's rarely considered. In fact, I'm working on another post about it, discussing a recent "revelation" from some lawyers that this was even possible.
[ link to this | view in thread ]
Mike (profile), 5 Aug 2008 @ 7:13pm

Re: Re: Re: Re: Re: Re: Re: Obviousness
That's the whole idea behind the Patent Office.

Um, no, clearly it is not. Otherwise, the USPTO would call in real experts or allow experts in the field to weigh in on the obviousness of patents.

It does not.

That's it?

No. I said I would like that added.

Hell, non-obviousness jurisprudence is far more searching than that.

If that were true, then we wouldn't have so many obvious patents. It's been shown repeatedly that much of the test is simply looking for prior art and that's all. Prior art, though, is not obviousness.

If obviousness is only to be found on such a narrow criteria, something tells me that more patents would be allowed under this test for obviousness than the current one.

We just had this discussion, but historical evidence suggests the opposite. That nearly all patents would be disqualified under this standard. It's quite rare that someone invents something that no one else is inventing at the same time.

This seems like a pretty limited test, considering it comes from a guy who abhors patents.

Please. It's not "hate." I only care about one thing here: what's best for innovation. If patents are the solution, I'm all for it. To date, there is no evidence that patents help innovation.

Emotion has nothing to do with it. It's not hatred, it's simply understanding the facts.

If you want to be emotionally tied up in things, that would be your problem.

And, as for it being a pretty "limited" test, if it works in allowing for innovation, what's not to like?
[ link to this | view in thread ]
angry dude, 5 Aug 2008 @ 8:05pm

Re: Rationalize all you want ...
"the costs incurred are passed on to the consumer"

Then we must be all very very rich, I mean all of us, independent inventors with useful patented inventions used by the industry...

Right, little techdirt lemming punk ?
[ link to this | view in thread ]
MLS, 5 Aug 2008 @ 9:13pm

Re: Re: Re: Re: Re: Re: Re: Re: Obviousness
"Huh? What does that have to do with peer review by those actually skilled in the art?"

Based upon what I have read as your comments in another post, it seems that your opinion re review is that it should be conducted by persons having extraordinary skill in the art. Of course, this begs numerous questions that are best left for another discussion. It should be noted, however, that the test prescribed by US law is based upon one having ordinary skill in the art to which an invention relates, and not to one involving a person(s) having extraordinary skill over a broad expanse of technical disciplines.

"Um. No, it has not. It's rarely considered. In fact, I'm working on another post about it, discussing a recent "revelation" from some lawyers that this was even possible."

I look forward to your "revelation", though it is likely that I have already read it. As I have repeatedly stated, I do keep up with case law, journal articles, etc.

Moreover, "revelations" arise in this field of law all the time, though in the majority of instances those of us who have practiced for many, many years read, and long ago recognized the associated issues, and possibly even wrote, about them many years ago. It is a fact of life within the legal profession that in relative newcomers who have discovered such "revelations" are typically parroting a subject that was addressed many years before.

BTW, CCPA and CAFC caselaw long ago recognized that "simultaneous invention" can have, depending upon circumstances, probative value concerning the ordinary level of skill in an art. This is hardly a newly discovered issue.
[ link to this | view in thread ]
Anonymous Coward, 6 Aug 2008 @ 12:18am

Re: Re: Re: Re: Re: Re: Re:
and the question was asked...
Where is your website ?
(sound of crickets)
[ link to this | view in thread ]
eleete, 6 Aug 2008 @ 4:29am

Re: Re: Re: Re: Re: Re: Re: Re:
2nd time the question was asked and the same sound.
[ link to this | view in thread ]
Anonymous Coward, 6 Aug 2008 @ 5:30am

Re: Re: Re: Re: Re: Rejoinder
Regarding what constitutes "prior art", it is important to realize that it embraces far more than merely printed publications. Use of an invention, offering to sell or actually selling an invention, and various other acts that most certainly are not printed publications are all pertinent.
I'm curious, can you give some examples of how the patent office is currently using undocumented prior art?
[ link to this | view in thread ]
Anonymous Coward, 6 Aug 2008 @ 5:39am

Re: Re: Re: Re: Re: Obviousness
MLS and Willton seem to be citing various laws to argue that what patent attorneys and their clients have been doing is "legal". That seems to be somewhat of a strawman argument to me as don't think that most people would disagree with that. However, that does absolutely nothing to show that the patent system is beneficial overall. Just because something is legal doesn't mean that the law doesn't need to be changed.
[ link to this | view in thread ]
ZZ, 6 Aug 2008 @ 6:54am

MLS, Willton, Prosecutor, et al.
Thanks so much for pointing out how broken the patent system is by arguing how ridiculous patents such as the one in this article are perfectly legal. I think Mike just got you to make his point for him.
[ link to this | view in thread ]
MLS, 6 Aug 2008 @ 9:37am

Re: Re: Re: Re: Re: Re: Rejoinder
An example of a patent that was invalidated for reasons other than published technical papers can be found at:

http://www.law.cornell.edu/supct/pdf/97-1130P.ZO

In that case the patent was invalidated on the basis that the patented invention had been placed on sale by the inventor more than one year before filing his/her patent application.

US law provides a one (1) year window from the time an item is placed on sale to file a patent application. In this case the patentee filed a few days after the one year window closed.

There are many, many other examples, but this is one that quickly came to mind.
[ link to this | view in thread ]
Ronald J Riley (profile), 18 Aug 2008 @ 10:46am

Google Reaps What They Sow
Has it occurred to anyone that Google is getting sued because they have a big appetite for other's patent property and a big ego that gets in the way of acquiring the rights to the patent properties they need to succeed in the market?

Have you considered that Google gets sued after they have refused a legitimate offer for a license?

Or have you considered that Google's membership in the Coalition for Patent fairness and PIRACY, aka. the Piracy Coalition is a good indication that birds of a feather do flock together?

Google claims to not do evil, but the inventor community is seeing an evil side of Google!

1) They run large quantities of invention promotion ads for companies who are at best useless and at worst are frauds.

2) They force inventors to sue in order to get fair compensation for their patent properties.

Some companies start as inventors, and some start as parasites on those who have invented. Eventually they end up alike, one group never being inventive and the second losing the ability to invent as they age. Both will try to substitute quantity in patent filing for the quality of inventions they are incapable of producing. It does not work.

All Piracy Coalition members fit one of these profiles. Tech companies who are past their prime, insurance and banking collectively have no shame!

What they very good at producing is innovate media hype which obfuscates the reality of their existence. Their multi-million dollar “troll” campaign is a perfect example of this. They paint their victims as “trolls” while the courts are finding their conduct so egregious that they are handing down staggering judgments which are generally being upheld by higher courts. This is what happens to those who are caught lying, cheating, and stealing and no amount of public relations painting their victims as evil “trolls” can change the facts of these cases.

Personally I think that it is a shame that Piracy Coalition members have failed to learn the lesson that inventors and the courts are teaching. It is all about conducting one’s business in an ethical manner!

Ronald J. Riley,

Speaking only on my own behalf.
Affiliations:
President - www.PIAUSA.org - RJR at PIAUSA.org
Executive Director - www.InventorEd.org - RJR at InvEd.org
Senior Fellow - www.patentPolicy.org
President - Alliance for American Innovation
Caretaker of Intellectual Property Creators on behalf of deceased founder Paul Heckel
Washington, DC
[ link to this | view in thread ]
DanC, 19 Aug 2008 @ 10:54pm

Re: Google Reaps What They Sow
Has it occurred to anyone that Google is getting sued because they have a big appetite for other's patent property and a big ego that gets in the way of acquiring the rights to the patent properties they need to succeed in the market?

Has it occurred to you that not every individual or small company that sues for patent infringement has a valid case? Or a valid patent for that matter?

Every time you comment on a patent case, you automatically assume guilt, apparently without actually bothering to investigate the patent in question. You also make baseless accusations such as this one:

They force inventors to sue in order to get fair compensation for their patent properties.

Have any evidence? Or, as per usual, do you automatically assume that anyone suing a big company for patent infringement is in the right?
[ link to this | view in thread ]