Appeals Court Finds Patent On Electronic Catalog Obvious... Tosses Out Multimillion Dollar Award Against Hyundai

from the it-took-this-long? dept

Well, well. Two years ago, we wrote about a patent held by Erich Spangenberg, a notorious patent hoarder who is involved in a ton of lawsuits against companies who actually make stuff, attacked with highly questionable patents. The patent in question (5,367,627) basically described an electronic parts catalog, which Spangenberg used to sue tons of companies. The absolute ridiculousness of the patent even got the EFF's attention after the USPTO agreed to re-examine that patent (though, a quick look through the USPTO's system doesn't seem to show anything actually happening with the re-exam -- unless I'm missing something... which is entirely possible).

That said, one of Spangenberg's many lawsuits over this patent, done by a shell company called Orion IP or, later, Clear with Computers, was against Hyundai. A jury sided with Spangenberg over Hyundai, and Hyundai appealed. After all that effort, the Federal Circuit has dumped the original ruling, noting that the "invention" (if you can call it that) was "anticipated" by earlier inventions. But, honestly, if you want to get a deeper sense of just how messed up the patent system is, you should read the full ruling:

What gets me is the pure absurdity of the whole thing. First of all, this is an electronic catalog. The argument that this should be patentable never should have passed the laugh test. But, it gets even more ridiculous. When Hyundai points to an electronic parts catalog system that pre-dated this patent, the response from the patent holder was that this invention was different because not only was it a catalog but... it also created a customer proposal. Well, knock me down and sign me up for a 17-year-monopoly. I'm sure no one could have possibly come up with the idea for using an electronic catalog to create a customer proposal without such an incentive... Thankfully, the court found that the important claims in the patent were anticipated by the other product, but just the fact that they had to go through this ridiculous process should raise serious questions about the patent system.

Filed Under: electronic catalog, erich spangenberg, obviousness, patents
Companies: clear with computers, hyundai, orion ip

Could You Save Software Patents With A Special Team Of 'Obviousness' Developers?

from the that's-one-idea dept

In the past when discussing different ways to potentially improve the patent system, I've pointed out that one of the key points in determining whether or not something is patent worthy is supposedly whether or not the invention would be "non-obvious" to a "person having ordinary skill in the art." And, yet, at no point in the patent review process does the average examiner -- who quite often does not have ordinary skill in the art -- ever go out and ask those who do. That always troubled me. So, I thought one (of quite a few) useful improvements to the system would be to let patent examiners call on certain folks who work in various fields. Now, this wouldn't be to have that person give a total thumbs up or thumbs down on the patent. That would still be reserved for the examiner. But, at least hear some knowledgeable people out on whether or not the idea is obvious.

Stephen Burch has sent over a blog post he did with possible ways to improve the quality and utility of software patents, which has a similar, but slightly different take, that could conceivably be more effective. It would involve seeing if skilled programmers, given the general problem, could explain a similar method of solving the problem:

The patent office should create a pool of programmers and keep a database of their related skills. When a software patent is submitted, the patent office searches the database for programmers with skills in those related areas, then selects three to five programmers to perform the blind study. The study would involve giving the selected programmers the problem that the patent seeks to solve and some amount of time (24-48 hours or varying based on complexity) to outline or pseudo-code a solution. If none of the selected programmers are able to determine the solution described in the patent, then the non-obvious prong of the patent would be met. This would prevent patents that do obvious things with new technologies from being granted.

Take Apple for example. Apple creates some new technology, say a touch-screen smart phone, that is rightfully protected by patents. Then it goes on to patent the software that interfaces with this technology. The problem with these second patents is that they are obvious. Apple has basically patented doing something with a finger on a touch-screen that people have been doing for years with a mouse on standard computers. I don't believe that just because the technology is patentable, various ways of interfacing with that technology are de facto patentable. A proposed blind study approach, using programmers willing to work for free just to ensure the quality of software patents, would prevent such obvious patents from being granted.

This might be worth an experiment, but I wonder how well it would work in practice. It would seem like a big commitment on the part of participating software developers who (one assumes) already have jobs. In some sense, it goes back to the problem of software patents simply not scaling. Still, it seemed like an idea worth tossing out there for discussion.

By the way, that post is actually the fourth in a series of posts that Stephen wrote on software patents. The first three seemed more like background posts, but if you want to see them, there's an introductory post followed by a post on the effect of software patents on innovation and another post on that same subject, all leading up to his suggestions for potentially saving some forms of software patents. It's also worth noting that the suggestion above is not his only suggestion. He also combines it with a shorter duration for software patents. As I said, I'm not convinced it would work, but it's a different sort of idea that seemed worth discussing.

Filed Under: obviousness, patents, software

The Economist Notices That The Patent System Is Hindering Innovation And Needs To Be Fixed

from the wow dept

A whole bunch of you are sending in one of the first mainstream articles I've seen on patents that gets almost (but not quite) everything right. The Economist has a wonderful piece that clearly explains why patents are hindering, rather than helping innovation. It notes the difference between innovation and invention -- and how patents quite often can hinder the former. It discusses how patent thickets get in the way of innovation, and the focus on using patents to force through massive cross-licensing deals simply adds transaction costs and reduces efficiency in the market. The solution to all of this put forth by the Economist is mostly the same thing we've been suggesting for years: bring back a real test for "obviousness" that gets rid of obvious patents -- though, it falls short in not suggesting an independent invention test for obviousness. The only other areas where I'd say the Economist article falls short is (1) simply assuming that patents do work in pharma and biotech -- when there's evidence that's not true, (2) assuming that a ruling in Bilski alone might clear up the obviousness issue and, finally, (3) its parting suggestion that programmers focus on copyright monopolies, rather than patents. Still, it's about as good a piece on this subject as you might expect to see in such a mainstream publication.

Filed Under: economist, innovation, invention, obviousness, patent system, patents

Spamming Patent Tossed Out As Obvious

from the is-that-good-or-bad? dept

Slashdot points us to the news that a patent (6,631,400 -- which appears to be incorrectly titled "Statement regarding federally sponsored research or development.") on managing spamming efforts has been tossed out as obvious by the federal circuit, following a similar ruling at the lower level.

What's most interesting here is that while some of the steps were thrown out due to prior art, the final step was tossed out due to "common sense." This is important. For quite some time, the courts seemed to insist that obviousness could only be proven through prior art. But something can be both obvious and new. In fact, the patent law has been clear that patents are supposed to be for things that are both new and non-obvious to those skilled in the art, but the question of obviousness was rarely discussed, as everyone just focused on the "newness." That's finally been changing, in large part due to the Supreme Court's KSR ruling that reminded people that obviousness is important, and that it's separate from newness. Since then, both examiners and the courts seem willing to put a bit more common sense into determining obviousness, and that's absolutely a good thing.

Of course, some of you might feel that having a patent on a spamming technique is a good thing, since it could be used to prevent others from spamming, but that didn't seem to be happening anyway, so let's just be happy that a bad patent has been rejected.

Filed Under: ksr, obviousness, patents, spam

Calling For An Independent Invention Defense In Patents

from the an-idea-who's-time-has-come dept

For quite some time we've wondered why there's no independent invention defense to patent infringement. It's hard to come up with any justifiable reason for not only barring those who come up with an idea on their own from making use of such an invention, but also for potentially making them liable for millions of dollars in damages for just making use of something they came up with on their own. For years, I've been waiting to hear any justification for this -- either economic or moral -- and I've never heard anything that makes any sense at all. Patent attorney Stephan Kinsella has now written up a post that also calls for an independent inventor defense, noting how incredibly rare it is for a client to ever have actually been accused of copying an idea. He notes that about the only reason most are against this idea is that they realize it would put a lot of patent lawyers out of work.

Filed Under: defense, independent invention, obviousness, patents

EFF Looks To Bust Bogus Podcasting Patent; Needs Prior Art

from the help-'em-out dept

Back in July, we wrote about how a company named Volomedia had gleefully announced that it had patented podcasting. The patent itself (7,568,213) seemed ridiculously broad, obvious and covered by prior art. On top of that, it was difficult to see how it passed the current (though, perhaps not for long) "Bilski" test for what can be patented.

It looks like the EFF has decided to be proactive about this and is looking for prior art with which to bust this particular patent. In the comments on our original post about this, reader Marcel de Jong, noted that Dave Winer described audio enclosures for RSS in a blog post in January of 2001 -- nearly three years before this patent was filed. Hopefully that is rather compelling prior art, but if anyone has any more info, please send it over to the EFF.

Filed Under: obviousness, patents, podcasting, prior art
Companies: eff, volomedia

Just Because Something's New Doesn't Mean It's Not Obvious

from the bingo dept

I've been meaning to publish a series of posts on the problems with the current attempts at patent reform that I hope to get to soon, but the punchline to it is that the real problem with the patent system is that it does a terrible job evaluating "obviousness." The various attempts at reform don't deal with this issue at all, and thus the problems will continue. While things have become a little better due to the Supreme Court's Teleflex ruling, which changed the standard for "obviousness" on certain patents, it's still a major problem. Patents are only supposed to be awarded on things that are new and non-obvious to those skilled in the art. But, for years, the "non-obvious" part has basically been ignored in favor of the "new." That's because all the Patent Office looks at is "prior art." I've had discussions with people in the comments who insist this makes perfect sense (most of these people are lawyers). The problem, though, is that just because something is new doesn't mean it's not obvious. It could just be a natural progression or maybe it's just an implementation that someone finally got around to doing.

However, Tim Lee and Julian Sanchez got into a discussion about the recent injunction against Microsoft Word over a blatantly obvious patent, and Julian did a great job explaining why obviousness and newness are different and why explaining obviousness can be so difficult. The argument is that since it's so difficult to explain obviousness, patent examiners just don't bother, and instead focus on the "newness" part:

The problem is that if an applicant wants to appeal, the examiner, who may well be a programmer, has to defend his subjective judgment of what's "obvious" with some kind of explicit argument. And the result (says Tim) is that in practice the "non-obviousness" requirement has been largely conflated with a review of the "prior art" or previous related inventions. The upshot is that unless someone else has done almost exactly the same thing before, you've got a good shot at getting the patent. Maybe this is motivated by a version of the no-five-dollar-bills-on-the-sidewalk fallacy in economics: If nobody has done it before, it can't have been all that obvious. But, of course, in a rapidly evolving area of technology, someone's always going to be the first to do something obvious.

I think the source of the problem in the patent system may be linked to a point Friedrich Hayek made long ago about our tendency to overrate the economic importance of theoretical knowledge and vastly underestimate the importance of tacit or practical knowledge. The non-obviousness requirement, tied to the standard of an observer skilled in the appropriate art, is supposed to make the patent system sensitive to this kind of knowledge. But if examiners have to defend their judgments of obviousness, they're essentially being required to translate their tacit knowledge into explicit knowledge--to turn an inarticulate knack into a formal set of rules or steps. And Hayek's point was that this is often going to be difficult, if not impossible. Just as a loose analogy, consider that in the Principia Mathematica, Bertrand Russell and A.N. Whitehead's attempt to provide a rigorous, formalized basis for ordinary arithmetic, it takes several hundred pages to strictly establish the proposition "1+1=2." It takes a fairly advanced mathematical education to understand the explicit elaboration of a practice (counting, adding) that we expect most children to master.

If you ask me how I knew the way to go about writing the translation program in question, I'm not sure I could tell you--just as we sometimes find ourselves at a loss when we're asked to give explicit directions for a route we know by heart. Things that are "obvious" are often the hardest to explain or articulate explicitly, precisely because we're so accustomed to apprehending them by an unconscious (and possibly itself quite dizzyingly complicated) process. The very term "obvious" comes from the Latin obviam for "in the way"--that is, right in front of you, where you can't help but see it. Except the visual processing system we "use" automatically is vastly more sophisticated than what we're (thus far) capable of designing. If you had to describe explicitly the unconscious process by which you see what's right in front of you, it wouldn't seem "obvious" at all. The same, I expect, goes for the knack of knowing how to go about solving a particular problem in coding or engineering--with the result that the patent system systematically undervalues the tacit knowledge embedded in those skill sets until it's embedded in a piece of "prior art." So knowledge that's widespread but implicit and inarticulate is routinely mistaken for the kind of innovation it's necessary to incentivize with a monopoly grant. In effect, the hidden value of dispersed tacit knowledge is redistributed to the first person to render it explicit.

That's about the best description of why prior art is not the best test for obviousness that I've ever seen. Brilliant. But, if that's the case, how could you test obviousness? I've always believed that the test is actually laid out directly in the law itself. If it's supposed to be whether or not the invention is non-obvious to those skilled in the art, you should ask those skilled in the art. You could still have an examiner who would be in charge of weighing what those people say, but if they all explain how or why something appears to be obvious to them, that should be a pretty big clue that there's a problem. The idea that this would lead to people lying about something being obvious (or believing it's obvious in retrospect) has mostly been debunked. It turns out that people aren't quite as dishonest as some patent attorneys believe.

Filed Under: explicit knowledge, obviousness, patents, prior art, tacit knowledge

Company Claims Patent On Pretty Much All Podcasting

from the this-ought-to-be-fun dept

VoloMedia, an online ad tools company, is gleefully declaring that it has been awarded a patent on podcasting. The specific patent, 7,568,213, is for a "Method for providing episodic media content." Not surprisingly, it's a continuation patent (sometimes referred to as a submarine patent) where the claims are changed over time to keep current with what's happening in the market. The patent itself is short, with the main claim being:

A method for providing episodic media, the method comprising: providing a user with access to a channel dedicated to episodic media, wherein the episodic media provided over the channel is pre-defined into one or more episodes by a remote publisher of the episodic media; receiving a subscription request to the channel dedicated to the episodic media from the user; automatically downloading updated episodic media associated with the channel dedicated to the episodic media to a computing device associated with the user in accordance with the subscription request upon availability of the updated episodic media, the automatic download occurring without further user interaction; and providing the user with: an indication of a maximum available channel depth, the channel depth indicating a size of episodic media yet to be downloaded from the channel and size of episodic media already downloaded from the channel, the channel depth being specified in playtime or storage resources, and the ability to modify the channel depth by deleting selected episodic media content, thereby overriding the previously configured channel depth.

I have a lot of trouble understanding how this is possibly patentable. I would think that Dave Winer's work on enclosures for audio content in RSS would be seen as significant prior art. Beyond just the prior art, you have to wonder how this passes the "bilski" test (what was transformed here?) or the KSR/Teleflex test on obviousness (this is simply combining things that were already out there). Still, expect plenty of trouble here. Considering that Volo wasted no time at all in rushing out a press release, expect them to be aggressive with this patent -- without realizing that it may be unleashing significant anger from the podcasting community that it probably doesn't want.

Filed Under: obviousness, patents, podcasting, prior art
Companies: volomedia

Peer-To-Patent Quietly Shuts Down

from the and-no-one-notices... dept

While I'm certainly a big fan of involving more people in the process of reviewing patents, I've been a huge skeptic of the "Peer-to-Patent" program that the USPTO tested over the past few years. As I noted earlier, there's very little incentive for most people to actually get involved in peer reviewing a patent that early on. It's only much later when the patent actually becomes an issue (i.e., someone is asserting it somehow) that it really becomes an issue (especially when they're claiming it covers something that appears to be totally unrelated). However, there were many who promoted peer-to-patent as some sort of savior of the patent system.

And yet... the entire program apparently shut down last month and almost no one noticed (thanks to Eric Goldman for sending this over). They claim that the program is being "reviewed," but no more patents are being accepted into the program, and the few that are already in are expected to be finished in the next few months.

Again, having multiple people look in on patents is a good idea, but the setup of this particular program was incredibly flawed from the very start. There wasn't much incentive to participate from either end, and so the program didn't go very far or come up with very much useful. Also, it focused too much on "prior art" as an indicator of "obviousness" when the two are separate things (though, they may be related). It's great that the USPTO was open to experiments on improving patent quality, but this one never seemed to have much going for it.

Filed Under: obviousness, patents, peer to patent, prior art

Discovery Channel Sues Amazon Over Ebook Patent

from the aren't-patents-great? dept

Because it's quite obvious that no one would ever have come up with copy protection on an ebook reader without the Discovery Channel's CEO coming up with this patent, the entertainment company has now sued Amazon.com for patent infringement, claiming that the Kindle infringes on the patent. Of course, Amazon could avoid all of this if it hadn't put DRM on the Kindle... but then how would it use the DMCA to block interoperability? In the meantime, is Discovery Communications so hard up these days that it needs to sue companies in entirely different businesses over a patent on a concept in a field it's not even close to being in? In the meantime, perhaps some patent attorneys could weigh in, but reading through the claims on the patent, I'm wondering how this patent is valid in a post-KSR/Teleflex world, which supposedly noted that patents that simply combined two obvious ideas should be obvious as well. The patent in question certainly looks like "DRM + ebooks," both of which were rather well-known and widely discussed at the time the patent was filed.

Filed Under: ebooks, kindle, obviousness, patents
Companies: amazon, discovery communications