Stupid Patent Of The Month: Bad Patent Goes Down Using Procedures At Patent Office Threatened By Supreme Court Case

from the ipr-ftw dept

At the height of the first dot-com bubble, many patent applications were filed that took common ideas and put them on the Internet. This month's stupid patent, U.S. Patent No. 6,738,155 ("the '155 patent"), is a good example of that trend.

The patent is titled "System and method of providing publishing and printing services via a communications network." Generally, it relates to a "printing and publishing system" that provides "workflow services...using a communication network." The original application was filed in 1999, and the patent issued in 2004.

The '155 patent has a significant litigation history. Starting in 2013, its owner1 CTP Innovations, LLC, filed over 50 lawsuits alleging infringement, and told a court it intended to file as many as 200 additional cases. CTP claimed [PDF] that infringement of its patent was "ubiquitous" by the printing and graphic communications industry.

In response to CTP's claims of infringement, several defendants challenged the patent at the Patent Office, using a procedure called "inter partes review" (or "IPR" for short). The IPR procedure allows third parties to argue to the Patent Office that a patent shouldn't have been granted because what was claimed in the patent was either known or obvious (two requirements for being awarded a patent) at the time it was allegedly invented. The challenger presents what's called "prior art," that is, material known to the public before the alleged invention. The challenger uses the prior art to show that the patent's claims weren't new or non-obvious when the application was filed. A patent owner is then given the chance to show why they are entitled to a patent.

Here is claim 10 of the '155 patent, one of the claims challenged by the defendants:

10. A method of providing printing and publishing services to a remote client in real time using a communication network, the method comprising:

storing files on a computer server, the files containing information relating to images, text, art, and data;

providing said files to a remote client for the designing of a page layout;

generating a portable document format (PDF) file from the designed page layout;

generating a plate-ready file from said PDF file; and

providing said plate-ready file to a remote printer.

Here's how the Patent Office presiding over the IPR described [PDF] claim 10:

Claim 10 is drawn to a method that requires: (1) storing files; (2) providing the files to a remote user for designing a page layout; (3) generating a PDF from the designed page layout; (4) generating a "plate-ready file" from the PDF; and (5) providing the plate-ready file to a remote printer.

In order to show that this claim should be cancelled, the challenger relied on several pieces of prior art to show that claim 10 of the '155 patent was obvious.

During the IPR, the parties generally did not dispute that steps (1)-(4) were disclosed by the prior art. The only dispute noted by the Patent Office about what was disclosed by one particular prior art combination known as "Dorfman and Apogee" was whether sending a file to a remote printer (step (5)) was new or non-obvious. The Patent Office originally found [PDF] that even though the prior art disclosed all the other parts of the alleged invention, the prior art didn't disclose sending files to a remote printer. That was enough to rule that claim 10 was new and non-obvious, and in favor of the patent owner.

We don't think that minor difference from the prior art should matter. The '155 patent doesn't claim to have invented how to send files to a remote printer (nor could it in 1999, as a quick search reveals). Such a trivial change shouldn't allow someone to claim a monopoly, especially when everyone was doing things "on the Internet" in 1999. For this reason, this patent is worthy of our award.

Fortunately, the Patent Office changed its mind [PDF] on the patentability of claim 10 and sending files remotely, after the challenger pointed out that the prior art did disclose doing exactly that. In January 2017, the Patent Office ruled that claim 10, as well as claims 11-7, 19 & 20, should be cancelled, and CTP did not appeal that decision.

Thanks to IPR, CTP can no longer use many of the claims of the '155 patent to sue others. Indeed, it does not appear that CTP has brought suit against the 200 parties it threatened to sue.

IPR is currently facing an existential threat: the Supreme Court is currently deciding whether it is constitutional for the Patent Office to double-check its work after a patent has issued. We think it is. As this short story shows, the Patent Office sometimes misses things in the prior art, and unsurprisingly then, often allows patents that it shouldn't. The public should be able to point out those mistakes to the Patent Office and not have to pay patent owners for things that rightfully belong to the public.

Republished from the EFF's Stupid Patent of the Month series.

• 1. It turned out that at the time CTP filed its lawsuits, it didn't actually own the patent [PDF].

Filed Under: ipr, on the internet, patents, supreme court
Companies: ctp innovations

Third Time's A Charm: CAFC Finally Says You Can't Just Add 'On The Internet' And Get A Patent

from the took-'em-long-enough dept

It looks like the Ultramercial saga may finally be ending. As we've been covering for many years, Ultramercial held a patent (7,346,545) on watching an ad to get access to content, and it sued lots of companies. While a lower court rejected the patent, CAFC (the appeals court for the Federal Circuit, which handles all patent cases) overturned that ruling. The key issue: is something patentable if you take a common idea and just add "on the internet." CAFC said yes. The Supreme Court asked CAFC to try again following its own ruling in the Mayo case (which said you couldn't patent medical diagnostics). But CAFC still found the patent to be valid. Finally, earlier this year, following the Alice ruling, the Supreme Court gave CAFC a third try to get it right.

It seemed rather obvious to us that it was the Supreme Court saying, "Hey, would you reject this patent already?" and finally, CAFC got the message. On the third try, CAFC dumped the patent as invalid. More specifically, it goes all the way back to the original district court ruling, allowing the patent to be declared invalid on a motion to dismiss (i.e., before going through the massive expense of a big trial). This is very helpful, since it gives people sued for patents a path to success that won't put them too deep in the hole financially. Traditionally, courts were reluctant to toss out patents that early in the process, and patent holders relied on that fact, knowing that the legal bills for anyone they sue will be astronomical, even on a bogus patent. Now, however, courts can toss out those patents much more quickly. CAFC says so. Check out the full ruling:

We conclude that the limitations of the ’545 claims do not transform the abstract idea that they recite into patent-eligible subject matter because the claims simply instruct the practitioner to implement the abstract idea with routine, conventional activity. None of these eleven individual steps, viewed “both individually and ‘as an ordered combination,’” transform the nature of the claim into patent-eligible subject matter. See Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297, 1298). The majority of those steps comprise the abstract concept of offering media content in exchange for viewing an advertisement. Adding routine additional steps such as updating an activity log, requiring a request from the consumer to view the ad, restrictions on public access, and use of the Internet does not transform an otherwise abstract idea into patent-eligible subject matter. Instead, the claimed sequence of steps comprises only “conventional steps, specified at a high level of generality,” which is insufficient to supply an “inventive concept.”

There's an even more interesting concurring opinion from Judge Haldane Mayer, that I kind of wish was the full opinion. It points out that patents that don't "promote the progress" are unconstitutional.

The Constitution’s Intellectual Property Clause is at once a grant of power and a restriction on that power.... Unless we are to assume that the constraints explicit in the Intellectual Property Clause are mere surplusage, we are bound to ensure that the patent monopoly serves “[t]o promote the Progress of Science and useful Arts,”... “This is the standard expressed in the Constitution and it may not be ignored.”

Mayer's ruling is the one that also clearly lays out why letting courts invalidate patents so early on is so important.

From a practical perspective, addressing section 101 at the outset of litigation will have a number of salutary effects. First, it will conserve scarce judicial resources. Failure to recite statutory subject matter is the sort of “basic deficiency,” that can, and should, “be exposed at the point of minimum expenditure of time and money by the parties and the court,”....

Second, resolving subject matter eligibility at the outset provides a bulwark against vexatious infringement suits. The scourge of meritless infringement claims has continued unabated for decades due, in no small measure, to the ease of asserting such claims and the enormous sums required to defend against them....

Finally, and most importantly, turning to section 101 at the outset protects the public. See Cardinal Chem., 508 U.S. at 101 (emphasizing the public interest in preventing the “grant [of] monopoly privileges to the holders of invalid patents” (footnote omitted)). Subject matter eligibility challenges provide the most efficient and effective tool for clearing the patent thicket, weeding out those patents that stifle innovation and transgress the public domain. As a general matter, trial courts have broad discretion in controlling their dockets and in determining the order in which issues are to be adjudicated. But the public interest in eliminating defective patents is an “even more important countervailing concern[],” Cardinal Chem., 508 U.S. at 99, which counsels strongly in favor of resolving subject matter eligibility at the threshold of litigation.

Furthermore, the opinion notes that courts should get away from simply presuming patents are valid:

Indeed, applying a presumption of eligibility is particularly unwarranted given that the expansionist approach to section 101 is predicated upon a misapprehension of the legislative history of the 1952 Patent Act. Those who support a “coarse filter” approach to section 101 often argue that the Act’s legislative history demonstrates that Congress intended statutory subject matter to “include anything under the sun that is made by man.” See, e.g., AT&T Corp. v. Excel Commc’ns, Inc., 172 F.3d 1352, 1355 (Fed. Cir. 1999). Read in context, however, the legislative history says no such thing. See Mayo, 132 S. Ct. at 1303–04. The full statement from the committee report reads: “A person may have ‘invented’ a machine or a manufacture, which may include anything under the sun that is made by man, but it is not necessarily patentable under section 101 unless the conditions of the title are fulfilled.” H.R. Rep. No. 1923, 82d Cong., 2d Sess., at 6 (1952) (emphasis added). Thus, far from supporting an expansive approach to section 101, the relevant legislative history makes clear that while a person may have “invented” something under the sun, it does not qualify for patent protection unless the Patent Act’s statutory requirements have been satisfied.

Good stuff all around... and very different from the CAFC of the past.

Filed Under: cafc, motion to dismiss, on the internet, patent eligibility, patentable subject matter, patents, supreme court
Companies: alice, cls, ultramercial, wild tangent

In 'On The Internet' Patent Case, SCOTUS Gives CAFC 3rd Chance To Get It Right

from the try,-try-again dept

You may recall the important WildTangent v. Ultramercial case that has been going on for some time. This is the case in which the courts basically need to decide if merely adding an "on the internet' turns a basic idea into a patentable idea. In 2010 a court rejected Ultramercial's patent (7,346,545) on a process requiring people to watch an ad before getting access to content. However, the CAFC (court of appeals for the Federal Circuit) overturned that ruling, finding that taking a basic concept and adding "on the internet" to it made it patentable.

In 2012, following the Supreme Court's ruling in the Prometheus Labs v. Mayo case, that found medical diagnostics unpatentable, the Supreme Court told CAFC to try again on the Ultramercial case. Given another chance to get it right, CAFC again whiffed and insisted that this was patentable subject matter. In light of the recent ruling in CLS Bank v. Alice (which relied heavily on that Mayo ruling), the Supreme Court has told CAFC to maybe try one more time to see if it might actually get it right this time around, given the new guidance in the CLS Bank ruling.

In short, the Supreme Court seems to be telling CAFC: do we really need to draw a map for you here? Adding "on the internet" doesn't make something patentable. Now, the remaining question is whether or not CAFC will finally get that message.

Separately, it's also perhaps notable that the Supreme Court declined to hear the appeal in a different ruling, the Accenture v. Guidewire patent case, in which CAFC found the patent invalid based, in large part, on the Mayo ruling and the earlier CLS Bank CAFC ruling. Basically, here was a case where CAFC (properly) rejected a patent for being ridiculously overbroad, and now the Supreme Court doesn't have any concerns with that ruling. But in the Ultramercial case, where CAFC has twice upheld an overly broad patent, the Supreme Court is telling CAFC to try, try again.

Filed Under: cafc, on the internet, patentable subject matter, patents, supreme court
Companies: alice, cls bank, ultramercial, wildtangent

Amicus Brief From Public Knowledge Distills Ultramercial's 'Complex' Patent To 16 Lines Of Code

from the one-rarely-sees-javascript-in-a-legal-filing dept

Public Knowledge has entered the battle against Ultramercial, the holder of a broad patent for an abstract idea that it has casually stapled "on the Internet" to in order to push it through the patent office. At one point the patent was rejected by the court, but Ultramercial repeatedly tapped the words "on the Internet" until the CAFC obligingly agreed that the insistent tapping had some merit and overturned the lower court's ruling.

WildTangent appealed this ruling in 2012, drawing immediate support from Redhat, the CCIA, Google (in conjunction with Verizon, no less) in the form of petitions for the Supreme Court to hear the case. A couple of months later, the Supreme Court vacated the CAFC's ruling, asking it to reconsider the case in light of Mayo v. Prometheus. As of Sept. 24th, Google [et al, incl. Redhat, HP, Zynga and Homeway, Inc.], the CCIA and the EFF have also filed amicus briefs on behalf of WildTangent, urging the CAFC to rule in a consistent manner on Ultramercial's patent in light of its decision on Mayo.

Public Knowledge's brief takes a somewhat novel approach, attacking the supposed complexity of the patent head on

Today, Public Knowledge filed an amicus brief urging the Supreme Court to review an important case on software patents, WildTangent v. Ultramercial. The basic question in this case is whether a patent to a simple, abstract idea can be valid simply by tacking on enough legal and technical language to that idea, even if that extraneous language has no real meaning.

The patent in question is U.S. Patent No. 7,346,545. That patent basically describes a simple idea familiar to anyone who has watched videos on the Internet: the idea of taking a video available for purchase, and showing it for free in exchange for viewing an advertisement first.

As Public Knowledge points out, ideas aren't patentable and what Ultramercial has here is nothing more than an abstract idea obscured by layers of technical language.

Whoever wrote the patent on advertising in this case, however, was clever. Instead of simply describing the simple idea for what it is, the patent expounds an eleven-step process in a patent claim of 349 complex, technical-sounding words. This was enough to convince one court that the process required “intricate and complex computer programming,” thus making it patentable and not an abstract idea.

Public Knowledge's brief exposes the extremely simple underlying process of Ultramercial's patent. What took its patent lawyers 349 words to explain boils down to 16 lines of code -- hardly the indicator of "intricate and complex computer programming." As a demonstration in PK's blog post, Charles Duan turns the following process steps into two (short) lines of code.

As an example, here are two steps of the process claimed in the patent.

"a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message;

a sixth step of receiving from the consumer a request to view the sponsor message, wherein the consumer submits said request in response to being offered access to the media product;

a seventh step of, in response to receiving the request from the consumer, facilitating the display of a sponsor message to the consumer;"

For all those words, here's the computer code that implements them:

if (window.confirm("View ad or buy?")) {
window.alert(selected_ad.text)

82 words and three complex sentences reduced to 11 words of code spanning two lines. Duan refers to Ultimecia's Ultramercial's dense faux-technical jargon as "legal filibustering," a process used to hide simplicity behind dense walls of text in order to confuse gatekeepers into submission.

And if no one believes it's that simple, Public Knowledge has provided a working version of its sixteen lines of code at this URL.

Here's the process Ultramercial's suing about in all of its 16-lines-of-code glory.


As Mike has pointed out before, the only reason Ultramercial even has this patent is because it convinced the CAFC that the addition of "on the Internet" turns an abstract idea into a patentable process. The additional wording describing the "process" is a diversionary tactic. Hopefully, a second run through will find the CAFC willing to cut through the dense wording and ridiculous "Internet" assertion and find Ultramercial's patent invalid.

Filed Under: amicus brief, on the internet, patents
Companies: public knowledge, ultramercial, wild tangent

Patent Court Stands By Its Claim That Adding 'On The Internet' Can Make An Abstract Idea Patentable

from the oh-come-on dept

We've been following the Ultramercial case quite closely over the past few years. If you're not aware, this involved a company that more or less patented the idea of "you must watch this ad to get this content" (US Patent 7,346,545) and then sued pretty much everyone. Most of the companies it sued settled rather than fight (which happens all the time), including YouTube and Hulu, but one company, WildTangent, has continued the fight. Eventually, though, the case reached the Supreme Court with the key question being does taking an abstract idea like "watch this before getting that" and adding "on the internet" to it make it patentable? It's well established that you can't patent an abstract idea, but for some reason many seem to think that if you say "on the internet" it's no longer abstract. The Supreme Court did not do a full hearing on the case, but asked the appeals court of the federal circuit (CAFC -- known as the patent appeals court) to reconsider its original ruling in light of the Supreme Court's ruling in the Prometheus case, where it said that you can't patent broad medical diagnostics. The rule there was that you "could not simply recite a law of nature and then add the instruction 'apply the law.'" So, is the same true for "abstract idea" plus "on the internet"?

Apparently, for CAFC, the answer is that there is a difference, and that merely adding "on the internet" to an abstract idea makes it patentable. The ruling is quite incredible, not just for the fact that it sets up a ridiculous standard, but also for its technical naivete. CAFC basically says, gee, there are a lot of steps and graphs and charts in the patent, so, it's probably not abstract.

Viewing the subject matter as a whole, the invention involves an extensive computer interface. Unlike Morse, the claims are not made without regard to a particular process. Likewise, it does not say “sell advertising using a computer,” and so there is no risk of preempting all forms of advertising, let alone advertising on the Internet. Further, the record at this stage shows no evidence that the recited steps are all token pre- or post-solution steps. Finally, the claim appears far from over generalized, with eleven separate and specific steps with many limitations and sub-steps in each category. The district court improperly made a subjective evaluation that these limitations did not meaningfully limit the “abstract idea at the core” of the claims.

Part of the issue is that it needs to show something new here, and the court seems to argue that any software effectively creates a "new machine" based on some really wacky logic. It states "as computer scientists understand":

a programmed computer contains circuitry unique to that computer. That “new machine” could be claimed in terms of a complex array of hardware circuits, or more efficiently, in terms of the programming that facilitates a unique function.

Read that again. They're saying every software program creates "unique circuitry." That's how they claim this is a "new machine" making the idea patent eligible. However, as computer scientist, Tim Lee points out, this claim is "nonsense."

It seems that, once again, CAFC is not getting the Supreme Court's message clearly. We've already gone through this with Myriad and Mayo cases. In Mayo, CAFC twice ruled that diagnostic tests were patentable, even after the Supreme Court gave it an extra chance to correct that. That resulted in the Supreme Court slapping down CAFC and rejecting medical diagnostic patents. Then, CAFC, similarly did the same thing with gene patents, only to be smacked down just last week.

This is a nearly identical situation. CAFC rules one way ("yes, of course this abstract idea/thing of nature is patentable"), the Supreme Court says "are you sure?!? please look at this other ruling," and CAFC comes back with "yes, we're sure! patent patent patent!" The last few times that's happened the Supreme Court has had to smack CAFC down, and it looks like it may need to do so again.

Filed Under: abstract ideas, advertising, cafc, content, drm, on the internet, patent eligibility, patents, software patents, supreme court
Companies: hulu, ultramercial, wildtangent, youtube