How Oregon's Top Wildlife Official Got Sued Over His State's Hunting App

from the can-you-patent-following-state-laws? dept

What if you could get a patent on a new government program? Then, you could ask for the government to pay you royalties just for running that program. Nice work, if you can get it.

Oregon resident Iiley Thompson is the named inventor on U.S. Patent No. 10,257,651, “Mobile electronic device for identifying and recording an animal harvest.” Shortly after his patent issued in 2019, Thompson’s lawyers sent a letter to the Oregon Department of Justice, suggesting that the Oregon government take a license to his patent.¹

Thompson claims that the Oregon Department of Fish and Wildlife’s MyODFW app, which allows hunters and anglers to complete their licensing paperwork on a mobile device, infringes his patent.

Claim 1 describes:

• Entering animal harvest data (i.e. how many fish of a certain type you caught) into a computer

• Uploading the harvest data, together with location data, to a second computer (operated by someone else)

• Checking the data against the maximum allowed by the user’s license

In other words, Thompson patented following state laws, and filing the appropriate paperwork, but you know, connected to a powerful computer network. Claim 2 describes the same system, but specifies a mobile device as the first computer and a server as the second.

On January 22, Thompson filed a lawsuit claiming that MyODFW infringes his patent. But he didn’t sue the state or any of its departments—he sued Curt Melcher, the Director of the Oregon Department of Fish and Wildlife, personally.

Making it Personal

Because of a legal concept called sovereign immunity, you generally can’t sue a state government, or any of its departments, for patent infringement. When I saw the Thompson v. Melcher case as I was going through this year’s first patent lawsuits, it struck me as a possible attempt to do an end-run on sovereign immunity.

I ran this hypothesis by Joshua Landau, patent counsel at Computer Communications & Industry Association, who agreed that it did look like a way to put legal pressure on a state when you can’t sue the state. He pointed me to a 1908 Supreme Court case called Ex parte Young, which suggests just this method to get around sovereign immunity. Plaintiffs can sue a state official who they believe is in violation of a federal law. In this case, because Thompson is barred from arguing that the State of Oregon is violating his patent, he’s saying Melcher personally has contributed to the infringement of his patent.

The Ex parte Young route doesn’t provide a way to get damages, only an injunction, and indeed Thompson doesn’t ask for damages in his lawsuit. If Thompson’s extremely broad claims are valid, in my view, that would basically mean shutting down the MyODFW app.

"It certainly looks like an attempt to put pressure on the state, both through legal expenditures, and by threatening to enjoin a service they provide," Landau said. "Suing an individual official is a plausible strategy to try to get around state sovereign immunity in some cases, but there are significant open questions."

Among those questions would be whether or not Melcher has a significant enough connection to the allegedly infringing app. Melcher is a longtime public servant who has served as ODFW’s director since 2015.

Patenting A Government Service Is Pretty Bad

Regardless of who is being sued, Thompson’s patent on e-tagging wildlife is very problematic in and of itself. Most government services aren’t really “inventions.” So there really shouldn’t be patents on collecting benefits, or getting a certain type of state-granted license, or reporting your taxes. And because of the Alice v. CLS Bank Supreme Court case, similar “do it on a computer”-style patents should be banned, as well. We shouldn’t be seeing patents that cover “requesting benefits plus a powerful computer network” or “sending your paperwork to the government oh but on a smartphone.”

But we do see them all the time, because it’s a broken system. Patent examiners have, on average, 19 hours to prove applicants like Iiley Thompson should not get a patent.² Applicants get an unlimited number of do-overs, as long as they can keep paying for them.

Thompson’s patent application was filed in 2015. At that date, it was utterly predictable that government services like hunting licenses would continue to move online, as they already had been for many years.

And it wasn’t just predictable in a general sense—it was specifically predictable that Oregon regulators would move their hunting licenses to smartphones. They were already moving other ODFW services to smartphones, and were being as public about it as possible. By late 2014, about a year before Thompson filed his patent application, the Department linked smartphones to its hunting map. This was reported in The Oregonian, the state’s largest newspaper. By mid-2015, ODFW had come out with a fishing-specific app, which was reported in the Klamath Falls Herald and News.

So it’s hardly shocking that in March 2016, ODFW got started thinking about how they could improve their licensing process. The timeline for Oregon’s creation of electronic licensing is laid out in this ODFW PowerPoint.

Notably, Thompson never actually created his own app, at least not one that’s ever been made publicly available. As his complaint states, “Thompson has never offered nor sold, and has never authorized nor licensed any other to offer or sell, a system or method covered by the claims of the ‘651 patent.”

Thompson runs a footwear business in a town just south of Portland, and has an extensive resume of work in that industry, including stints at Adidas and Nike. I asked Thompson to talk about his case to get his side of it, but he declined an interview. I also emailed the public information office at the Oregon Department of Fish and Wildlife, but didn’t hear back.

¹ Patent demand letters frequently do not make explicit “demands,” but rather couch the language in terms of making an “offer” to license or buy a patent. But, it’s generally understood to be a demand for payment. It puts the recipient officially on notice, which can have other effects, like increasing damages. More examples of demand letters are at trollingeffects.org.

² Frakes, Michael and Wasserman, Melissa F., The Failed Promise of User Fees: Empirical Evidence from the U.S. Patent and Trademark Office (December 2014). Journal of Empirical Legal Studies, Vol. 11, Issue 4, pp. 602-636, 2014. For something free and more readable, see this 2014 piece in The Washington Post, “Inside the stressed-out, time-crunched patent examiner workforce.”

Originally posted to the Letters Patent blog.

Filed Under: hunting app, iiley thompson, oregon, oregon department of fish and wildlife, patent

USPTO Awards Patent To Disgraced Scientist For Fraudulent Work

from the I-don't-even dept

Here on Techdirt, we're pretty inured to the excesses of the patent system. But just when you think you've seen everything and plumbed the deepest depths of ridiculousness, along comes something like this:

Korean researcher Hwang Woo-suk electrified the science world 10 years ago with his claim that he had created the world's first cloned human embryos and had extracted stem cells from them. But the work was later found to be fraudulent, and Dr. Hwang was fired from his university and convicted of crimes.

Despite all that, Dr. Hwang has just been awarded an American patent covering the disputed work, leaving some scientists dumbfounded and providing fodder to critics who say the Patent Office is too lax.

But it would be too easy to mock the USPTO for explaining that:

the system operates on an honor code and that patent examiners cannot independently verify claims.

Instead, I'd like to draw attention to this revealing comment from Kevin E. Noonan, a biotechnology patent lawyer, as quoted in the New York Times story:

"If it's bad, it's not going to be worth very much," Mr. Noonan said. "Who is going to sue on this patent?"

The answer, of course, is many people would -- specifically, patent trolls, who have no problems taking a worthless patent and using the mere threat of litigation to squeeze money out of companies just to get them to go away. That, and patents being granted on discredited ideas, as here, are just some of the many problems that the USPTO needs urgently to address.

Follow me @glynmoody on Twitter or identi.ca, and +glynmoody on Google+

Filed Under: hwang woo-suk, patent, science, stem cells, uspto

EFF Files To Invalidate Bogus 'Podcasting' Patent That Is Being Used To Shakedown Famous Podcasters

from the hope-it-works dept

We've written a few times about the patent troll "Personal Audio" which claims to hold a patent (US Patent 8,112,504) that it says covers podcasting. With this patent it's been busy shaking down the creators of a bunch of popular podcasts. The company's owner and his lawyer recently asserted (somehow, without laughing) that their patent was "the roadmap" for podcasting, even though no one involved in the early days of podcasting was even remotely aware of the patent.

It's taken some time, but the EFF has been targeting this particular patent, and has now officially challenged the patent seeking to get it invalidated.

"Bad patents like this one slow down innovation—exactly the opposite of what the patent system was intended to do," said EFF Senior Staff Attorney Julie Samuels, the Mark Cuban Chair to Eliminate Stupid Patents. "We are thrilled to challenge this bad patent and make the world safer for creators and podcasters."

The process involving these kinds of things is very slow and convoluted, but hopefully this patent can be busted, and podcasters won't have to live in fear of a shakedown letter from Personal Audio.

Filed Under: patent, patent troll, podcasting
Companies: eff, personal audio

Microsoft's Great Patent Application: Xbox Achievements For Watching Advertising

from the sorry-i-wasn't-paying-attention dept

You may recall the concern some have raised over Smart TVs, those internet connected glowing boxes with cameras ripe for exploits that would allow hackers to watch you watch TV. Supposedly less nefarious were concerns over technology that would allow those same Smart TVs to recognize when you had left the room or were looking away, subsequently dimming the screen to conserve energy. Whether or not either is a concern rising to the levels of epidemic privacy invasion, one thing that is clear is that the general public is a bit dubious about being monitored within their own living rooms.

With that in mind, it will be interesting to see how that same public reacts if Microsoft actually decides to implement the technology described in their shiny new patent application, which describes how the Xbox One console could monitor your body, eyes, and heartbeat to determine if you're actually watching advertising and then reward you for it with Xbox achievements.

The patent, snappily titled "Awards and achievements across TV ecosystem", describes camera sensors monitoring the eye movements and heartbeats of TV viewers. Which means a console will know if you're in the room when an ad break is on, or if you've popped out to make tea. It'll also be able to tell whether you're actually watching the ad or if you're engrossed in the latest issue of Heat magazine. And don't even think about gaming the system by watching telly with the lights off: the XBox would be able to monitor you even in the dark.

Every move you make, every breath you take, the Xbox would be watching you – but also rewarding you. The patent suggests that sitting through commercial breaks would rack you up points to buy both virtual and physical awards. The thinking behind this being that people today need to be bribed in order to sit still and watch a commercial. As the patent application explains: "With the proliferation of digital video recording devices, advertisers are finding it increasingly difficult to introduce their advertisements to viewers."

While the above can be slightly misleading in that this is a patent application, not a granted patent, the response to it is the same. Fun, right? Here's the problem. I am aware that, at some level, everything about video games is reward-based. The obvious Xbox achievements are in place and people ostensibly seek them out, though I have yet to attain any modicum of understanding as to why people do this. Less obvious is the concept of gaming in general. Get to the next level. See that next cut-scene. Advance the plot. Unlock the new weapon, the new armor, or the new ability to shoot a bad guy directly in the balls. These are things that are important to gamers. It might therefore seem natural to build a rewards-based system for advertising as well within this audience.

Except advertisements are different, aren't they? If we're skipping ads, it's because they're an annoyance. Whereas stopping the bad guy, winning the World Series, or uncovering a mystery are all integral to the playing of whatever game we're enjoying, advertisements are, by definition, a break from what we're actually interested in doing. In fact, the label of "achievement" itself relating to watching advertising reeks of a gross misnomer. Granted, being able to stomach a minute's worth of Miss Cleo advertising may seem like a challenge, but it isn't an achievement in the same way.

More importantly, as the article notes, getting people to watch ads isn't a problem solved by some kind of Pavlovian reward system. It's solved by having creative, interesting, and entertaining ads.

The proliferation of digital video recording devices is something of a red herring when it comes to ad-viewing. After all, people aren't forced to skip the ads when they watch a time-shifted show; rather, they're free to watch them over and over again if they like. Just, err, most people don't like. Research conducted by Deloitte in 2010 found that 90% of TV viewers always skip through the adverts on their DVR. But the answer to stopping this behaviour doesn't lie in sophisticated motion-detecting technology, it lies in making ads that people actually want to watch. The biggest threat to advertising isn't technology like Sky+; the biggest threat to advertising is bad advertising.

Because advertising is content and content is advertising. And these invalidating arguments are made without even bothering to touch upon the public's reaction to being watched through the all-seeing eye in Microsoft's device. In a world where authors like Rand and Orwell are well-read, I expect a line to be drawn between cameras in the public square and cameras within our own walls. That this would be done to solve a problem better solved through smarter means is a fact I hope won't be lost on anyone.

Filed Under: achievements, advertising, gaming, patent, patent application, xbox
Companies: microsoft

USPTO Issues Final Rejection Of Apple's Rubberbanding Patent, Which Were Among Those The Jury Said Samsung Infringed

from the oops dept

We've argued repeatedly how silly it is for courts to move forward with cases over patent infringement while the USPTO is reviewing those same patents. Considering just how often patent re-exams lead to changes in the patents (including rejecting key claims), moving forward before the USPTO has ruled is kind of silly. It's guaranteed to lead to bad rulings. The latest is that the USPTO has issued a "final" rejection of Apple's "rubberbanding" patent (US Patent 7,469,381), which was one of the patents at issue in the Samsung Apple patent fight, and which the jury said Samsung infringed. In fact, the specific claim (19) that Samsung was said to have infringed was rejected by the USPTO.

We had noted a non-final rejection last fall, and now the USPTO has reiterated that with a final rejection. Of course, even "final rejection" is a bit of a misnomer, since Apple can (and probably will) still appeal to the Patent Trial and Appeal Board (PTAB). Still, given the significant doubt over the quality of the patent, it seems crazy to assume that it was valid as part of the lawsuit.

Also, in the meantime, if we're going to grant massively powerful, technology-landscape-changing patents to companies, is it really so much to ask that the USPTO not get it wrong so damn often? The fact that, on second review, they suddenly realize "oops, that was a mistake!" seems like the kind of thing that we should be worried about, given just how much power there is in a single bad patent.

Filed Under: claims, final rejection, patent, rejection, rubberbanding, uspto
Companies: apple, samsung

Anti-Piracy Company Seeks Patent On Automated Copyright Trolling

from the copyrights-and-patents-together dept

Via TorrentFreak we learn of a patent application from Robert Steele, of Digital Rights Corp., seeking to patent a system to basically automate copyright trolling. It's an application that was just published, so it's really meaningless. Who knows if the USPTO will approve it, but the patent is pretty simple. Here's the key claim:

A system for resolving an act of copyright infringement, comprising: an infringement module configured to identify an infringing computer, wherein the infringing computer includes a computer associated with an infringement event; an identification module configured to identify an ISP associated with the infringing computer; a notification module configured to notify the ISP that the infringing computer is associated with the infringement event; a receiving module configured to receive a redirected request for access to Internet content, wherein the request for Internet content has been redirected by the ISP; and a generation module configured to generate a redirect webpage, wherein the redirect webpage includes a link associated with a settlement webpage that includes a settlement offer to resolve the infringement event.

This seems ridiculously broad, as do so many software-focused patents these days. Of course, if the patent did get awarded, it would be interesting to see what happened next. Would copyright maximalist copyright trolls start complaining about too much enforcement on the patent side?

Filed Under: copyright troll, patent
Companies: digital rights corp

The Idea That Women Need More Patents, Copyrights And Trademarks Shows Up In Newly Proposed Law

from the missing-the-point dept

Last month, we reported on some silly research that suggested the economy would grow massively if we could just convince women to get more patents. The whole thing was based on some fundamentally silly assumptions related to thinking that patents are a proxy for either innovation or economic growth. They are not. Plenty of studies have shown no link between patents and actual innovation -- and lots of other studies have shown that patents seem to be costing the economy a lot more than helping it.

Unfortunately, however, it appears this idea that women need more patents has somehow made its way to Congress in a new bill -- and (just for fun) it also says the same about copyrights and trademarks. Senator Olympia Snowe (with Senator Mary Landrieu) have introduced S.3196 to create a "National Women's High-Growth Business Bipartisan Task Force." By itself, that seems like a good idea. It's no secret that the tech industry has a much higher percentage of men than women, and there's been quite a reasonable concern about why that is and if it's healthy for innovation and the economy. And most of the proposal seems reasonable, if somewhat unlikely to accomplish anything meaningful.

But, then there's this part, which says that among the duties of the task force will be to:

examine the link between women who own small business concerns and intellectual property, including—

(A) the number of patents, trademarks, and copyrights granted to women; and

(B) the challenges faced by high-growth small business concerns owned and controlled by women in obtaining and enforcing intellectual property rights.

Once again, this is merely making the assumption that women need to get more patents, trademarks and copyright -- and that they need help "enforcing" them. Why make such an assumption? Why not start with a more neutral question that explores whether or not such government granted monopoly privileges actually help innovation or the economy? It seems weird to immediately jump to the conclusion that women need more IP.

Filed Under: mary landrieu, olympia snowe, patent, trademark, women

Nintendo Wii Accused Of Willfully Infringing Patent That Was Applied For After Wii Was Introduced

from the wii-need-an-independent-invention-defense dept

Techcrunch is reporting on yet another patent dispute over the technology found in Nintendo's Wii video game system. This time the company suing is ThinkOptics, the makers of the Wavit Remote.

The dispute is over the following patents:

• 7,796,116: Electronic equipment for handheld vision based absolute pointing system
• 7,852,317: Handheld Device for Handheld Vision Based Absolute Pointing System
• 7,864,159; Handheld Vision Based Absolute Pointing System.

Notice a trend yet?

What is probably not surprising is that this patent dispute is being filed in the patent troll haven of East Texas. Along with Nintendo, ThinkOptics is suing Nyko, a maker of third party Wii Remotes, Gamestop and Radio Shack, both of whom sell the Wii and accessories, and finally JC Penny, for being over priced and of low quality, I guess. Not sure why other retail outlets aren't being sued.

ThinkOptics' primary argument for how Nintendo willfully infringed on their patents is that Nintendo's own patent applications were rejected.

The rejection of [...] applications — assigned to Nintendo Co. Ltd. — based on the ’116 patent is proof that the Nintendo defendants knew or should have known of the objective risk that one or more of their products infringed at least one claim of at least the ’116 Patent.

The dates involved are what makes this suit interesting. Of the three patents behind the dispute two were granted in 2010 and one is 2011. All three, however, were applied for in July of 2005, two months after Nintendo first introduced the Wii to the public at the 2005 E3 conference.

With these dates in mind, how could Nintendo possibly have known they were infringing on a patent when that patent was not even applied for prior to the first public announcement of the technology? What this situation shows is the need for an independent invention defense in the patent system. Here we have two companies developing similar technologies at the same time. There was no public information from either company prior to the patent filing to indicate that someone else was making this technology. Why should one of these companies be punished for treble damage for not finding information that was unavailable at the time of development?

It will be interesting to see what comes of this lawsuit. It will also be interesting to see how many more companies will sue over the Wii.

Filed Under: patent, wii
Companies: nintendo, thinkoptics

Patent Hawk's Wings Clipped; Editable Toolbar Patent Is Invalid

from the too-bad,-so-sad dept

A couple of years ago, we wrote about a patent infringement lawsuit filed by a guy named Gary Odom, who is better known in the patent blogging world as the Patent Hawk. He's an... aggressive supporter of all things patent, and has a way with words, often shown off in his inimical insult-to-backuppable-statement ratio, seen at times here in the Techdirt comments. The "patent" (7,363,592) was on editable toolbars in software. What's amusing in our post on the initial lawsuit is to see the usual crew of defenders insisting that the patent likely is valid, in part because of Odom's job as a prior art searcher, suggesting he would clearly know of any prior art that would invalidate the patent. We were also told that Odom's "expertise" on the subject was something we should learn from. A few months later, Odom used the same patent to sue 28 more companies.

Odom also talked a big, big game about the lawsuits and the patents (referring to himself in the third person!) on his own website:

Odom thoroughly searched the prior art before asserting his tool groups patent. He's filed accelerated examination (AE) continuations. AE requires a fairly exhaustive search of the prior art, and identification of how the claims are supported in the specification, as well as mapping the closest prior art to the claims.

Odom filed '592 in late 2000. Seven years later active tool groups burst into the commercial marketplace, introduced, and actively promoted, by Microsoft. It has spread like wildfire as a new user interface standard. Belated infringement coupled with commercial success is itself an indicator of non-obviousness.

As an aside, punters, who have commented that Odom's claims are Bilskied out, don't know what they are talking about. The CAFC has been concerned about overreaching business method patents. Bilski required, for software patents, that claims transform the subject matter, and have tangibility (according to one interpretation), i.e., representational of non-computer existence. Odom's tool groups are like containers in a toolbox, and his claims alter the condition of those groups.

The case took a weird turn when Microsoft first countersued Odom, pointing out that he had been working under contract for Microsoft at the time he filed the patents, and his contract stipulated that he wouldn't file for certain patents or file patent infringement claims against Microsoft.

Odom also made fun of reporter Joe Mullin's reporting on that twist in the case, but then quickly deleted his post, though it was preserved elsewhere. The response showed the level of cocky attitude we've come to expect from Odom, in which he insisted that "there is drama afoot in this case," and that "time will tell whose hands are clean."

I don't know exactly whose hands are clean, but I am pretty sure that Odom has now lost this case badly. We had seen the news a few months back about how first Odom's attempt to file the case in East Texas (despite living in Oregon and Microsoft being in nearby Seattle) failed as the case was shifted to Oregon. Then we saw how Odom's own lawyer had tried to get out of the case, and Odom tried to prevent him from doing so. Later, after the lawyer was allowed off the case, and Odom couldn't find anyone else willing to take the case (odd if the case were really strong), he finally decided to drop it. Of course, Microsoft had already filed the counterclaims, and the court went forward on that... and didn't just rule that Microsoft didn't infringe, it invalidated Odom's patent as (oops!) having prior art that made the claims obvious to those skilled in the art. In fact, the court seemed to find the "obviousness" of the patent... well... quite obvious:

However, the court held that the asserted claims presented �one of the clearest� cases of obviousness that had come before it because Odom had simply �cob-bled together various pieces of what was already out there in a manner . . . that would have been obvious to anyone skilled in the art at the time of the invention.�

Odom appealed, challenging the claim construction, the question of whether or not Microsoft infringed and about the invalidity of his own patent. He also claimed that the district court was "biased" against him. The Federal Circuit appeals court (CAFC) has now ruled and once again rejected the claims of our friendly Patent Hawk (pdf, found via Mike Wokasch).

The court goes through a discussion on the obviousness of editable toolbars... which should drive any real programmer nuts. The fact that lawyers and a court had to waste all this time debating the patentability of editable toolbars is just crazy. The key point, however, is that there was a previous patent that more or less beat Odom to the punch on pretty much everything in his patent. That's extremely embarrassing for Odom, since his entire job is supposedly his ability to find prior art for people. If he can't do it for himself...

Those same concepts are claimed in the �592 patent except that the groups of tools are on a single toolbar. That is an insignificant advance over Kavalam. KSR Int�l Co., 550 U.S. at 417 (�If a person of ordinary skill can implement a predictable variation [of a prior art work], � 103 likely bars its patentability.�). Kavalam explains that although its invention has been described in the context of a web browser, employing collections of buttons and toolbars that are relevant to that application, a person of skill in the art would appreciate that the inven-tion can be adopted to other applications where a different arrangement or combination of tools may be desired. Kavalam, col.15, l.63�col.16, l.12. The district court thus did not err in determining that the manner in which �592 patent divides up toolbars into groups and claims manipu-lation of tool groups would have been a common sense variation of Kavalam for a person of skill in the art. Likewise, it would have also been a trivial change for a person of skill in the art designing such alterable tool groups to add an indicator that could indicate any altered condition of the tool group.

The court then, piece by piece, dismantles the claim of "judicial bias" that Odom made, as it finds no such evidence. All of this couldn't have happened to a nicer guy, really.

Filed Under: gary odom, patent, patent hawk, toolbar