See http://www.spectrum.ieee.org/mar06/3087
Thomas Campana filed his first patent in 1991, for an email system
with wireless links. The system has been called a merger of email and
wireless pagers, which existed at that time. It remains very unclear just what claim is patented.
Was this really a "business method" patent?? The software case is VERY weak. There has been some discussion in the media about how the patent covers the way forwarding is handled, and where messages are stored, but I see NO evidence of that in the actual patent application.
See http://www.spectrum.ieee.org/mar06/3087
Campana founded his company NTP to enforce his patents. A lawsuit was brought in 2000, after RIM (and others) wouldn't agree to a license.
Campana died in October 2004.
RIM settled for $612 million in Mar 2006 , after an original verdict of $33 million (part of the final settlement is that there are no ongoing royalty payments, so this isn't as egregious as it might seem. Still, the settlement amount just seemed to balloon.)
The patent had been challenged with the USPTO. The PTO retracted
one or two of the patents in Feb 2006, but the presiding judge in the
case (Judge Spencer) refused to stay the case pending further USPTO
findings. Proceedings are still pending within the USPTO regarding
other Campana patents.
Just a day after a judge in the NTP-RIM patent fight said that he would not wait for the US Patent Office to complete a review of NTP's patents, that same Patent Office announced a "non-final" ruling on one of the NTP patents, suggesting that the original patent might not be valid. -- techdirt.com
NTP owned nothing but patents, but Thomas Campana -- co-founder -- did "invent" the technology. So NTP is not a classic "patent troll".
The case was before Judge James Spencer of the US District Court for Eastern
Virginia, known as the home of the "rocket docket": part of the court's
culture was strict adherence to timetables.
RIM engaged the mega-lawfirm of Jones,Day, which irritated Judge Spencer
regularly (probably with delay tactics). This was a classic Bad Idea.
However, it also appears that Judge Spencer had little if any awareness
of the central debates regarding software and business-method patents.
Case: NTP, Inc. v. Research In Motion, Ltd., No. 3:01CV767, 2003 WL 23100881 (E.D. Va. Aug. 5, 2003)
During the trial, RIM put on a demo of some supposedly pre-Campana text-messaging
software, BUT a major part of it was post-Campana's-patent. Another bad idea. However, there actually was pre-Campana text-messaging software! It is even cited in the '592 patent.
Rim failed to prove the patent invalid in court. But in court the burden of proof was on them. With the USPTO, the burden of proof was (is) on NTP.
Original verdict: $33 million. RIM could have been liable for triple damages if infringement was found to be "willful". However, Judge Spencer compromised here on 42%, raising the award to $47 million.
RIM appealed Judge Spencer's decision to the appellate circuit court.
The core problem with RIM: they did implement a system very much like Campana's idea. The only new idea is essentially that effort is made to make the blackberry completely transparent to your laptop's normal email software (ie blackberry email is eventually forwarded, through the blackberry, into your laptop, but is also viewable (and can be responded to) on the blackberry itself.
The core problem with NTP's wireless email patents: the only new element is the use of RF links in an email network. (Store-and-forward idea is acknowledged as prior art). BUT:
Prior art clearly includes the following:
1. Use of RF for IP links
2. Email based on ANY set of IP links
3. Use of RF to send short text messages to pagers
There is room for innovation in terms of identifying the nearest
wireless hub, but that does not appear to be part of the patent. The
patent does include lots of detail about switches and gateways, all of which appears to be standard according to RFC 821.
One central idea of the NTP patent: if a wireless unit is out of range,
messages are stored at Network Operations Center (NOC).
However, this idea is a fundamental part of the original SMTP rfc 821
(August 1982). Specifically, rfc 821 implicitly calls for a forwarding node
to hold messages when retrying to contact the next hop, and the final
server in the line holds messages indefinitely when waiting for the
user to connect and download email.
Whether or not this storage strategy was really the main idea, RIM
seized on it when they lost their case; they developed an alleged
"workaround" that handled message storage differently:
http://www.businessweek.com/technology/content/feb2006/tc20060210_490726.htm
When you're out of range, RIM stores your messages at their Network
Operations Center, or NOC. The workaround would store them on the
senders' server, that is, the RIM NOC wouldn't accept messages until
the destination was available and prepared to accept delivery. Or,
possibly, the messages would be stored "downstream" on the receivers'
servers, but with RIM able to retrieve them and forward them wirelessly
once the destination device became available.
Note that if the alleged workaround still violated NTP's very vague
patents, it would take another multi-year trial to establish that. One
possiblility to consider is that the workaround was intended only as a
negotiating tactic when trying to settle on a dollar amount for
royalties: it would allow RIM to avoid a shutdown injunction and thus
would give them some leverage. And, indeed, the settlement of $600
million wasn't much larger than what NTP had won in court with the added benefit of a RIM shutdown.
On the face of it, NTP's patents were for a SYSTEM, that is, for software. But the system claim is rather weak; all the components were pre-existing. The patent makes much more sense as a BUSINESS METHOD patent, but apparently this distinction was never clarified through the course of the trial.
One problem with the claim that NTP's patents were for a business method is that such patents were not granted until a 1998 court case. NTP's patents were applied for in 1991.
It seems surprising to me, but this distinction (between system and method patents) played little if any role in the trial.
Nobody disputes that RIM developed their system independently.
Patents for genuine hardware electronics methods are not an issue here: modulation techniques receiver--cpu interaction NTP's patents covered only the system, not the devices.
Real issue: patent system often ignores the fundamental CS principle
of abstraction (ie building networks with any links)
(If this was a business-method patent, that might make this issue
irrelevant.)
District Court issues
[quotes from NTP's Memorandum of Points and Authorities in Opposition to RIM's First (or Second) Motion for Summary Judgement]
1. RIM seemed focused on obtaining summary judgement before the "Markman hearing"
(or claim-construction hearing), a hearing at which the judge rules on
the meaning of various patent claims. This seems awkward. NTP's reply:
RIM's preemptive May 3. 2002 motion for partial summary judgment flies in the face of
its prior arguments and representations to the Court. The motion is an
attempt to short-circuit the Court's procedural schedule regarding
claim construction and to burden NTP with briefing before RIM even
files its responsive claim chart and prior art statement. RIM's motion
- which RIM admits will likely "miss the mark altogether" - seeks to
force the Court to engage in a wasteful, piecemeal, incomplete and
ultimately fruitless claim interpretation exercise before the disputed
claim terms are briefed or even identified.
2. RIM introduced the Zabarsky prior art rather late in the game. It
is not clear why they didn't pick up on this earlier. Perhaps the idea
of positioning their devices as pagers didn't occur to them.
3. NTP was an advocate of the "push" idea:
The Campana patents bridged this
email-wireless divide by providing universal connectivity for email
between wired and wireless systems. For the First time, email sent to a
user at his or her normal electronic mail system could be "pushed" to the user's mobile processor in a format suitable for standard email operations such as viewing, replying and forwarding. The user no longer needed to find his or her email; instead, the email would find the user.
This "push" idea, though, is not new: it's what happens when a cellular network calls you (the call is "pushed" to you), and it's what happens in SMTP whenever the next hop is reachable. The last sentence sounds seductive, but again it is difficult to see the innovation here except in the context of actually building a wireless email network.
Another NTP description that makes the invention appear very deep is:
Campana opened access between the world
of landline-based electronic mail systems and the wireless world.
Campana taught the ability to "push"
the email stored in the user's mailbox on the email server all the way
to a mobile destination processor operated by that user. As Campana
recognized, the wireless user would be unable to periodically request
email because of all of the drawbacks cited above (e.g., uncertainty.
delay and inconvenience/cost). Thus, the wireless user would be best
served by a system that delivered email without the need for any
request from the user - similar to the way that a server delivers email
to the user's desktop computer when Outlook requests it.
But is this meaningful? It seems likely that anyone using RF links for email in 1995 would have found all the ideas here obvious.
NTP also focused on their system as a way of addressing the
"inconvenience of dialing up": the difficulty finding a compatible
phone jack, and the possibility that there was no email to be received.
This seems to be a very tame description when compared to the utility
of receiving email while walking around. It seems likely that Campana
did not anticipate that part!
3.5: Note that all of the above amounts to a business justification
for believing that there would be a market for small RF-capable email
devices. If you accept that all the pieces for RF-based email were
already in place, this can be interpreted as suggesting that the real
innovation isn't the invention, but RIM's marketing of it.
4. RIM tried to claim their software was "not an email system". This
might be true in some precise sense, in that it is clearly an add-on to
an email system. RIM's precise claim was
The Blackberry relay and the Redirector
software are not a part of any email system. They do not alter o
rmodify any existing email system with which they may be used. Rather,
they are peripheral components....
To which NTP replied:
The blackberry Redirector software is
part of the email soystem on wich it is installed. ... Inded, RIM
admits that the redirector software cannot operate independently and
has no utility unless and until it is installed on an email server ....
Until now, RIM has always characterized
the blackberry ... as part of an electronic mail system. ... Indeed,
this Court is the only entity to which RIM has ever asserted that the
Blackberry is not part of an electronic email system.
This is an interesting argument. If Campana's patent is for an entire system, what if RIM just implements the part that corresponds to Campana's addition? Generally, that would qualify as infringing.
5. RIM tried to interpret some NTP claims very literally; for
example, by claiming that the phrases below were equivalent. NTP argued
that the crucial "the" made the difference. RIM's argument was that
NTP's patent required both an
RF and a wireline transmission to the same processor. Clearly, the
Campana patent wording is very vague; in fact, it is vague even by the
execrable standards of the patent world. Who is being obfuscatory here,
RIM or NTP?
A system for transmitting originated information from one of a plurality of originating processors in an electronic mail system to at least one of a plurality of destination processors in the electronic mail system comprising...
a RF information transmission network for transmitting the originated information to at least one RF receiver which transfers the originated information to the at least one if the plurality of destination processors
6. RIM argued that NTP's patent required the RF receiver and
destination processor to be distinct units. That seems specious, in
that consolidating components is routine.
7. RIM tried to argue that their wireless units acted as pagers:
email was not addressed to the blackberry itself, but only to the
user's usual email address. The blackberry system intercepted the email and forwarded it to the blackberry.
First, this kind of forwarding was standard by 1990; most unix email
systems provided for .forward files to specify such forwarding.
However, RIM has a point: the Campana patents assume that the RF nodes
have email addresses. This is not quite true of the Blackberry system: the email address is separate.
Note that the core issue of lack of novelty and obviousness was never raised directly.
Indirectly, it appears in the guise that NTP's patents are to be
construed very narrowly because the basic ideas were already extant.
Appellate court notes; ruling of Aug 2, 2005
In their appeal, RIM appears to be trying to narrow the scope of the NTP
claims. Somehow the assertion that there was prior art for
Perhaps they should have focused on the patent's own claim of
prior art in trying to limit the patent claims??
RIM argued before the appellate court that the district court erred
in construing the claim terms:
(a) "electronic mail system"
(appearing in the '960, '670, and '172 patents);
(b) "gateway switch" (appearing in the '960 patent); and
(c) "originating processor" and "originated information"
(appearing in the '960, '670, and '592 patents).
It seems clear that the district court did NOT grasp the generality of any of these three terms, but the appeals court did NOT overrule. Instead they found
... the court looks to those sources available to the public that show what a person of ordinary skill in the art would have understood disputed claim language to mean
RIM argues there are two ordinary meanings of "electronic mail
system": a broad definition that encompasses "communicating word
processors, PCs, telex, facsimile, videotex, voicemail and radio
paging systems (beepers)" and a narrow definition that defines
the term in the context of "pull" technology. They were apparently trying to argue that the blackberry system was not an "electronic mail system" in the narrow sense, and therefore wasn't covered by the patents.
The appellate court cited Tanenbaum, Computer Networks, a classic text.
The court also wrote:
The message is next sorted by the recipient's ISP mail server into the recipient's particular "mailbox," where it is stored until the recipient initiates a connection with the server and downloads the message off the server onto his or her personal machine. This configuration is commonly referred to as a "pull" system because emails cannot be distributed to the user's machine without a connection being initiated by the user to "pull" the messages from the mail server.
Pull system??? This is marketing terminology.
Campana's particular innovation was to integrate existing electronic mail systems with RF wireless communications networks.
A message originating in an electronic mail system may be transmitted not only by wireline but also via RF, in which case it is received by the user and stored on his or her mobile RF receiver.
Is the court suggesting that this is a "push" system? Yes, in fact.
But this was a major misunderstanding of prior art.
The BlackBerry system uses "push" email
technology to route messages to the user's handheld device without a
user-initiated connection.
How is a blackberry different from a laptop with persistent Internet connectivity,
limited to port 25 (email)?
An important issue for the court was that blackberries were NOT
seen as email endpoints. Rather, they were seen as portable
intermediate nodes:
they would receive email, they could display the email, but the email's
ultimate destination was the user's laptop (via some cable). This is an
interesting strategy, in that it makes the blackberry transparent to
the laptop that is receiving the email. However, it is not part of the
patent debate either!
The appeals court agreed with the district court that the latter's
interpretation of "electronic email system" as including the blackberry
system was entirely reasonable. This degenerated into more push/pull
debate, but part of the issue was that Campana himself tried to
characterize an "electronic mail system" as a wire system in order to
make his system appear different from Zabarsky's.
The appeals court said, [p 19 of pdf version]
Campana described prior art "electronic-mail services" as "basically
a wireline - to - wireline, point-to-point type of system" (emphasis in
the court's quote). The use of the term "basically" suggests tha tan
electronic mail system may include other types of connections,
including wireless connections. Moreover, Campana provided an example
of one prior art electronic mail system in commercial use .... In this
prior art electronic mail system, "groups of processors ... may be
distributed at locations which are linked by the [PSTN]. The individual
processors may be portable computers with a modem which are linked to
the [PSTN] through wired or RF communications as indicated by a dotted line" [Campana quotes from 5436960]
Note that the appeals court is essentially granting here that RF
links in email were prior art! See that patent, paragraph beginning
"FIG. 1 illustrates a block diagram". Note also that, in the images,
Fig 1 appears twice, and in one the "RF information transmission
network" is deleted. RF links to end-users were never shown. Figures are in http://cs.luc.edu/pld/ethics/campana/960.
As for the contested term "originating processor", the appeals court
says "We do not hold that the 'originating processor' is always the
processor on which text of the email message was created".[p 23] That
is, the blackberry is still an originating processor in the sense of
Campana's patents even if the message was created on the associated
laptop.
uspto.gov -> patents -> patft (uspto.gov/patft)
Search by patent number:
http://patft.uspto.gov/netahtml/PTO/srchnum.htm
6198783 System for wireless serial transmission of encoded information Modulation techniques
6067451 Electronic mail system with RF communications to mobile processors. See the Appendix, under Background Art, for prior art. Note that in Figure 3, some of the underlying telecom infrastructure is shown ("closest LATA switches"). The first non-prior-art diagram is Figure 8 (page 9).
Diagrams, and some text pages in .bmp format, are at http://cs.luc.edu/pld/ethics/campana.
6272190
System for wireless transmission and receiving of information
and method of operation thereof
4644351: Zabarsky patent, possible prior art. Note that this is cited in
the '592 patent. Paging is also cited there as prior art, in the
paragraph beginning, "FIG. 2 illustrates a diagram of a prior art
network"
A communications system for carrying messages via a radio channel between
one central site of a plurality of central sites and a plurality of
two-way remote data units is disclosed. Each central site has a radio
coverage area and each remote unit has a unique address and association
with one of the central sites. When a message addressed to one of the
remote units is received in a central site, a file of remote unit
addresses is searched to find the location and central site association of
the remote unit to which the message is addressed. If an address match is
found indicating that the remote transceiver is in the coverage area of
the message-receiving central site, the addressed message is stored and
transmitted in that site. If an address match is found indicating that the
remote transceiver is in another central site, the addressed message is
conveyed to that site for transmission.
This would seem to cover delivering text to specific end-users; eg paging.
Here are two primary claims. The "patentese" is unfortunate and confusing, but the core claim in both cases is using RF links to transmit email.
claim 248 of patent 6067451
246. In a system comprising a communication system which transmits electronic mail containing information, with the electronic mail being inputted to the communication system from a plurality of processors, a RF system and an interface connecting the communication system to the RF system with the information contained in the electronic mail and an identification of a RF device in the RF system being transmitted from the interface to the RF system and broadcast by the RF system to an identified RF device, the identified RF device comprising:
a RF receiver, which receives the information when the identification of the device is detected in a broadcast by the RF system to the RF receiver; and
a memory, coupled to the RF receiver, which stores the information received by the RF receiver contained in the electronic mail inputted to the communication system.
247. The RF device in accordance with claim 246 further comprising:
a processor, coupled to the memory, which after the information has been outputted from the memory, processes the information.
248. The RF device in accordance with claim 247 further comprising:
at least one application program, executed by the processor,
which processes the information.
Fig. 8 is the first non-prior-art figure. It is described under the "BEST MODE FOR CARRYING OUT THE INVENTION" heading.
Certainly Campana appears to be patenting the use of RF links in email.
claim 150 of patent 6317592
150. In a communication system comprising a wireless system which communication system transmits electronic mail inputted to the communication system from an originating device which executes electronic mail programming to originate the electronic mail, mobile processors which execute electronic mail programming to function as a destination of electronic mail, and a destination processor to which the electronic mail is transmitted from the originating device and after reception of the electronic mail by the destination processor, information contained in the electronic mail and an identification of a wireless device in the wireless system are transmitted by the wireless system to the wireless device and from the wireless device to one of the mobile processors, the wireless device and one mobile processor comprising:
a wireless receiver connected to the one mobile processor with the one mobile processor receiving the information contained in the electronic mail after the identification of the wireless device is detected by the wireless receiver in a broadcast by the wireless system.
They have developed technology for storage of digital images of bank checks.
From their website: The Corporation was founded in 1998 and was granted its first two Network architectural patents (5,910,988 and 6,032,137) in 1999 and 2000, respectively. The patents detail the important and revolutionary aspects of DataTreasury's systems for remote image capture, document imaging, centralized processing and electronic storage. Our innovations were particularly noted for enhanced security, fault tolerance and high reliability. These key elements form the underpinnings of DataTreasury's technology.
From politico.com/news/stories/0308/9202.html The company had benefited from a controversial 1998 court ruling that broadened the definition of a patent to include business processes.
Patent reform act singles out this patent for congressional revocation
It appears that DataTreasury is claiming a business-method patent on the use of electronic image scanning for check processing. They are looking for very significant licensing fees. Again, EVERY piece of the technology has been around from well before the patent (scanning, secure storage, ???)
The DataTreasury patent has been singled out by Congress for action, but it is not clear what will happen.
Others:
Barriers to entry
Patent Trolls: companies that have no assets but patent claims, and don't attempt to produce anything but simply collect. Is this bad? Or are such companies just creating a market for small inventors to sell their inventions?
Patent reform:
Patent Reform Act of 2007: H.R. 1908 and S. 1145 (did not pass)
Those in bold are the most significant.
did not pass (yet) Here are some of the proposed changes in U.S. patent law
Discuss: first-to-file: who benefits? how are small inventors affected? How are prior-art rules affected?
publish applications.
This has again been introduced in 2009; apparently the issues are
the damages calculation, post-issuance reexamination proceedings, and
defining inequitable conduct.
[Note that NTP argued that RIM's conduct was inequitable simply because NTP had sent them a letter outlining its patent claims, and RIM had disagreed.]
KSR v Teleflex, April 30, 2007
Some good patent news
This Supreme Court case altered the legal standard for disproving "non-obviousness" in favor of defendants. It is now rather easier to challenge patents on this basis.
Teleflex had a patent on a pedal coupled to an electronic throttle control (basically cruise control). The question was whether that was "obvious"
The proper question to have asked was whether a pedal designer of ordinary skill, facing the wide range of needs created by developments in the field of endeavor, would have seen a benefit to upgrading [a prior art patent] with a sensor
not thought of it by themselves, and not motivated to implement the change, but simply saw the benefit. The old "nonobviousness" standard often in effect required proving that a patent was "prior art". This test was known as the "teaching-suggestion-motivation" test. All three pieces had to be there.
Teaching-suggestion-motivation test: too narrow
Bilski case: (decision released October 30, 2008)
This is a HUGE case, decided by an en banc sitting of the Federal Circuit. Some think the Supreme Court will overrule it, but it may be more likely that SCOTUS will adjust relatively narrowly.
Bilski patent: Claimed method of managing the risk of bad weather in commodities trading.
He submitted a patent application seeking exclusive rights to a method of using hedge contracts to reduce the risk that a commodity's wholesale price might change.
Again, the technique fails under both prior-art and obviousness standards. But those don't apply in the same way to business-method patents.
Patent was rejected by the Patent Board of Appeals. The Board, in rejecting the claim, asked the fedearl circuit court for assistance in determining patentability of non-technological method claims.
The federal circuit court did the following:
The court by its own action grants a hearing en banc. The parties are requested to file supplemental briefs that should address the following questions:
The court did affirm the need for a physical transformation. Business patents, and perhaps software patents, are in TROUBLE.
Note that their reasoning was taken straight from the few SCOTUS cases on record.
The question: is a patent "tailored narrowly enough to encompass only a particular application of a fundamental principle rather than to pre-empt the principle itself"?
Benson: NO
Diehr: YES (one of the prior SCOTUS cases)
Bilski: NO
Part of the Benson ruling: Transformation and reduction of an article 'to a different state or thing' is THE clue to the patentability of a process claim that does not include particular machines.
The Diehr patent was for making rubber, using a computer to control the process. It wins the "different state or thing" standard hands down.
They also DISMISS the "useful, concrete, or tangible result" test: that is NOT enough to establish patentability.
They also reject the "technological arts" test (see above) that was once-upon-a-time part of the method-patent rules. They agree that it is too hard to tell whether something involves the technological arts; however, unlike the USPTO, they end up ruling the OTHER WAY; that is, to reject MORE broadly than the TA test.
machine-or-transformation test: emphasize the OR.
We will, however, consider some of our past cases to gain insight into the transformation part of the test. A claimed process is patent-eligible if it transforms an article into a different state or thing. This transformation must be central to the purpose of the claimed process. But the main aspect of the transformation test that requires clarification here is what sorts of things constitute "articles" such that their transformation is sufficient to impart patent-eligibility under §101.
Tanning leather curing rubber (Diehr case)
The raw materials of many information-age processes, however, are electronic signals and electronically-manipulated data. And some so-called business methods, such as that claimed in the present case, involve the manipulation of even more abstract constructs such as legal obligations, organizational relationships, and business risks. Which, if any, of these processes qualify as a transformation or reduction of an article into a different state or thing constituting patent-eligible subject matter?
Note that while the Bilski decision does not claim to reverse State Street (the case that led to business-method patents), most commentators seem to feel that it has that effect. It is less clear that Bilski means software patents no longer stand.
Applying Bilski to famous cases
RSA? material transformation in "real" terms The transformation is to a file. While it is electronic, it is decidedly material.
MP3? material transformation in "real" terms? An mp3 file isn't a physical thing, but it does have a certain "thingness". People think of them as things, and buy them as things. An mp3 file is material.
NTP? maybe no? The argument can be made that there is no "material thing" on the table here. Email messages are NOT it; the patent only addresses the delivery of email.
DataTreasury?
It seems unlikely that DataTreasury's patents would stand up
to this new test.