Computer Ethics, Summer 2010

Week 5, Thursday (class 15), June 24
Corboy Law Room 323


Patents


Reading original patent descriptions

You can look them up online. Follow uspto.gov -> patents -> patft (uspto.gov/patft). Or go directly to the search-by-patent-number page:
      http://patft.uspto.gov/netahtml/PTO/srchnum.htm


Viacom v Google

US District Court, Southern District of New York

Judge Stanton

Dated June 23, 2010

From the decision (at http://www.google.com/press/pdf/msj_decision.pdf):

From plaintiff's submissions on the motions, a jury could find that the defendants not only were generally aware of, but welcomed, copyright-infringing material being placed on their website. Such material was attractive to users, whose increased usage enhanced defendants' income from advertisements displayed on certain pages of the website, with no discrimination between infringing and non-infringing content.

Plaintiffs claim that .. "Defendants had 'actual knowledge' and were 'aware of facts or circumstances from which infringing activity [was] apparent,' but failed to do anything about it."

However, defendants designated an agent, and when they recieved specific notice that a particular item infringed a copyright, they swiftly removed it. It is uncontroverted that all the clips in the suit are off the YouTube website, most having been removed in response to DMCA takedown notices.

Thus, the critical question is whether the statutory phrases "actual knowledge that the material or an activity using the material on the system or network is infringing," and "facts or circumstances from which infrining acttivity is apparent" in §512(c)(1)(A)(i) mean a general awareness that there are infringements (here, claimed to be widespread and common), or rather mean actual or constructive knowledge of specific and identifiable infringements of individual items.

Here is §512(c)(1)(A) of the copyright act:

(c) Information Residing on Systems or Networks at Direction of Users.—

(1) In general. — A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider, if the service provider -

(A)(i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing;

(ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or

(iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;

The judge ruled that YouTube/google did not meet the standard of (A)(1): actual knowledge doesn't mean that you know it's going on wink wink nudge nudge, but that you have knowledge of specific infinging items.

In other words, the judge upheld the OCILLA takedown defense very strictly.

My guess is that Viacom will appeal, but that it won't help.

Update on part (ii) above, from page 10 of the decision. The House Report described this clause as "a 'red flag' test. A service provider need not monitor its service or affirmatively seek facts indicating infringing activity. However, if the service provider becomes aware of a 'red flag' from which infringing activity is apparent, it will lose the limitation of liability if it takes no action." This could be interpreted as a looser standard than "actual knowledge [of specific infringing content]" test of part (i), that Google prevailed on. Later [p 13],

Under this standard, a service provider would have no obligation to seek out copyright infringement, but it would not qualify for the safe harbor if it had turned a blind eye to "red flags" of obvious infringement.

YouTube/Google did just that. But then [p 14]

The important intended objective of this standard is to exclude sophisticated "pirate" directories -- which refer Internet users to other selected Internet sites where pirate software, books, movies, and music can be downloaded or transmitted -- from the safe harbor. Such pirate directories ... are obviously infringing because they typically use words such as "pirate", "bootleg', or slang terms in their URLs and header information to make their illegal purpose obvious to ... Internet users. ... Because the infringing nature of such sites would be apparent from even a brief and casual viewing, safe harbor status ... would not be appropriate.

So what does a "red flag" have to be? YouTube was not "obviously" a pirate site, but certainly the existence of infringing content was very well known. Although parts of the Congressional Reports quoted above do suggest that YouTube/Google had met the "red flag" test, existing case law generally suggests otherwise. And a "safe harbor" provision is of little use if it does not come with an "objective standard" (a term used in the Congressional Report).

On page 20 of the decision the judeg says "General knowledge that infringement is 'ubiquitous' does not impose a duty on the service provider to monitor or search its service for infringements."

State Street Bank case, and Business-Method patents

Patent 5193056

decided 1998; patent filed 1993
Basic outcome: financial-services software containing an algorithm is patentable. From the 1998 Federal Circuit decision:

(...) the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces 'a useful, concrete and tangible result' -- a final share price momentarily fixed for recording and reporting purposes and even accepted and relied upon by regulatory authorities and in subsequent trades.

Until then, business methods that contained software or algorithms could not be patented (to be more precise, this "business-methods exception" to patentability was an oft-stated maxim, but the courts had never ruled directly on it). The USPTO had trouble with this rule, in determining whether software was patentable, and at some point dropped their rule that software was unpatentable if it involved business methods. State Street Bank was granted a patent, and the case came as SSB apparently sued another bank which then tried to use the business-methods exception as a defense.

The State Street Bank case introduced the rule that a business method could be patented if it involved computers and "it produces a useful, concrete, and tangible result".

Once the USPTO began patenting software as part of a business process, it became too difficult to distinguish between sofware-as-algorithmic-invention and software-as-business-method. So the USPTO also reversed its longstanding refusal to grant patents purely for software (until then, software patents had to list some hardware involvement, although that was mostly a formality in practice).

This case opened the door to a huge influx of business-method patents, including Amazon's "one-click" method (below). For a while, the USPTO required business-method patents to involve computers (specifically, to have some connection to "the technological arts"), but even that was eventually thrown out in 2005 as too hard to enforce. However, there remains a great deal of overlap between business-method patents and software patents.

Exhibit A: Amazon "one-click" patent, # 5960411, granted 1999. Twenty-three days later, Amazon got an injunction against Barnes & Noble, and eventually won their case. BN had to stop using their "ExpressLane" shopping method.

The essential feature of the 1-click patent appears to be that you don't have to go through the usual multi-screen checkout process; you can just click "send me this stuff the usual way", and it will remember all your previous entries.

Paul Barton-Davis, one of Amazon's founding programmers, called the 1-Click patent "a cynical and ungrateful use of an extremely obvious technology" [emphasis added]. By "ungrateful", Barton-Davis apparently meant that Amazon had benefitted enormously from public-domain software ideas.

Other examples:
Several more-mundane patents on online shopping carts

IBM[?]'s patent on suggesting new purchases based on past ones

Things MAY be reined in by the recent Bilski case.

Stallman article: why software is different


1. There's no advance warning (but isn't this true of any patent?)

2. There is no easy way to read them. They are deliberately obscure. And, for software, this is directly tied to the fact that the algorithms are very general.

3. Some patents are just plain inappropriate, but fighting them is exhorbitant.

4. chicken-and-egg problem with converting from .gif to .png: how can you get browsers to support this? (This is partially resolved by browser plug-ins.)

5. "prior art" is very hit-or-miss; sometimes (often!) it was considered too obvious to document. More specifically, ideas ruled by the PTO to be patentable were often "CS folklore" but too obvious to publish.

6. Software tends to use many ideas per application, and so one software project might require licensing of many diffferent pieces. This makes incremental innovation difficult, for anyone. (Even microsoft.) This problem exists for software because writing software is in some sense much easier than traditional engineering, and so you can afford to put more ideas in.

7. Software licensing terms tend not to take into account the fact that projects use many ideas, and a given patented piece should be only a small part of the total.

8. Open source.

9. Patented standards are a large social cost.

10. It is not possible to search the patent database before the patent is granted

11. Tremendous software progress is often made with negligible investment; we don't need patents to encourage development.

12. Computing has a high rate of radical, as opposed to incremental, change.

An issue that Stallman doesn't address directly is that 20 years is a very long time in the software industry, and that locking an idea up for that long has the practical effect of stifling growth, not encouraging it. Software patents have had the effect of postponing adoption until patent expires (cf James Gosling's first language) (hint: his second language was Java).

A related issue is that weak patents can have HUGE social costs, by blocking core technologies that everyone needs.

And basic ideas are still being patented for a new use (eg the Steir hair patent)

Finally, another issue is the obvious-in-context problem I mentioned above, that does seem to be a special issue with software: often an idea is an immediate, trivial corollary of some later development, or of some more abstract way of looking at the situation. However, some earlier out-of-context patent may still apply. The XOR-cursor and Eolas patents may be of this type. It's not that embedded applets is an innovative idea, per se, it just takes a critical mass of web sites to become relevant.

Is software legitimately a special case?



Paul Graham

This would be a good time to take a quick look at the Paul Graham paper. Graham is both a venture capitalist and a software engineer (and a Lisp programmer!). One of his first points is the following:

One thing I do feel pretty certain of is that if you're against software patents, you're against patents in general. Gradually our machines consist more and more of software. Things that used to be done with levers and cams and gears are now done with loops and trees and closures. There's nothing special about physical embodiments of control systems that should make them patentable, and the software equivalent not.

Here are a few more, based largely on his experience as a venture capitalist. Patents, he feels, don't matter much to software startups, unlike physical-machine startups.
Graham has three reasons why patents don't matter:
  1. Software is complicated; the real issue isn't the software but developing -- and designing -- it. However, this argument also works the other way; if you have an idea, then you are better off pursuing patent enforcement than development, because development is hard. But also note Graham's point that if a big company tries to copy a little company's patents, there will be a "thousand little things the big company will get wrong".
  2. Startups seldom compete head-to-head with big companies; they "change the paradigm". You don't go into the word-processing business; you invent Writely (now part of Google Apps?). And, "big companies are extremely good at denial". They will go to great lengths to pretend that you don't exist, to "keep you in their blind spot". Suing a startup would mean you realized they were dangerous. He cites IBM as an example; it would have been demeaning for them to sue microcomputer developers. Also, for Microsoft to sue web-app developers (or smartphone developers) would be to admit that Windows is fading.
  3. Hacker opinion is against big patent lawsuits. If you're a big high-tech company, you'll lose a lot of your best people if you're seen "doing evil". This might be true for Google; it's less clear at Microsoft (though the employees there do care about principles). It's probably not true at Eolas.
What do you think of these? How does the Eolas case fit in?

And here's a student project from Stanford, dated 2000:
http://cse.stanford.edu/class/cs201/projects-99-00/software-patents
The authors are Carr, Gray, Watkins and Yang, and the patents they consider in depth are


MP3 patents and lawsuits

The MP3 idea was not obvious, and remains fairly complex. Alcatel-Lucent v Microsoft: Alcatel-Lucent won $1.5 billion in an infringement suit about mp3 decoders Feb 22, 2007

MS countersued for other patents

The judge eventually set aside the damages, and the appellate court agreed.

Aug 6, 2007: MS won new trial

MS is now suing A-L for other patents.

check out mp3licensing.com (Thompson) Royalty Rates: basic mp3 decoder: $0.75/unit

mp3 was published in 1991. Will all US mp3 patents expire in 2011? Original holder: Thompson Consumer Electronics & Fraunhofer Institute. These still hold the "core" mp3 patents.

MP3 Patent claimants:

To date, (some) patent holders have announced that no action will be taken against open-source decoders.

The mp3 compression algorithm is admittedly a deep idea. Part of it involves the use of wave decomposition to store the information more efficiently; part of it involves "psychoacoustics" to identify parts of a sound file that are "unhearable" and so can be deleted.

Note that patents are for the use of an idea in a specific context:

Patent problems:

submarine patents: you don't hear about them until too late!

prior art: hard to find, hard to document, trivial ideas were never written down!
This problem, at least, will go away with the passage of time.

non-obviousness: difficult to contest many ideas go into one program! Technology evolves extremely rapidly Violates settled expectations (important part of law!) What's patented seems to be more a matter of chance than anything else.

ignorance is no defense: "submarine" patents entire process is secret: you can be making good-faith effort to be noninfringing and get hit with a huge verdict.

wilful: you had advance notice of infringing. Your belief that the patent was invalid may NOT be a defense, although it has been accepted as a defense in some cases. Damages automatically triple.

Europe

EU Parliament voted in July 2005  648-14 AGAINST the EPO (European Patent Office) directive.

March 17, 2009: European Patent Office has asked the EU's "Enlarged Board of Appeal" to decide on the exclusion of software from patentability. The EPO has long been pushing for software patentability, and this is seen by some as an attempt to bypass the European Parliament.
See http://lwn.net/Articles/324022
Also http://press.ffii.org/Press_releases/EPO_seeks_to_validate_software_patents_without_the_European_Parliament.
Also http://www.ffii.org/EPOReferral. Note especially Q3, under Questions. Under some earlier rulings (T163/85 and T190/94), patentability required "a technical effect on a physical entity in the real world". However, other rules did not include this requirement.

European patent law is similar to the Diamond v Diehr standard: machines that use software are patentable, but not software that stands alone. However, in the US the Diehr standard evolved into software patentability; in Europe software remains unpatentable as such.

Here's an article from FFII.org entitled, "Why are Software Patents so Trivial?", in which they suggest that this is a fundamental problem: http://eupat.ffii.org/analysis/frili.

Who are the stakeholders in software patents? Are we stakeholders? Compare pharmaceuticals. http://www.pbs.org/cringely/pulpit/2005/pulpit_20050818_000863.html: "Do you feel helped by patent reform?"

If the Eolas patent had succeeded earlier in the game, Firefox might never have been started, and then Internet Explorer would still likely lack tabs, plug-ins, and other core features.

WHY does the situation seem so different from pharmaceuticals?


Role of "patent trolls", or patent licensing firms
("troll" as in "the troll under the bridge, demanding tolls", not "trolling" as in fishing for "flames")

Note that the established-company-versus-established-company defense of a "patent bank" is useless here.

Patents and standards-setting

Company A participates in creation of a standard; they suggest solution S for a particular issue. After the standard is widely adopted, company A announces that they have patented S, and that they will license it for a significant fee.

N-Data patent on ethernet speed autonegotiation:

http://arstechnica.com/news.ars/post/20080123-ftc-defends-ethernet-forces-patent-troll-back-under-bridge.html

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 and open source

The open-source community is a strong proponent of eliminating software patents.

Is the open-source community entitled to:

Is the open-source community entitled to the asterisk phone switch?

Does MS intend to destroy or hobble or marginalize linux through patents?

It is very well documented that the patent process has a very NEGATIVE impact on open-source development, and on generally accepted software adoption.

So if the purpose of software patents is to aid technological process, and it doesn't do that, are software patents a good idea?

What happens if the software in question is made available through a site in Europe, which (as of now) doesn't have strong software-patent laws? Should the site warn visitors from the US?

Is this at all like thepiratebay.org?


Patents: are the right ideas being patented? Or are patents being granted to trolls for peripheral ideas?
xor:   trolls?
rsa:   good
spreadsheets:   trolls?
eolas:   trolls?


Heckel Paper

Paul Heckel wrote Debunking the Software Patent Mythsfor the June 1992 Communications of the ACM. Heckel approaches software patents as a small inventor who has sued Apple over Hypercard and is in general very strongly pro-patent. He was actually faced with huge software-development debts and no future market because Apple had reproduced his idea. He makes several claims.

4197590
One is that the XOR patent, 4197590, is really about patenting what Heckel calls "largely the invention of the frame buffer". However, the concept of a frame buffer, or memory-mapped display (in which the video screen is memory-mapped into a location in RAM, so that writing to the screen is as simple as writing to memory) was apparently prior-art. The patent application claims that they invent a way for a small (eg 416x312) graphics window to allow viewing of a larger 2048x2048 virtual display, and panning across. That is a significant invention. However, there is a reasonable body of evidence that Cadtrak attempted to enforce the XOR-cursor portion of the patent alone.

From the patent abstract:

A computer graphics display system including random access raster memory for storing data to be displayed, a raster memory control unit for writing data into the raster memory, a video control unit for causing such information to be displayed on a CRT display screen....An XOR feature allows a selective erase that restores lines crossing or concurrent with erased lines. The XOR feature permits part of the drawing to be moved or "dragged" into place without erasing other parts of the drawing.

It seems to me that a major claim of this patent, and the only relevant claim past the 1984 introduction of the Macintosh, is the XOR feature.

4398249
Another is the natural-order-recalculation patent, 4398249. This was an invention of Rene K. Pardo and Remy Landau in 1970. Heckel claims that what Pardo and Landau really invented was the spreadsheet, although (apparently) in primordial form not recognizeable by later spreadsheet pioneers such as Dan Bricklin (VisiCalc); Bricklin is generally recognized as the inventor of the spreadsheet. Heckel does not name any software product Pardo and Landau produced. There was indeed an important legal case regarding the patentability of the idea; initially their request was denied by the PTO as an "algorithm. It is now considered to be an "early" software patent. Here's the idea:

Cell A depends on B if A needs B's value in its formula
Rule: Before calculating A, calculate all cells A depends on.
Duh.

The algorithm is called "topological sort"; published in the CS literature in 1963.

Spreadsheets were a brilliant idea (Dan Bricklin, VisiCalc?), but not order of recalculation.

Pardo and Landau sold the patent to the company Refac, which Heckel characterizes as "a white knight in the fight against the patent pirates". However, note the following line from the appellate court in Refac v Lotus, at http://www.ll.georgetown.edu/Federal/judicial/fed/opinions/95opinions/95-1350.html:

The district court did not abuse its discretion in holding that the '249 patent is unenforceable on the ground of inequitable conduct. [emphasis added]

Apparently Pardo and Landau were told by the USPTO that their patent was not fully disclosed; specifically

[T]he disclosure is not deemed of the level which would enable one with ordinary skill in the art to make and use the invention. The flow diagram which applicants represent in figure 2 is not of the detailed level which a programmer would need in order to write a program from.

They presented three supposedly disinterested witnesses who each submitted an affidavit that, yes, they could implement the desired program from the patent description. However, one of the three, Robert F Bullen, had a previous business relationship with Landau, that neither of them disclosed.

So much for "white knights".

There remains the broader concern that Pardo and Landau did not in fact appear recognize that they had a "spreadsheet", and that Dan Bricklin was the first to grasp that concept, and that what Pardo and Landau did have was just the idea of using topological sort when evaluating a large number of expressions with dependencies.

Here's the abstract of Pardo & Landau's patent, slightly edited, for compiling a set of formulas when some formulas may depend on the values of other formulas:

A process and apparatus (compiler program) carried out on a digital computer for converting a source program into an object program. The source program [consisting of a set of formulas] is entered into a first storage area of a computer. ... The compiler program then examines each formula to determine whether it has been defined [that is, whether it has no dependencies on as-yet-undefined formulas]. If the first formula has been defined, it is removed from the first storage area; placed in a second storage area; and marked as being defined. if the first formula examined has not been defined, it is retained in the first storage area. The compiler program repeats this process for each formula in the first storage area. After the formulas in the first storage area have been examined, the compiler program determines whether any formulas have been added to the second storage area. If so, the compiler program repeats the examination of the individual formulas still retained in the first storage area. The compiler program repeats the process until all formulas have been defined; added to the second storage area; and marked as being defined. The content of the second storage area is an object program which is executable by the computer.

2009 is a little later than 1972, and some of these ideas are now somewhat standardized, but without being familiar with this specific algorithm I was able to come up with it "on my feet" in class once. I see no evidence here of any spreadsheet-like package.

.

NTP v RIM (Research In Motion): maker of Blackberry

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.

Note that in 1991 email was still in its infancy.

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.] I am trying to find out the USPTO final decision here. Here is a RIM update on the patent-office reexamination; I do not think it is final and it is also a press release.

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

How could the court and the USPTO be so far apart on this?

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. Supposedly, in court the burden would be on NTP to prove the patent valid, while during a USPTO reexamination the burden of proof is supposedly on the challengers. So the burden-of-proof issue should have worked in RIM's favor.It did not.

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 apparently wouldn't accept messages from sendersuntil the destination was available and prepared to accept delivery. Or something like that.

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.

Despite the well-established idea of store-and-forward delivery of email over any type of IP links, Judge Spencer allegedly claimed (I don't have a source for this, but remember reading it) that the case "wasn't even close". How could this be?

One possibility is that the judge saw the Campana patent as a non-IP way of delivering email over the last link. That is, neither NTP nor RIM was really bringing the Internet to handheld browsers; they were extracting email messages and then sending them over a proprietary protocol. That might make sense as a genuine invention.

However, we're again up against the "inevitability" issue here: the idea itself is obvious, and what RIM really brought to the table was the capital to build the appropriate wireless network.

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.)



The PTO has by now issued non-final opinions withdrawing most of the NTP patents. How could the court and the PTO be so far apart in their understanding of the issue? Perhaps two things:
The central issue is that NTP patented the idea of sending email to small portable wireless devices and RIM implemented just that. But when you look at the building blocks, there basically aren't any. NTP introduced no technical innovations. All the components were obvious.

Should you be able to patent the idea of sending email to wireless devices? Given that wireless devices were already widespread, but nobody was sending email to them, at least not as endpoints?

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. However, the notion that laptop users had to dial in to retrieve email was also something that many people felt was "inevitable".

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 or modify 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 system on which it is installed. ... Indeed, 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 still 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

Somehow, in the appellate case RIM is constantly on the defensive with relatively farfetched claims. What happened to the central idea that Campana's patents were about to be overturned?

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

was lost. (They may have felt that was a lost cause.)

Arguably, though, it should have been evident from the evidence they were submitting that their claim amounted to a mass of details, not any grand principle.

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 that an 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 and http://cs.luc.edu/pld/ethics/campana/451.

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.