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
See the Bilski case (later) for more updates.
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:
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.
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?
Note that the established-company-versus-established-company defense of a "patent bank" is useless here.
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:
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?
I4i is not such a company; they did produce an XML-based product.
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 can have 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?
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 quite weak, unless the claim is for the business
idea of email to wireless devices. 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. (This may actually have been disinformation from RIM, as
they proposed a different forwarding system as a "workaround", part of
a negotiating tactic.)
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
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.)
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
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.
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). (2 of 9 NTP v RIM
claims)
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 6067 451
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.
Patent reexaminations (from http://en.wikipedia.org/wiki/NTP,_Inc.)
To look these up, start at http://portal.uspto.gov/external/portal/pair.
Actual documents are under the "image file wrapper" tab. Don't forget
"select new case" as appropriate!
In the '451 rejection, the patent examiner found that the "Perkins"
prior art included all features of the NTP system, at least when the
NTP system was "broadly construed". Also, NTP tried to argue that
Perkins wasn't an "electronic mail system", by construing that term very narrowly.
See also page 114, regarding "obviousness". NTP made the following
claims as to why their approach was an improvement:
They have developed technology for storage of digital images of bank
checks. They actually did develop the whole system, although again the inevitability
issue arises here. They did not develop any of the actual root
technology: scanners, or data security, or digital storage systems with
enough capacity to hold images for negligible cost.
From their website:
That said, it is clear that none
of DataTreasury's ideas are revolutionary.
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.
The proposed (but never passed) patent-reform act of 2007 singled 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,
???)
Should a new (but straightforward) application of existing technology be patentable?
The DataTreasury patent has been singled out by Congress for action, but it is not clear what will happen.
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. At least the last provision has been
removed from the 2009 bill. A
good-faith defense for believing a patent was invalid is also included.
Also included is a definition of prior art to include anything
"available to the public"; publication no longer would have to occur.
[Note that NTP argued that RIM's conduct was held to be 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 slightly 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.
Another sentence from that decision:
Does that cover my obvious-in-context approach? Does that suggest
that not clicking the mouse is obvious?
Teaching-suggestion-motivation test: too narrow
Would this have helped RIM? Probably.
Federal Circuit decision released October
30, 2008
Supreme Court decision released June 28, 2010 (decision here)
This was a very significant case. It was decided at the appellate level by an en banc sitting of the Federal Circuit. They proposed a "machine or transformation" test for patentability of abstract processes. The Supreme Court then heard the case, and while they did not uphold the "machine or transformation" test, they ruled that Bilski's invention was not patentable because it was too abstract. There had been widespread speculation that the Supreme Court would use the Bilski case to rein in business-method patents, or at least make the patentability rules a little clearer. They apparently did not do either.
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.
The 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 appellate court did affirm the need for a physical transformation. Their central doctrine is "Machine or Transformation". This would have been a problem for business patents, and perhaps software patents.
Note that their reasoning was taken straight from the few SCOTUS cases on record.
The following question arises whenever a patent is applied for on an abstract process:
Benson: NO
Diehr: YES (one of the prior SCOTUS cases)
Bilski: NO
This part of the Federal Circuit's reasoning may still stand.
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.
The federal circuit dismissed 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 would have had a significant effect on
software patents.
Applying the Machine-or-Tranformation test 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.
To some of you, hacking is clearly
wrong
and there shouldn't even be a question here. If you're one of them,
just pay attention to the legal-strategies-against-hackers part.
However, is using a website in a manner contrary to the provider's
intentions always hacking? A more serious case is logging on to a site,
but not changing anything and in particular not committing theft.
Baase's "three phases of hacking"
1. Early years: "hacking" meant "clever programming"
2. ~1980-~1995:
hacking as a term for break-in
largely teenagers
"trophy" hacking
phone lines, BBSs, gov't systems
lots of social engineering
to get passwords
1994 Kevin Mitnick Christmas Day attack on UCSD
(probably not carried out by Mitnick personally), launched from
apollo.it.luc.edu. [!]
3. post-1995: hacking for money
early years / trophy
Phone phreaking: see Baase, p 256
Joe "The Whistler" Engressia
was born blind in 1949, with perfect pitch. He
discovered (apparently as a child) that, once a call was connected, if
you sent a 2600 Hz tone down the line, the phone system would now let
you dial a new call, while continuing to bill you for the old one.
Typically the first call would be local and the second long-distance,
thus allowing a long-distance call for the price (often zero) of a
local call. Engressia could whistle the 2600 Hz tone.
According to the wikipedia article on John Draper,
Engressia also discovered that the free whistle in
"Cap'n Crunch" cereal could be modified to produce the tone; Engressia
shared this with Draper who popularized it. Draper took the nickname
"Cap'n Crunch".
As an adult, Engressia wanted
to be known as "Joybubbles"; he died August 2007
Draper later developed
the "blue box" that would generate the 2600 Hz trunk-line-idle tone and
also other tones necessary for dialing.
How do we judge these people today? At the time, they were folk heroes.
Everyone hated the Phone Company!
Is phone-phreaking like file sharing? Arguably, there's some public
understanding now that phone phreaking is wrong. Will there later be a
broad-based realization that file-sharing is wrong?
How wrong is what they did? Is
there a role for exposing glitches in modern technology?
From Bruce Sterling's book The Hacker
Crackdown: Law and Disorder on the Electronic Frontier, mit.edu/hacker:
What did it mean to break into a computer
without permission and
use its computational power, or look around inside its files without
hurting
anything? What were computer-intruding hackers, anyway -- how should
society, and the law, best define their actions? Were they just
browsers, harmless intellectual explorers? Were they voyeurs,
snoops, invaders of privacy? Should they be sternly treated as
potential
agents of espionage, or perhaps as industrial spies? Or
were they best
defined as trespassers, a very common teenage misdemeanor? Was
hacking theft of service? (After all, intruders were getting
someone
else's computer to carry out their orders, without permission and
without
paying). Was hacking fraud? Maybe it was best described as
impersonation. The commonest mode of computer intrusion was (and
is) to swipe or snoop somebody else's password, and then enter the
computer in the guise of another person -- who is commonly stuck with
the blame and the bills.
What about the Clifford Stoll "Cuckoo's Egg" case:
tracking down an
intruder at Berkeley & Livermore Labs; Markus Hess was a West
German citizen allegedly working for the KGB. Hess was arrested and
eventually convicted (1990). Berkeley culture at that
time was generally to tolerate such incidents.
Robert Tappan Morris (RTM) released his Internet worm in 1988; this was
the first large-scale internet exploit. Due to a software error, it
propagated much
more aggressively than had been intended, often consuming all the
available CPU. It was based on two vulnerabilities: (1) a buffer
overflow in the "finger" daemon, and (2) a feature [!] in many sendmail
versions that would give anyone connecting to port 25 a root shell if
they entered the secret password "wiz".
Were Morris's actions wrong? How wrong? Was there any part that was legitimate? RTM was most likely trying to gain fame for discovering a security vulnerability. There was no financial incentive.
The jury that convicted him spent several hours discussing Morris's
argument that when a server listened on a port (eg an email server
listening on port 25), anyone was implicitly authorized to send that
port anything they wanted.
That is, it is the server's responsibility to filter out bad data.
While the jury eventually rejected this argument, they clearly took it
very seriously.
Mitnick attack: how much of a problem was that, after all? There are
reports that many Mitnick attacks were part of personal vendettas.
(Most of these reports trace back to John Markoff's book on Mitnick;
Markoff is widely believed to have at a minimum tried to put a slant on
the facts that would drive book sales.)
Mark Abene (Phiber Optik) was imprisoned for a year. That was rather
long for the actual charge. Mitnick himself spent
nearly five years in prison, 4.5 of which were pre-trial. That situation is similar to that of Terry
Childs in San Francisco, who is still in prison.
Calce, Abene & Mitnick now both work in computer security. Is this
appropriate?
One theory is that gaining notoriety for an exploit is the way to get a security job. Is that
appropriate?
If not, what could be done differently?
Modern phishing attacks (also DNS attacks)
Stealing credit-card numbers from stores. (Note: stores are not supposed
to retain these at all.
However, many do.)
Boeing attack, Baase p 262: how much should
Boeing pay to make sure no files were changed?
TJX attack: Baase p 87 and p 271
The breakin was discovered in December 2006, but may have gone back
to 2005.
40 million credit-card numbers were stolen! And 400,000 SSNs, and a
large number of drivers-license numbers.
Hackers apparently cracked the obsolete WEP encryption on wi-fi
networks to get in, using a "cantenna" from outside the building. Once
in, they accessed and downloaded files. There are some reports that
they eavesdropped on data streaming in from stores, but it seems likely
thatdirect downloads of files was also involved.
Six suspects were eventually arrested. I believe they have all now
been convicted; there's more information in the privacyrights.org page
below (which also pegs the cost to TJX at $500-1,000 million).
For a case at CardSystems Solutions,
see
http://www.schneier.com/blog/archives/2005/06/cardsystems_exp.html.
Here the leak was
not due to wi-fi problems, but lack of compliance with standards was
apparently involved. Schneier does a good job explaining the
purely contractual security requirements involved, and potential
outcomes. Schneier also points out
The TJX and CardSystems attacks were intentional, not just data gone missing.
When attacks ARE about money, often the direct dollar value is huge. And tracing what happened can be difficult. An entire bank account may be gone. Thousands of dollars may be charged against EVERY stolen credit-card number.
Here's a summary of several incidents: http://www.privacyrights.org/ar/ChronDataBreaches.htm#CP.
An emerging standard is Payment
Card Industry Data Security Standard (PCI DSS), supported by
MasterCard, Visa, Discover, American Express, and others. See http://www.pcicomplianceguide.org/pcifaqs.php
for some particulars; a more official site is https://www.pcisecuritystandards.org.
Note that PCI DSS is not a law, but is "private regulation". Once upon
a time, the most effective regulators of steam-powered ships were
insurance companies [reference?]. This is similar, but MasterCard and
Visa are not quite the same as insurers. From the FAQ above:
It is important to be familiar with your merchant account agreement, which should outline your exposure.
If you are a store, you can refuse to pay the fine. But then you
will lose the ability to accept credit cards. This is extremely bad!
Visa's CISP program is described at http://www.visa.com/cisp.
The PCI standards do allow merchants to store the name and
account-number data. However, this is strongly
discouraged. Sites that
keep this information are required by PCI to have it encrypted.
CardSystems
was keeping this data because they were having a higher-than-expected
rate of problems with transactions, and they were trying to figure out
why.
To some extent, PCI DSS compliance is an example of how ethical
behavior is in your own long-term best interest.
