The Black Art Of Getting A Bogus Patent Approved

from the just-keep-trying dept

Joe Mullin has an excellent and detailed blog post about how Scott Harris -- no stranger to patent-related controversy -- got some bad news in his patent lawsuit against FedEx over its barcode scanning system, as the court's claim construction greatly limited the patent. The patent is no longer technically held by Harris, but he may still have some economic interest in it. However, the shell company that holds the patent, BarTex, is still pushing forward and appealing the claim construction, and saying that every FedEx package that ships violates its patent on a two-part barcode. The big problem? It appears that similar technology had been in use long before Harris ever filed his patent -- including by FedEx. In fact, there's prior art in a national standard setting group.

Where the post gets interesting is that Mullin went on to explore just how Harris was able to get such a patent with so much prior art. The story highlights how so many terrible patents get granted:
Unfortunately for Harris, the two-part bar code had already been invented, according to the Patent and Trademark Office examiner who rejected all of the lawyer-inventor's claims. The inspector based his decision mainly on the existence of an earlier patent, No. 5,920,062. That patent--filed in 1997 and describing a bar code with multiple "modules"--belongs to Uniform Code Council, Inc. (also known as the folks who actually invented standardized bar codes; in case you're curious, such codes have been in use since since 1974.) See Harris' rejected original application [PDF].

Harris' bar-code inventing process didn't stop there. Like all patent applicants, he was allowed an unlimited number of chances to get it right. He modified his idea so that the bar code's second part would include its own unique information, but would also contain data embedded in the first part of the code. It was an idea, Harris explained in a four-page letter to the patent examiner dated April 15, 2003, that nobody had ever thought of  before: "Why would two bar codes be provided that included the same information? This is quite simply not obvious based on the prior art. In fact, it is the present inventors [sic] recognition that using two bar codes with overlapping information may produce a significant advantage..." See Harris' amended application [PDF].

Though the examiner found many examples of multiple-part bar codes, he didn't find any examples of ones that had multiple portions with redundant information similar to what Harris described. As a result, Harris was notified in July 2003 that his patent would be issued.

In a nutshell, Harris tried to get a patent on a certain type of bar code, and was turned down. Then he added what was essentially redundant information to his original invention, and, voila, the nation was blessed with a new invention.
Mullin goes on to explain how this sorta thing happens all the time, and the inevitable dangerous impact on companies that actually do innovate and do produce products. The "cost" to "invent" is incredibly low -- but the cost to "uninvent" is quite high:
The prosecution history of '377 patent is an object lesson in why defendants in infringement suits often express frustration over having to fend off patents that they consider vague, unreasonably broad, or just plain senseless given the state of the art in their industries. But the rules of acquiring patents strongly favor a determined and clever prosecutor.

Consider the examiner's position: He or she is faced with limited time and resources--and an applicant free to ask for as many "do-overs" as he can afford. The examiner can't say "no" without a reason to do so, and if that reason is prior art, it has to be more or less spot-on. It's also worth noting that examiners work in a system that rewards the granting of patents, but not endless arguments with an applicant.

Because Harris prosecuted the patent himself, it has only cost him about $2,000, according to PTO documents--$861 when he filed the application, $690 upon issuance, and a $450 maintenance fee paid in 2007. Contrast that with the hundreds of thousands of dollars--at going rates for IP litigation FedEx's costs--that FedEx has probably spent in legal fees to "uninvent" the '377 patent. Had the company not won at the Markman stage, and been forced to go to trial, its costs could have soared into the millions, even to secure a clean victory.
It's a story we've heard many times before, but the point is made pretty clearly here. As per usual, we will ask our regular patent system defenders to explain how the system "worked" in this case, and how a random lawyer with no intention of ever producing any product helped "promote the progress" by getting a patent on something that was already in widespread use, and then suing a large company for doing what it had already been doing all along?


Reader Comments (rss)

(Flattened / Threaded)

  1.  
    identicon
    Anonymous Coward, Apr 7th, 2010 @ 11:28pm

    http://www.slate.com/id/2250082/

    Last week, Federal District Judge Robert Sweet ruled that patenting a human gene amounts to nothing more than a "lawyer's trick."

    If we live in a world where a lawyer and their tricks cannot extract money from companies that actually make things then that's the kind of world I don't wish to live in.

    Sounds like some sort of innovative utopia. The solution is simple! Just hire more incompetent patent issuers.

    Problem solved!

     

    reply to this | link to this | view in thread ]

  2.  
    identicon
    Anonymous Coward, Apr 8th, 2010 @ 12:54am

    "every FedEx package that ships violates its patent on a two-part barcode."

    If it's an infringement, well, how long do you think it will be before FedEx moves to an open source bar-code standard like QRCode?

    Most hardware barcode scanner solutions that support FedEx barcodes also support QRCode because there is no licensing fees.

    I'm lost because this "High Density Barcode", is very similar to that used on many state's driver's licenses, and technologically is very similar to that used by FedEx.

    This lawsuit is misplaced. If they have a claim, they should be suing local and state municipalities for using high density barcodes on the back of drivers licenses.

     

    reply to this | link to this | view in thread ]

  3.  
    identicon
    Anonymous Coward, Apr 8th, 2010 @ 5:35am

    It's also worth noting that examiners work in a system that rewards the granting of patents, but not endless arguments with an applicant.
    So we have to rely on examiners having ethical standards? Yeah, we're screwed. Hmm, if I deny this application, then technology will continue to advance. But if I pass it, I get a 5k bonus at the end of the year! Guess who is gonna get a new TV for Christmas!

     

    reply to this | link to this | view in thread ]

  4.  
    identicon
    Anonymous Coward, Apr 8th, 2010 @ 7:18am

    Yep this is standard stuff, you modify your original application a bit and it goes through. Nothing new here. You only need to convince one or two folks at the patent office that you have something new/unique, it does not have to be good. The patent system is broken but that does not mean that it needs to go away completely.

    The other day you had an article/post how patents were bad for startups, that the money would be better spent elsewhere in the business. Today you claim:
    "The "cost" to "invent" is incredibly low -- but the cost to "uninvent" is quite high"

    If the cost to obtain a patent is "incredibly low" then it must not be too much of a burden on a startup.

     

    reply to this | link to this | view in thread ]

  5.  
    identicon
    Anonymous Coward, Apr 8th, 2010 @ 8:06am

    Re:

    One thing to consider is that a start up filing for a patent puts them in a big list of new ideas. Patent trolls then can reference that list against their patents and possibly be able to troll some money out of the start up.

     

    reply to this | link to this | view in thread ]

  6.  
    icon
    nasch (profile), Apr 8th, 2010 @ 10:28am

    Re:

    If it's an infringement, well, how long do you think it will be before FedEx moves to an open source bar-code standard like QRCode?

    I doubt that would make the lawsuit go away. There's nothing about open source that automatically makes it immune from patent, trademark, or copyright infringement lawsuits.

     

    reply to this | link to this | view in thread ]

  7.  
    identicon
    Scott, Apr 8th, 2010 @ 11:22am

    Re:

    If the cost to obtain a patent is "incredibly low" then it must not be too much of a burden on a startup. The cost is low for patent trolls, who do nothing but patent troll. A startup is actually spending lots of time and money on real work (like creating and marketing a service/product, doing market studies, paying a pile of programmers, investing in infrastructure, paying their hosting costs and rent). Startups don't have the free person-hours to spend all day dealing with endless patent revisions "on the cheap" like a one-person patent troll operation does. So, they have to pay for lawyers if they choose to apply for patents. How much do you think that costs then, on top of normal operating costs? When you actually think about what you said, you'll see that you're comparing apples and Space Shuttles.

     

    reply to this | link to this | view in thread ]

  8.  
    identicon
    staff, Apr 8th, 2010 @ 1:35pm

    smearing

    Like you, Mullin specializes in smearing inventors and small entities.

    Patent reform is a fraud on America. It is patently un-American.
    Please see http://truereform.piausa.org/ for a different/opposing view on patent reform.

     

    reply to this | link to this | view in thread ]

  9.  
    identicon
    Anonymous Coward, Apr 8th, 2010 @ 1:45pm

    Re: smearing

    "Staff", I can't believe you can post or even link to that content. Completely inaccurate, mis-leading and offers unsubstantiated arguements. The patent system by design rewards invention, not innovation, not delivery of a product to market.

    That entire webpage is just...well sad.

    -G

     

    reply to this | link to this | view in thread ]

  10.  
    identicon
    Anonymous Coward, Apr 8th, 2010 @ 3:05pm

    Re: Re:

    So, what you are saying is that startups never have folks on the payroll that are capable of writing a patent, startups must always hire a lawyer and always have high costs to obtain a patent. Have you ever worked for a startup? What do you base your opinion on?

     

    reply to this | link to this | view in thread ]

  11.  
    icon
    Ronald J Riley (profile), Apr 8th, 2010 @ 5:10pm

    America Needs More Like Scott Harris

    Scott Harris spread his wings and became an inventor. This is something which no doubt creates considerable envy and resentment in the ranks of big corporate legal and other stooges who have never had an original thought in their lives.

    It is common for inventors to generate capital by licensing their first inventions. When big companies take those inventions without licensing it is then necessary to to adjust their attitudes. It is those attitude adjustment which make those companies and their shills whine about mythical trolls. Of course, a troll is really just an inventor or partners of the inventor who has the gall to try to hold corporate thieves accountable.

    Entitlement minded big business, banking, insurance and tech has a vision for a different kind of patent system.

    Scott Harris personifies how our current patent system acts as a big equalizer and is one facet of America being a land of opportunity where people from all classes can challenge and beat the biggest companies. Those companies have formed two syndicates whose goal is to turn the patent system into a king's sport with Patent Deform legislation.

    American ingenuity is our single most important asset today. We need many more people like Scott Harris and far fewer large corporate parasites. Small business is the backbone of our economy and small business based on patented American ingenuity is the only edge we have to maintain our standard of living in the face of globalization and that means that inventors like Scott Harris need to be protected from corporate patent pirates.

    Ronald J. Riley,


    I am speaking only on my own behalf.
    Affiliations:
    President - www.PIAUSA.org - RJR at PIAUSA.org
    Executive Director - www.InventorEd.org - RJR at InvEd.org
    Senior Fellow - www.PatentPolicy.org
    President - Alliance for American Innovation
    Caretaker of Intellectual Property Creators on behalf of deceased founder Paul Heckel
    Washington, DC
    Direct (810) 597-0194 / (202) 318-1595 - 9 am to 8 pm EST.

     

    reply to this | link to this | view in thread ]

  12.  
    icon
    Ronald J Riley (profile), Apr 8th, 2010 @ 5:14pm

    Inventors Make Inventions

    "extract money from companies that actually make things then that's the kind of world I don't wish to live in."

    Inventors make inventions and it is a fact that those who make things could not make the things you want without someone making the inventions.

    Anytime you are ready to check out I would be happy to give you some suggestions about how to do so:)

    Ronald J. Riley,

    Speaking only on my own behalf.
    President - www.PIAUSA.org - RJR at PIAUSA.org
    Executive Director - www.InventorEd.org - RJR at InvEd.org
    Senior Fellow - www.PatentPolicy.org
    President - Alliance for American Innovation
    Caretaker of Intellectual Property Creators on behalf of deceased founder Paul Heckel
    Washington, DC
    Direct (810) 597-0194 - (202) 318-1595 - 9 am to 8 pm EST.

     

    reply to this | link to this | view in thread ]

  13.  
    icon
    Ronald J Riley (profile), Apr 8th, 2010 @ 5:20pm

    Examiners OK

    "So we have to rely on examiners having ethical standards?"

    The problem is not examiners, it is corrupt and incompetent USPTO management which has been influenced by well heeled transnational corporate crooks.

    Contrary to all the PR hype, having an IBM operative in the USPTO pushing IBM's agenda to prop up the company with Patent Deform and protect it from subsequent generations of inventors is not doing the people any favors.

    Ronald J. Riley,

    Speaking only on my own behalf.
    President - www.PIAUSA.org - RJR at PIAUSA.org
    Executive Director - www.InventorEd.org - RJR at InvEd.org
    Senior Fellow - www.PatentPolicy.org
    President - Alliance for American Innovation
    Caretaker of Intellectual Property Creators on behalf of deceased founder Paul Heckel
    Washington, DC
    Direct (810) 597-0194 - (202) 318-1595 - 9 am to 8 pm EST.

     

    reply to this | link to this | view in thread ]

  14.  
    identicon
    abc gum, Apr 8th, 2010 @ 5:52pm

    Re: Inventors Make Inventions

    I have read about those who do not recognise nor understand sarcasm.

     

    reply to this | link to this | view in thread ]

  15.  
    identicon
    abc gum, Apr 8th, 2010 @ 5:54pm

    Re: Examiners OK

    I do not see IBM as one of the big culprits in the "IP" arena, as typically they are the defendant

     

    reply to this | link to this | view in thread ]

  16.  
    identicon
    abc gum, Apr 8th, 2010 @ 6:04pm

    Re: America Needs More Like Scott Harris

    "Scott Harris spread his wings and became an inventor. "

    Errr, what?
    brb, gotta put on my farmer boots.

    "This is something which no doubt creates considerable envy and resentment in the ranks of big corporate legal and other stooges who have never had an original thought in their lives."

    This made me laugh. Are you serious? You actually believe what Scott Harris has done is original ... I do not believe that, I think you are full of it and you had a good laugh after having posted that drivel. As for the rest of your post ... umm well ... what complete and utter BS.

     

    reply to this | link to this | view in thread ]

  17.  
    icon
    BearGriz72 (profile), Apr 8th, 2010 @ 7:23pm

    Re: America Needs More Like Scott Harris

    At the risk of repeating Myself...

    Re: RJR - My Thoughts
    If You Want More Information

    Please DNFTT

     

    reply to this | link to this | view in thread ]

  18.  
    identicon
    enrolled agent 2010, Apr 9th, 2010 @ 1:26pm

    "It's a story we've heard many times before, but the point is made pretty clearly here. As per usual, we will ask our regular patent system defenders to explain how the system "worked" in this case, and how a random lawyer with no intention of ever producing any product helped "promote the progress" by getting a patent on something that was already in widespread use, and then suing a large company for doing what it had already been doing all along"

    Could this also be an oversight of the FedEx? If they really after their own, they would have made sure that their system was already patented to their name...

    But yeah, there are a lot of sleazy lawyers these days who makes a living taking advantage of "people" who are caught unaware.

     

    reply to this | link to this | view in thread ]


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