Why Does The US Patent Office Keep Approving Clearly Ridiculous Patents?

from the patent-office-is-as-patent-office-does dept

Imagine you’re on your way to deliver a case of beer to a party. Before you get there, your boss sends you a text: They want 2 cases now. You read the text while driving (don’t do that), so you deliver an extra case when you arrive. Having successfully completed that task, you leave for your next delivery.

Congratulations! You might get sued by the owner of April’s stupid patent of the month.

This month’s winner, US Patent No. 9,013,334 (the ‘334 patent), has the prosaic title: Notification systems and methods that permit change of quantity for delivery and/or pickup of goods and/or services. It issued just last week, on April 21, 2015. As its title suggests, the patent claims a “method” of updating delivery information. It belongs to Eclipse IP LLC, one of the most litigious patent trolls in the country. Eclipse belongs to an elite group of trolls (such as Arrivalstar and Geotag) that have filed over 100 lawsuits.

Eclipse owns a patent family of more than 20 patents, all of which claim priority back to a single 2003 provisional application. These patents claim various closely related “notification systems.” Eclipse interprets its patents very broadly and has asserted them against a wide range of mundane business practices. For example, in January it sent a letter claiming that Tiger Fitness infringes one of these patents by sending emails to customers updating them about the status of orders. This letter explains that “Eclipse IP aggressively litigates patent infringement lawsuits” and that “litigation is expensive and time consuming.” The letter demands a $45,000 payment.

We think that all of Eclipse’s patents deserve a stupid patent of the month award. But the ‘334 patent is especially deserving. This is because the Patent Office issued this patent after a federal court invalidated similar claims from other patents in the same family. On September 4, 2014, Judge Wu of the Central District of California issued an order invalidating claims from three of Eclipse’s patents. The court explained that these patents claim abstract ideas like checking to see if a task has been completed. Judge Wu applied the Supreme Court’s recent decision in Alice v CLS Bank and held the claims invalid under Section 101 of the Patent Act.

All of Eclipse’s patents were both “invented” and prosecuted by a patent attorney named Scott Horstemeyer (who just so happens to have prosecuted Arrivalstar‘s patents too). Patent applicants and their attorneys have an ethical obligation to disclose any information material to patentability. Despite this, from what we can tell from the Patent Office’s public access system PAIR, Horstemeyer did not disclose Judge Wu’s decision to the examiner during the prosecution of the ‘334 patent, even though the decision invalidated claims in the patent family. While Horstemeyer has not made any genuine contribution to notification “technology,” he has shown advanced skill at gaming the patent system.

Judge Wu’s reasoning applies directly to the ‘334 patent. While one claim in the ‘334 patent expressly requires “computer program code” executed to carry out the method, this does not make a difference. Indeed, Judge Wu explained that, under Alice, it is not enough that the claimed methods must be performed by a “specially programmed” computer. It appears Horstemeyer hoped the Office would not notice this decision and would simply rubber-stamp his application. Sadly, that is exactly what happened. The Patent Office issued the Patent No. 9,013,334 without raising Alice or Section 101 at all. We believe this is part of a disturbing trend of Patent Office decisions that ignore Alice where courts have struck down almost identical claims.

Trolls like Eclipse will continue to thrive as long as the Patent Office gives them stupid patents and courts allow them to use the cost of litigation to extort settlements. Reform such as the Innovation Act will make abusive patent litigation less attractive. But we need broader reform to stop the Patent Office from being a rubber stamp for vague and overbroad software patents.

Late breaking addition: As if to drive home just how much of a rubber stamp it is, the Patent Office issued yet another patent to Eclipse yesterday. Patent No. 9,019,130 is almost identical to the ‘334 patent, except it deals with updating “time” information instead of “quantity” information.

Republished from the EFF’s Stupid Patent of the Month series

Filed Under: , , ,
Companies: eclipse ip

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Comments on “Why Does The US Patent Office Keep Approving Clearly Ridiculous Patents?”

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That One Guy (profile) says:

Careful there

You’d better be careful there, pointing out when and where the USPTO has screwed up is now considered an ‘improper protest’ if you do so using examples.

If you want to say that they made a mistake, you have to use broad, general language, like ‘they may have made a mistake granting a patent at some point, though unfortunately I can’t give you any examples’.

That One Guy (profile) says:

Re: Re: Careful there

Hmm, you may be right, might still have too many details. How about, ‘Some government agency may have made a mistake at some point, but I don’t have any details’?

No, that’s being critical of those in power, which is also an ‘improper protest’, so that’s no good either. Hmm….

‘Someone may or may not have made a mistake at some point, though I don’t have any details’ perhaps?

Anonymous Coward says:

Re: Careful there

Oh, is this one of the clowns who pulled that childish stunt? Burned what little good will patent office clerks have toward persistent pests? Even if taken seriously before, I bet EFF filings now go to bottom of the pile over and over. Petty bureaucrats are petty, so don’t annoy them unduly.

JoeCool (profile) says:

Just another day at the USPTO

I always see it like this in my imagination: our intrepid patent examiner is sitting at a desk, the IN BOX is overflowing with the thousands of applications he has to get through in this period (day, week, whatever). He’s reading legalese that’s as dense and inscrutable as Chinese instructions on how to censor the internet. After a couple hours, his eyes are glazing over and he’s no longer reading the application, but humming the theme to Gilligan’s Island as the professor explains how he made a working computer from coconuts and palm fronds.

He’s shakes his head, slaps himself a few times in a vain effort to wake up, looks over at the even larger pile of applications to go, and stamps “APPROVED” on the one he’s looking at. Then he takes a break and goes to cry in the employee lounge until the super forces him back to his desk.

Anonymous Coward says:

Okay, patent office and patent system is broken! What's your solution?

Even wishes are lacking in all Techdirt/EFF items. Complaining is easy and draws clicks, but a practical solution within the system is difficult and no one will commit.

Neither Techdirt nor EFF have any articulable goals. These professional kibitzers don’t even recognize the need for goals, only say needs more study!

That One Guy (profile) says:

Re: Step one: Admit there is a problem

I may not know how to fix a car, but if I see one stalling out every two blocks, I would still be justified in pointing out that it’s clearly broken, and someone should look into finding out the problem and fixing it.

Just because you don’t have an answer on how to fix something, does not make pointing out that it’s broken and in need of fixing any less important. It’s a rare problem that gets solved without enough people admitting that it is a problem after all.

Anonymous Coward says:

Re: Re: Step one: Admit there is a problem

Let’s ask Mechanic Masnick!

Mr Masnick, with your Ivy League degree and your more than decade studying the problem of the patent system being “broken” (taking that as given), please give us your top ten ways you think could improve the system — doesn’t have to fix it all — and this is just brain-storming, so just toss them out.

Now all we have to do is wait. I hear Masnick’s fingers tapping keys even now…

JoeCool (profile) says:

Re: Re: Re: Step one: Admit there is a problem

I recommend one change: if it takes a lawyer to interpret it, it’s invalid. Remember that a valid patent should allow a person skilled in the art to recreate the patented object/process from the application. How is that satisfied if you need a team of lawyers to figure out what the patent says? The worst of the worst patents are made by lawyers for lawyers… specifically, those lawyers who make up patent troll companies.

That One Guy (profile) says:

Re: Re: Re: Step one: Admit there is a problem

I like how you seem to think he has nothing better to do than obsessively browse through all the articles on the site in order to spot any comments that may be directed his way, as though his not ‘answering’ you promptly would in any way mean anything other than he has other things to do or that he never saw your comment.

John85851 (profile) says:

Re: Re: Step one: Admit there is a problem

A little correction:
Just because you don’t have an answer on how to fix something doesn’t mean you shouldn’t find someone who can fix it.

Like your car example, if you see something wrong, you take it to a mechanic who can diagnose and fix it. You yourself don’t need to know anything engines or brakes.

Anonymous Anonymous Coward says:

Re: Okay, patent office and patent system is broken! What's your solution?

Some of us have a goal. It may not be the right one, and it is pretty extreme. It would however put us in a good position to start over, so long as our legislative representatives can be…shall we say coerced…into representing their constituents rather than their bribers otherwise termed as their contributors.

That goal is to eliminate all IP with a very narrow exception in trademark where actual confusion to a costumer is involved and is in the same business in the same market, and that does not include publicity rights in any way shape or form.

Like I said, extreme.

James Burkhardt (profile) says:

Re: Okay, patent office and patent system is broken! What's your solution?

You dont even need to refrence anything but this article. This title of this article asks a direct question that both posits a problem (The copyright office is approving patents on vague, abstract “do-it-on-a-computer patents contrary to the Alice decision) and offers the apparent and obvious solution (adhere to the law and stop granting abstract patents).

I also fail to see how the EFF doesn’t have articulable goals. Unless by ‘articulable goals’ you mean, as the trolls often do, fully fleshed out legislation ready to be lobbied. I could give you the sound bites, or allow them to tell you about their work in very clear goals here: https://www.eff.org/issues

Anonymous Coward says:

Re: Okay, patent office and patent system is broken! What's your solution?

I think the solution is pretty easy. Every patent case should go through a hearing process. Many of these can be thrown out as frivolous. The hearing judge then has the power to both throw out the case and fine the accuser for the cost of the hearing. Of course the accuser can then fight the fine in a court of law, but the accused is it off it by that point.

That isn’t a complete fix! But it should help with many of the truly absurd ones. Many times these are paid when BOTH sides know the accuser could never win. It’s just cheaper to pay than fight. We need a way to address those!

HMTKSteve says:

long way since Edison

My view on patents is that if the patent application can not be used to create what is being patented it should not be patentable.

Look at Edison’s patent for the electric lightbulb. It is very clear.

These troll patents we see today are the equivalent of a three step get rich scheme where the second step is a black box with a row of question marks on it.

Jeff Green says:

Re: long way since Edison

Actually Edison’s electric light patents were far from clear, and also probably not inventive as it described nothing more than obvious improvements on already existing ideas, both patented and not. His team didn’t discover the filament that worked until well after the patent was filed and indeed in other countries the primacy of his inventions for the purposes patents was not accepted.
The patent system has been broken for MANY years, James Watt and Matthew Boulton used very dubious patents to stifle any and all improvements in steam engines for decades, Alexander Graham Bell’s telephone patent has long been mired in controversy, Marconi with Radio and countless other examples keep cropping up. These current patents are egregiously bad because they clearly derive from complete non-inventions but that’s nothing new!

USPTO says:

Our procedure for approving patents

Step 1. Does patent application contain correct technical legalese? Yes – tick, No – tick.

Step 2. Has patent application been filed by correct patent owner? Low-life lawyer – double tick, anyone else – tick.

Step 3. Has correct fee been paid? Yes – tick, No – cross.

Step 4. Is number of ticks received greater than 3 then issue patent.

Step 5. Analyse patent for validity – give to monkey in B-03 for analysis.

Spaceman Spiff (profile) says:

Goes to show

Patent applications for truly innovative stuff go through hell to get approved, usually taking several iterations and refinements. Worthless ones seem to fly through the process. I suspect this dichotomy is due to the fact that the examiners are idiots and while they can understand the latter, the former actually requires some intellectual effort – otherwise it would be obvious and thus not patentable.

Anonymous Coward says:

First all, the Alice guidelines are not even a year old, and this patent was probably approved months ago, so we have no way of knowing if the examiner had sufficient training of the Alice ruling at the time of allowance. But it’s easy to peck on the examiner with no insight into what the job comprises, and how difficult it is to find proper references that read into EVERY single limitation in a claim, right? But hey, look at the patent and at the claims, then see if you can find prior art (i.e. journal articles, patent publications, etc.) that EXACTLY covers ALL claim elemenets of the claims (every single word counts). By the way, you have to look at stuff published prior 2003 (as it does have some priority from that time, so way before smartphones), oh, and yeah you have 3 hours (because as you pointed out, examiners have nearly a dozen applications each biweek). Good luck to you! The majority of examiners are hard working, dedicated employees who really believe they are serving the American public and promoting innovation. I can also turn this around and ask: “How exactly is this good journalism”?

Anonymous Coward says:

Method of exercising a cat
US 5443036 A


A method for inducing cats to exercise consists of directing a beam of invisible light produced by a hand-held laser apparatus onto the floor or wall or other opaque surface in the vicinity of the cat, then moving the laser so as to cause the bright pattern of light to move in an irregular way fascinating to cats, and to any other animal with a chase instinct.

Mason Wheeler (profile) says:

You read the text while driving (don’t do that), so you deliver an extra case when you arrive.

Don’t do that? I do that all the time, and it’s perfectly safe: my car has a Bluetooth link to my phone, and it uses text-to-speech to read text messages to me. It’s no more of a dangerous distraction than listening to the radio.

John Fenderson (profile) says:

Re: Re:

“It’s no more of a dangerous distraction than listening to the radio.”

Although the precise place on the list varies by study, listening to the radio is consistently in the top 10 most common contributing factors in auto accidents. It’s usually in the top 5.

Having a passenger in the car with you is even more dangerous.

Anonymous Coward says:

an idea to solve the problem.

One of the issues here is that patent applicants get an unlimited number of tries.

i think that after the first amended application, they (and any one else) should be permanently bared from using ANY of the claims in the patent application. these claims would then go into the prior art database.

Coyne Tibbets (profile) says:

Say it isn't so

I was told a story once by someone who worked for the government, reviewing food at port of entry to the United States. He related what happened one time, when he rejected a shipload of orange juice because it was contaminated. The administrator’s first move was to yank him off the case. Then, they ordered test after test after test–according to him, sixteen tests in all–until they finally found a test that was bad enough to pass the orange juice. Then they approved it for entry. He, of course, was cashiered for his temerity, sidelined to the point that he finally resigned.

See, the reality was: his job was not to evaluate and approve or reject food at the port of entry. His job was to evaluate and unconditionally approve it.

So you might think a patent examiner’s job is to evaluate a patent, and approve or reject it. But God help any examiner who might be so bold as to reject a patent.

Anonymous Coward says:

Look at the system ,there should be a special dept for
software patents,
do examiners have to pass x amounts of patents per day, week.
is there a quota.
IF a car breaks down a certain amount of times its
taken off the market,
its time for politicians to admit the patent system is broken .
There needs to be a committee setup to investigate this .
so in the meantime startups and ordinary companys are being negatively effected by this .
Maybe people need to start complaining to their congressman ,senator about this .

One example in the uk the had a committee on copywrite,
they looked at the laws on music ownership,
they made cd ripping legal,
if you buy a cd you can rip it,put it on a mp3 player
or a phone for personal use .
Software patents in the usa have been a disaster ,
they have just provided money for trolls ,
lawyers and taken money from startups an reduced competition .

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