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: deliveries, notifications, patents, uspto
Companies: eclipse ip

Reader Comments

Subscribe: RSS

View by: Time | Thread

  1. identicon
    Anonymous, 30 Apr 2015 @ 7:45pm

    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"?

Add Your Comment

Have a Techdirt Account? Sign in now. Want one? Register here

Subscribe to the Techdirt Daily newsletter

Comment Options:

  • Use markdown. Use plain text.
  • Remember name/email/url (set a cookie)

Follow Techdirt
Insider Shop - Show Your Support!

Report this ad  |  Hide Techdirt ads
Essential Reading
Techdirt Deals
Report this ad  |  Hide Techdirt ads
Techdirt Insider Chat
Report this ad  |  Hide Techdirt ads
Recent Stories
Report this ad  |  Hide Techdirt ads


Email This

This feature is only available to registered users. Register or sign in to use it.