Stupid Patent Of The Month: Bad Patent Goes Down Using Procedures At Patent Office Threatened By Supreme Court Case

from the ipr-ftw dept

At the height of the first dot-com bubble, many patent applications were filed that took common ideas and put them on the Internet. This month's stupid patent, U.S. Patent No. 6,738,155 ("the '155 patent"), is a good example of that trend.

The patent is titled "System and method of providing publishing and printing services via a communications network." Generally, it relates to a "printing and publishing system" that provides "workflow services...using a communication network." The original application was filed in 1999, and the patent issued in 2004.

The '155 patent has a significant litigation history. Starting in 2013, its owner1 CTP Innovations, LLC, filed over 50 lawsuits alleging infringement, and told a court it intended to file as many as 200 additional cases. CTP claimed [PDF] that infringement of its patent was "ubiquitous" by the printing and graphic communications industry.

In response to CTP's claims of infringement, several defendants challenged the patent at the Patent Office, using a procedure called "inter partes review" (or "IPR" for short). The IPR procedure allows third parties to argue to the Patent Office that a patent shouldn't have been granted because what was claimed in the patent was either known or obvious (two requirements for being awarded a patent) at the time it was allegedly invented. The challenger presents what's called "prior art," that is, material known to the public before the alleged invention. The challenger uses the prior art to show that the patent's claims weren't new or non-obvious when the application was filed. A patent owner is then given the chance to show why they are entitled to a patent.

Here is claim 10 of the '155 patent, one of the claims challenged by the defendants:

10. A method of providing printing and publishing services to a remote client in real time using a communication network, the method comprising:

storing files on a computer server, the files containing information relating to images, text, art, and data;

providing said files to a remote client for the designing of a page layout;

generating a portable document format (PDF) file from the designed page layout;

generating a plate-ready file from said PDF file; and

providing said plate-ready file to a remote printer.

Here's how the Patent Office presiding over the IPR described [PDF] claim 10:

Claim 10 is drawn to a method that requires: (1) storing files; (2) providing the files to a remote user for designing a page layout; (3) generating a PDF from the designed page layout; (4) generating a "plate-ready file" from the PDF; and (5) providing the plate-ready file to a remote printer.

In order to show that this claim should be cancelled, the challenger relied on several pieces of prior art to show that claim 10 of the '155 patent was obvious.

During the IPR, the parties generally did not dispute that steps (1)-(4) were disclosed by the prior art. The only dispute noted by the Patent Office about what was disclosed by one particular prior art combination known as "Dorfman and Apogee" was whether sending a file to a remote printer (step (5)) was new or non-obvious. The Patent Office originally found [PDF] that even though the prior art disclosed all the other parts of the alleged invention, the prior art didn't disclose sending files to a remote printer. That was enough to rule that claim 10 was new and non-obvious, and in favor of the patent owner.

We don't think that minor difference from the prior art should matter. The '155 patent doesn't claim to have invented how to send files to a remote printer (nor could it in 1999, as a quick search reveals). Such a trivial change shouldn't allow someone to claim a monopoly, especially when everyone was doing things "on the Internet" in 1999. For this reason, this patent is worthy of our award.

Fortunately, the Patent Office changed its mind [PDF] on the patentability of claim 10 and sending files remotely, after the challenger pointed out that the prior art did disclose doing exactly that. In January 2017, the Patent Office ruled that claim 10, as well as claims 11-7, 19 & 20, should be cancelled, and CTP did not appeal that decision.

Thanks to IPR, CTP can no longer use many of the claims of the '155 patent to sue others. Indeed, it does not appear that CTP has brought suit against the 200 parties it threatened to sue.

IPR is currently facing an existential threat: the Supreme Court is currently deciding whether it is constitutional for the Patent Office to double-check its work after a patent has issued. We think it is. As this short story shows, the Patent Office sometimes misses things in the prior art, and unsurprisingly then, often allows patents that it shouldn't. The public should be able to point out those mistakes to the Patent Office and not have to pay patent owners for things that rightfully belong to the public.

Republished from the EFF's Stupid Patent of the Month series.

  • 1. It turned out that at the time CTP filed its lawsuits, it didn't actually own the patent [PDF].


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  • identicon
    Anonymous Coward, 31 Oct 2017 @ 10:33pm

    Many fair points, but notable in its omission is any mention of the role accorded by the Constitution to Article III trial courts.

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

  • identicon
    Anonymous Coward, 31 Oct 2017 @ 10:33pm

    Many fair points, but notable in its omission is any mention of the role accorded by the Constitution to Article III trial courts.

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

  • identicon
    Anonymous Coward, 31 Oct 2017 @ 10:35pm

    Not a clue why the double post. Apologies for whatever I may have done to cause it.

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

  • identicon
    David, 1 Nov 2017 @ 12:46am

    Huh.

    IPR is currently facing an existential threat: the Supreme Court is currently deciding whether it is constitutional for the Patent Office to double-check its work after a patent has issued.

    For me the question is rather whether it can be considered constitutional that the Patent Office obviously doesn't double-check its work (or sometimes even single-check it) before a patent is issued.

    As long as this isn't rigidly enforced, not being allowed to fix systematic mistakes is worse.

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

    • identicon
      Anonymous Coward, 1 Nov 2017 @ 4:55am

      Re: Huh.

      There are several mechanisms to invalidate patents. Because courts are the most legally binding, that is where judges would like such cases to be determined. However, since courts aren't a possible remedy for everyone because of its extreme costs, the problem is that justice is not blind when it comes to personal economy!

      The solution is obviously to stem the tide of patents, by reducing the scope of patentability, but since courts don't generally recognize a non-legal process as binding, there is a very long way to go for efforts to rectify the situation.

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

  • icon
    discordian_eris (profile), 1 Nov 2017 @ 3:07am

    Sanctions

    What I wonder is why the hell the courts don't sanction the lawyers who file these patents, or those who defend them like this. According to the Supremes these are bullshit patents and should never be granted. So sanction the idiot lawyers and fire the incompetent patent office examiners who grant these "do something - but on the interwebs!" patents.

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

  • identicon
    Anonymous Coward, 1 Nov 2017 @ 5:59am

    In paragraph 4, the descriptions of novelty and non-obviousness are exactly backwards. Patents are granted if the invention is not known (novel) and not obvious, and the prior art attempts to show the invention was known and/or obvious.

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

    • identicon
      Anonymous Coward, 1 Nov 2017 @ 7:30am

      Re:

      Her words: "The challenger uses the prior art to show that the patent's claims weren't new or non-obvious when the application was filed."

      Maybe I'm misreading it, but I think she has it right: The challenger (i.e., IPR petitioner) tries to show that the claims (1) were not novel (i.e., were anticipated) or (2) were not nonobvious (i.e., were obvious) as of the filing date.

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

  • identicon
    TripMN, 1 Nov 2017 @ 7:42am

    Prior art should have abounded

    I was a teenager in the mid-90s, but I remember the company that my dad and brothers worked for (an electronic pre-press company) did all of these things on a daily basis starting in the early 90s and definitely before '99.

    The fact the PTO can't/won't reach out to the industry to see what they are doing every day just seems crazy. This is a patent hawk swooping in well after the fact of a system being used by an entire industry. No kidding they had 100s of companies they could sue.

    The other thing that catches my eye: it took ~5 years to grant the patent, but then 13 more years to invalidate it. Holy shit that's slow.

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

    • identicon
      Anonymous Coward, 1 Nov 2017 @ 10:01am

      Re: Prior art should have abounded

      The fact the PTO can't/won't reach out to the industry to see what they are doing every day just seems crazy.

      They shouldn't have to. Whether or not this is "obvious", it's nothing but a combination of existing technologies without any real creativity. Is the printer not in the same room? Obviously the data needs to be sent somewhere remote. How? Maybe over the network that's already there. In what format? PDF is popular. If you need "plates", you need to convert the PDF to that format.

      They just took an obvious solution to each problem they had, and then strung together a bunch of them to make it seem like a "process" that's very complicated. If you describe any day-to-day activity in enough detail you'll come up with something nobody's ever done before, or can't prove they've done. That might be why the supreme court already banned "abstract" patents under Alice.

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

  • identicon
    Anonymous Coward, 1 Nov 2017 @ 9:28am

    What is obvious for you, is not obvious for others.

    common sense is really not that common.

    The only stupid people are those stuck in their dogma to be reasoned with... you know how that is right TD?

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

    • identicon
      Anonymous Coward, 1 Nov 2017 @ 11:09am

      Re:

      All that patent claims is a variation on what has become a common procedure, use networking to exchange files in a co-operative endeavor. Indeed exchanging files as part of co-operative working is what computer communications have been used for from the start of DARPA, and UUCP over dial-up networking. Indeed anybody who uses a computer as part of their job will have used computers and networks in this fashion.
      Describing a specific form of co-operation, which is also well established is not being inventive, but rather being a troll, and claiming the ownership of a bridge that already exists, and which was built by other people..

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

    • identicon
      Anonymous Coward, 1 Nov 2017 @ 1:06pm

      Re:

      Do you not own a mirror?

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

    • identicon
      Anonymous Coward, 1 Nov 2017 @ 11:56pm

      Re:

      So Mr. Fuck-Regulations-or-Fuck-Fucking-Regulations-Depending-On-How-I-Want-to-Insult-Everybody-Else thinks that regulations are bad... the government is bad... but obvious patents are acceptable?

      Some months ago you had me convinced you were simply a petulant tryhard attempting to portray an anarchist, but now it's obvious - you're being an asshole purely for the sake of being an asshole.

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

  • icon
    JoeCool (profile), 1 Nov 2017 @ 1:08pm

    Current trend

    At the height of the first dot-com bubble, many patent applications were filed that took common ideas and put them on the Internet.

    The current trend for patents is to take common ideas and put them on a smart phone/mobile device. There's always some company (lawyer) slimy/greedy enough to do these things every time technology advances.

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


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