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Posted on Techdirt - 31 October 2017 @ 07:45pm

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

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].

Posted on Techdirt - 1 May 2017 @ 06:06pm

Stupid Patents Of The Month: Taxi Dispatch Tech

With all the attention ride-sharing has been getting lately, some might think Uber and Lyft were highly inventive apps. But according to at least one company, the apps are just highly infringing. Who’s right? Probably neither.

Hailo Technologies, LLC (“Hailo”) has recently sued both Uber and Lyft, alleging they infringed Hailo’s taxi dispatch patent, U.S. Patent No. 5,973,619 (“the ‘619 patent”). The patent claims a method for a “computer system” that: (1) displays a list of transportation options; (2) asks the customer for a number of passengers; (3) shows destinations graphically; (4) displays the approximate fare; (5) calls a selected taxi company up for a ride; and (6) gives an estimated arrival time.  A few months ago, Hailo also sued a few other companies for infringing a different patent, U.S. Patent No. 6,756,913 (“the ‘913 patent”), which claims a method for keeping track of available taxis on the road. More specifically, it claims a method where a computer (1) determines if a taxi is free (i.e. currently has no rider); and if free (2) sends the current location of the taxi to the taxi dispatch server.

Figure 3B from the '619 Patent

Both of Hailo’s patents date to the late 1990s. That is, the patents claim these inventions didn’t exist (or weren’t obvious) at that time. Except a brief Internet search shows that similar taxi dispatch technology not only existed, but was widely used. Two reports from the Department of Transportation from 1991 and 1992 describe the state of “computer dispatch” technology at that time, and show many of the claimed features of the ‘619 and ‘913 patents. Another report, from 1995, has even more detail about various taxi dispatch technologies. For example, on page 115 the report details a product called “MT GU,” an automated call box that allows customers to order “one or several taxis,” specify “the taxi desired” (including getting a larger van), and provides the waiting time. The MT GU system seems to describe many, if not all, of the features in the system claimed in the ‘619 patent, and predates it by several years.

So there’s good reason to think that the inventions claimed in the two patents were not actually novel or non-obvious when the patent applications were filed. But will any of that matter? Patents, once issued, are presumed valid. In order for a patent to be declared invalid in court, a challenger must show “clear and convincing evidence” of invalidity. When the argument for invalidity is based on prior art, this can be an expensive and time consuming process, often costing in the hundreds of thousands, if not millions, of dollars. Thus even if these patents are in fact invalid and never should have issued, due to the cost of litigation courts often never decide the issue.

An alternative to court exists in the form of inter partes review at the Patent Office. This allows the Patent Office to take a second look at claims in a patent, and declare them unpatentable under a more lenient “preponderance of the evidence” standard. But this procedure, although cheaper than court, is still relatively expensive. One study estimated costs through appeal at $350,000.

Given the costs of litigation in court or at the Patent Office, a patent owner can sue on a “presumed valid” patent and use the threat of fees and costs to get an undeserved settlement. When a company does nothing else (meaning, it doesn’t have a real business other than litigation) we call those companies “patent trolls.”

Hailo strikes us as pretty trollish. As noted, the patents in questions seem weak at best, and Hailo doesn’t seem to be seriously using the “inventions” in any event.  In its complaint against Uber, Hailo states that it is an app maker. But its website, www.bring.bikes, was registered only 10 days before it sued Uber and Lyft. Confusingly enough, there is another company named “Hailo” that actually does make a taxi hailing app.  Even more confusing: “Hailo” the patent owner says it does business under the name “Bring,” but does not appear to be associated with another company called Bring that’s actually involved in transportation.

This “Hailo” by contrast, seems focused on litigation. A recently filed document attaches the agreement assigning the ‘913 patent from its original owner to Hailo. The contract is replete with references to patent enforcement and litigation. And in an earlier complaint, Hailo listed its business address as that of a law firm, and one of its members, 2S Ventures, has been associated with at least one entity that has filed over 20 lawsuits (login req.), a typical litigation pattern for a patent troll.  

Whether or not Hailo is a practicing company, these are weak patents that deserve serious challenge. Sadly, that’s unlikely to happen ? which is why stupid patents like these should never issue.

Republished from EFF’s Stupid Patents of the Month series.

Posted on Techdirt - 3 October 2016 @ 04:29pm

Stupid Design Patent Of The Month: Rectangles On A Screen

On October 11, 2016, the U.S. Supreme Court is scheduled to hear oral arguments in the long-running Apple-Samsung litigation. The issue is whether Apple, by virtue of having its designed patents infringed by Samsung, is entitled to all of Samsung’s profits made from the infringing phones (regardless of how much that design contributed to the value of the phone).

This case — in which EFF submitted an amicus brief arguing the award of Samsung’s total profit is improper — is important for many reasons. But one reason stands out: it is trivially easy to get a design patent on trivial designs and, unless the Supreme Court changes the law, that can lead to anything-but-trivial awards in court.

This month’s stupid patent, a design patent, shows just how broken the current system of design patents is. Design patents, unlike the utility patents we usually feature, consist only of a single claim followed by pictures. It is generally the pictures that inform the public as to what is claimed. Importantly, in a design patent only the features drawn in solid lines are claimed. Anything in dotted lines is generally not part of the claim.

U.S. Patent D767,583, issued on September 27, 2016, is a patent on a design for a “display screen portion with graphical user interface.” Here, the claim is to “the ornamental design for a display screen portion with graphical user interface, as shown and described.” As most design patent owners do, the patent also makes clear that “the broken line showing of the display screen in the figure forms no part of the claimed design.” Below is the sole picture from the patent showing the patented design:

The only thing claimed in this design patent are the three rectangles at the top and the square beneath them. This patent is both remarkably trivial and remarkably easy to be accused of infringing. Someone who arranges three rectangles in a row with a square underneath in the way shown in the image is potentially infringing this patent. (The test for whether a design patent is infringed is described in a case called Egyptian Goddess, and is based on what an “ordinary observer” thinks and often involves a comparison to the prior art.) For example, here is an excerpt from the USPTO’s home page, showing three rectangles and something that looks close to a square beneath it:

To be clear, this patent would likely not be infringed if someone arranged three rectangles and a square in a different way (say, if the rectangles were arranged vertically instead of horizontally), and the USPTO itself may not infringe as the prior art would likely narrow this patent significantly.

But even the possibility of a finding of infringement may be enough to cause concern for many people who may be accused of infringing a design patent. That’s because under current law, if someone is found to infringe a design patent, the patent owner can argue that it is entitled to all of the profits from that website.

The Supreme Court has a chance to fix this last issue in the upcoming Apple-Samsung decision. But that won’t change the fact that the Patent Office still issues patents on trivial designs at an alarming rate. This latest patent is just another in a long line of questionable patents.

Reposted from the EFF’s Stupid Design Patent of the Month series.

Posted on Techdirt - 1 June 2016 @ 03:47pm

Stupid Patent Of The Month… With Special Stupid Trademark Bonus Round

This month features not only a stupid patent, but also a stupid trademark to go along with it.

My Health, Inc. is the owner of U.S. Patent No. 6,612,985, which is entitled “Method and system for monitoring and treating a patient.” My Health also holds a trademark in the term “My Health.” My Health claims that it is “the only person or entity entitled to use… ?My Health’ in commerce.”

Since getting patent and trademark rights, My Health has been pretty active in federal court. It has sued at least 30 companies for patent infringement and has been involved in another three lawsuits involving allegations of trademark infringement. But regardless of what type of case it is, we think both the patent and trademark are stupid.

First, My Health’s stupid patent. The patent is generally directed to “a method and system for monitoring and treating a patient who has one or more diagnosed conditions and is located at a remote location from a treatment processing system.” If that sounds mundane, that’s because it is.

Here is claim 1 of the patent, annotated for clarity:

1. A method for tracking compliance with treatment guidelines, the method comprising:

[a] determining a current assessment of one or more diagnosed conditions in a patient based on data about each of the diagnosed conditions from the patient who is at a remote location and on one or more assessment guidelines for each of the diagnosed conditions;

[b] updating an existing treatment plan for each of the diagnosed conditions based on the existing treatment plan, the current assessment, and on one or more treatment guidelines for each of the diagnosed conditions to generate an updated treatment plan for each of the diagnosed conditions;

[c] reviewing the updated treatment plan for each of the diagnosed conditions;

[d] determining if one or more changes are needed to the reviewed treatment plan for each of the diagnosed conditions;

[e] changing the reviewed treatment plan if the one or more changes are determined to be needed;

[f] providing the patient with the reviewed treatment plan for each of the diagnosed conditions; and

[g] generating and providing compliance data based on the updated treatment plan and the reviewed treatment plan for each of the diagnosed conditions.

This claim is essentially TeleHealth, with the addition of “generating and providing compliance data” at the end. This patent is almost surely invalid under the Supreme Court’s decision in Alice, which held that abstract ideas are not patentable, absent something more. Here, My Health is claiming little more than the idea of remotely diagnosing and treating a medical patient. This is not a new idea, and the patent doesn’t even claim how to do it, but only the idea of doing it (albeit with a bunch of patent-speak to make it look complicated). This 1998 episode of Star Trek: Deep Space Nine shows how the ideas in this patent are routine and conventional enough to be a plotline in a TV series.

We’re not the first to reach the conclusion the patent is invalid. In a lawsuit from last year, a defendant sued by My Health asked the court to rule the patent invalid. Unfortunately, the court said it was too early in the case to decide that issue and the parties later settled.

Along with being abstract, we doubt that this patent described anything new or nonobvious in 2001. In fact, the Patent and Trademark Office has twice agreed that there are serious problems with the patent’s validity in light of what people already knew and were doing in 2001. It instituted 2 different “inter partes” reviews, meaning on two different occasions someone was able to show that there was a reasonable likelihood that the claims were invalid. But on both occasions, the parties settled before the Patent and Trademark Office decided whether the patents should be cancelled.

My Health recently sued again based on its stupid patent, and we wouldn’t be surprised if this case also settles. By settling quickly with various parties before a court can make a decision as to the merits of it claims, My Health can continue to collect on its stupid patent.

But it’s not only a stupid patent that’s causing problems. My Health’s stupid trademark is prompting a whole other stream of litigation. Not surprisingly, plenty of other companies have used the term “My Health” to describe services that provide health information to their users. So My Health is going after them, too.

In February 2015, My Health sued General Electric (GE), and alleged that GE’s use of the term “myHealth” in connection with its online employee portal infringed My Health’s trademark. My Health claimed that it “invested substantial time, money, and goodwill in advertising and promoting [My Health] in commerce and in the healthcare and technological services sectors.” My Health further claimed that “GE is attempting to use [myHealth]…in order to take advantage of and capitalize on My Health’s efforts to market and popularize My Health.”

Given these statements, you might think My Health was an actual company with an actual business to protect. Indeed, My Health was required?under the penalty of perjury?to claim that it was using the term “My Health” in commerce in order to register it at the Patent and Trademark Office.

However, in February of this year GE told a very different story. According to a GE’s motion for summary judgment (asking the court to rule in its favor as a matter of law), My Health “did not [have] a single document showing the actual sale of any goods or services under the purported MY HEATLH mark.” That is, from the evidence GE was able to gather, “[My Health] simply obtained a patent, obtained a trademark registration, and proceeded to extract settlements based on threats of infringement litigation.”

Beyond GE’s claims, this is a trademark that never should have issued. Using the term “my health” to describe products and services related to?you guessed it?your health, is something the entire world should be able to do without fear of a trademark lawsuit. In fact, GE presented evidence that it had been using the term “myHealth” to describe its employee portal at least three years before My Health even applied for the trademark. (You can see GE’s use yourself at the Internet Archive’s Wayback Machine). It’s not surprising GE was using this term: it is a completely predictable way to describe GE’s service.

From what we can tell, My Health didn’t oppose GE’s motion. Instead, My Health settled with GE and the court never determined whether My Health was even entitled to hold a trademark in the term “My Health.” This is unfortunate, because if My Health’s patent infringement activity is any indication, My Health will continue to assert its trademark despite the serious doubts about its validity raised by GE.

My Health, armed with a stupid patent and a stupid trademark, has sued numerous companies, imposing costs on both those companies and the public at large. For that, it more than deserves this month’s award.

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

Posted on Techdirt - 29 January 2016 @ 03:33pm

Stupid Patent Of The Month: Sharing Your Hard Copy Documents, But On A Social Network

Back when you were a kid, you may (depending on your age) have checked books out of your library using a circulation card. The cards, like the one pictured below, would allow the librarian to keep track of the books, who had them, and when they were expected back at the library.

(Ohio Univ Libraries / CC BY-NC-ND 2.0)

This month’s Stupid Patent is awarded to Xerox, who on January 19, 2016 was awarded a patent on essentially the library circulation card, but done electronically.

The patent, U.S. Patent No. 9,240,000, is entitled “Social Network for Enabling the Physical Sharing of Documents.” The patent discusses what it sees as a problem with current methods of sharing documents. Specifically, it says that “systems and methods which enable the sharing of documents among people working in proximate locations, while still promoting worker efficiency and independence, is [sic] needed.” In addition, “there is still a need for an efficient social networking platform which is organization specific and which allows members of an organization to know what other members sitting in the same organizational space are reading, what documents they are amendable to sharing, and to which documents they are providing physical access.”

And how does the patent solve these problems? Claim 11 details one way:

11. A computing system for enabling a physical sharing of a hard copy of a document, comprising:

[a] a plurality of programmatic instructions stored on a medium, wherein, when said plurality of programmatic instructions are executed, cause a client computing device to present a first graphical user interface to a user, wherein said first graphical user interface comprises a plurality of printing options for printing the document, wherein said first graphical user interface comprises an input for receiving an indication by the user that the user is willing to physically share the hard copy of the document within a predefined period of time; and

[b] a computing device for hosting at least a portion of a social network comprising a profile page of the user, wherein said computing device receives at least one of a characteristic of the hard copy of the document, in response to the user indicating a willingness to physically share the hard copy and publishes said characteristic on the profile page of the user, wherein said profile page is accessible to everyone who is connected to the user in a social network, and wherein said characteristic include at least one of title, date, location of document, or location of printing.

This claim is a good example of patent-speak. For various reasons, patent claims are often written in long, obfuscating language that tends to make them difficult to understand for anyone who isn’t a patent lawyer. To be clear: patent lawyers will rightly tell you that every word in a claim is important. This is true. But what is also true is that often times claims include terms?such as “plurality of programmatic instructions stored on a medium”?that are essentially meaningless outside the patent system.

Claim 11, when given a plain English translation, reads something like this:

A computer that, [a] via a GUI, asks the user whether they want to print something using through a variety of methods, and to note whether they want to share the document once printed, for a certain amount of time and [b] if the user says they want to share it, updates the user’s status on their profile page that tells people the name of the paper, the date it will be available and where.

This claim reads as merely a computerized version of the library’s circulation card. A library purchases a book (similar to the printing of claim 11). The library then offers it to one of its patrons, who then decides they would like to borrow it for a certain amount of time. The patron brings the book to the counter, the card is filled out with the patron number and due date, and then placed in the file of all the cards for other patrons to search if they’re looking for that book and when it will become available.

We just gave Xerox a patent on what amounts to sharing a book, but electronically. When considered this way, it is clear that Xerox’s patent is a stupid patent. It deserves our censure. But more importantly, this patent issued this month, on an “invention” from 2011. Ultimately this patent is one of hundreds or thousands of patents that don’t describe actual inventions, but rather just rehash old, obvious ideas “on a computer” using confusing language. The failure of the patent office to prevent this patent from issuing is regrettable, and shows just how dysfunctional our patent system is.

Republished from the Electronic Frontier Foundation’s Stupid Patent of the Month series

Posted on Techdirt - 29 December 2015 @ 03:33pm

Stupid Patent Of The Month: Microsoft's Design Patent On A Slider

For the first time ever, this month’s Stupid Patent of the Month is being awarded to a design patent. Microsoft recently sued Corel for, among other things, infringing its patent on a slider, D554,140, claiming that Corel Home Office has infringed Microsoft’s design.

The design patent, as detailed by Microsoft in its complaint, is titled “User Interface for a Portion of a Display Screen” and entitles Microsoft to own this:

More specifically, Microsoft claims to own this design of a slider.

Design patents aren’t like the utility patents that most people think of when they think of patents. Unlike utility patents, which are meant for new and useful inventions, design patents are meant for new, non-functional, ornamental aspects of articles. They have only one claim, little to no written description, and usually a series of images detailing what exactly is being claimed. (A note about design patents: solid lines are used to show what is claimed; broken or dotted lines show the unclaimed “environment related to the design” or define the boundary of the design.)

As Professor Sarah Burstein points out on her fantastic Tumblr, design patents are often issued on a small part of a product, and often for things that seem unoriginal, not ornamental, or just ridiculous.

Microsoft’s patent claims against Corel are unsurprising in light of how much money is potentially at stake. If Corel is found to infringe even one of Microsoft’s design patents through even the smallest part of Corel Home Office, current Federal Circuit law entitles Microsoft to all of Corel’s profits for the entire product. Not the profits that can be attributed to the design. Not the value that the design adds to a product. All of the profit from Corel Home Office.

The well-known Apple v. Samsung dispute addressed the issue of whether an infringer should be required to pay all of its profits for infringing a design patent that applies only to a portion of a product. Samsung had asked the Court of Appeals for the Federal Circuit to reject this reading, but the court disagreed in a May, 2015 opinion.

Samsung has now asked the Supreme Court to weigh in. In its petition for certiorari, Samsung points out the absurd results of this rule. For example, Samsung explains that under the Federal Circuit’s ruling, “profits on an entire car?or even an eighteen-wheel tractor trailer?must be awarded based on an undetachable infringing cup-holder.” In addition, given that many products will include multiple ornamental features that could be covered by design patents, this raises the possibility that a company could get hit for multiple judgments for all its profits.

That sounds pretty crazy to us. But that’s exactly what might happen if Microsoft prevails against Corel. Putting aside whether Microsoft’s design was actually new and not obvious in 2006 (when Microsoft filed its application), whether Microsoft needed the patent incentive in order to come up with this design, and whether it is even desirable to grant a company a government-backed monopoly on a graphical slider (we don’t think so, that’s why this is a stupid patent), the scope of damages for design patent infringement has the potential to become a powerful tool to shut down legitimate competition based on the mere threat of a lawsuit.

Reposted from the Electronic Frontier Foundation

Posted on Techdirt - 5 October 2015 @ 01:47pm

Patent Owner Insists 'Integers' Do Not Include The Number One

Patent trolls are a tax on innovation. The classic troll model doesn’t include transferring technology to create new products. Rather, trolls identify operating companies and demand payment for what companies are already doing. Data from Unified Patents shows that, for the first half of this year, patent trolls filed 90% of the patent cases against companies in the high-tech sector.

Core Wireless Licensing S.A.R.L. is one of the patent trolls attacking the high-tech sector. Core Wireless is incorporated in Luxemburg, and is a subsidiary of an even larger troll, Canada-based Conversant. It owns a number of patents that were originally filed by Nokia. It has been asserting some of these patents in the Eastern District of Texas. In one case, a jury recently found that Apple did not infringe five of Core Wireless’s patents. In another case, it is asserting eighteen patents against LG. One of its arguments in the LG case came to our attention as an example of what patent trolls think they can get away with.

In patent litigation, patent owners and alleged infringers often disagree about the meaning of words in patent claims and ask the court to resolve the differences (a process known as “claim construction”). In Core Wireless’ case against LG, the majority of the disputes seem like usual ones in terms of patent litigation.

Except for the dispute about “integer.”

You may have learned what an “integer” was in high school. It’s a common concept many teenagers learn about when they take algebra. In Ontario, Canada, for example (where Conversant is based), teachers discuss integers in the 9th and 10th grades. As defined in the Ontario Curriculum, an integer is: “Any one of the numbers . . . , ?4, ?3, ?2, ?1, 0, +1, +2, +3, +4, . . . ” Here’s a PBSMathClub video with a helpful explanation:

It’s pretty clear what an “integer” is. Here are a few more definitions from various sources, all confirming the same thing: “integers” are all of the whole numbers, whether positive or negative, including 0.

But Core Wireless, the patent owner, told the court that an “integer” is “a whole number greater than 1.” Core Wireless is saying that not only are negative numbers not integers, neither are 0 or 1.

This is preposterous.

As one mathematician told us:

The integers are the natural numbers (whole numbers greater than zero), their negatives, and the number zero (very important). So saying that the integers are all whole numbers greater than one is a bit like saying that sweet and sour chicken is just sour sauce because you’re missing its negative, and the chicken, which is very important. Or that a turducken is just turkey: we all know that the duck and the chicken are essential.

To be clear: the law allows patent applicants to redefine words if they want. But the law also says they have to be clear that they are doing that (and in any event, they shouldn’t be able to do it years after the patent issues, in the middle of litigation). In Core Wireless’ patent, there is no indication that it used the word “integer” to mean anything other than what we all learn in high school. (Importantly, the word “integer” doesn’t appear in the patent anywhere other than in the claims.)

It appears that Core Wireless is attempting to redefine a word?a word the patent applicant freely chose?because presumably otherwise its lawsuit will fail. The Supreme Court has long disapproved of this kind of game playing. Back in 1886, it wrote:

Some persons seem to suppose that a claim in a patent is like a nose of wax which may be turned and twisted in any direction, by merely referring to the specification, so as to make it include something more than, or something different from, what its words express.

Just last year, the Supreme Court issued an opinion in a case called Nautilus v. Biosig Instruments emphasizing that patent claims must describe the invention with “reasonable certainty.” Using a word with a well-known and precise definition, like “integer,” and then insisting that this word means something else entirely is the very antithesis of reasonable certainty.

We hope the district court applies long-standing Supreme Court law and doesn’t allow Core Wireless to invent a new meaning for “integer.” Patent claims are supposed to provide notice to public. The public should not be forced to guess what meaning the patent owner might later invent for the claims, on penalty of infringement damages.

Ultimately, this is just one baseless argument in a bigger case. But it reveals a deeper problem with the patent litigation system. A patent owner wouldn’t argue that “integer” doesn’t include the number one unless it thought it might get away with it. The Patent Office and lower courts need to diligently apply the Supreme Court’s requirement that claims be clear. We also need legislative reform to discourage parties from making frivolous arguments because they think they can get away with it. This should include venue reform to prevent trolls from clustering in the troll-friendly Eastern District of Texas.

Republished from the Electronic Frontier Foundation Deeplinks blog.

Posted on Techdirt - 31 March 2015 @ 03:47pm

Subway, McDonald's And Burger King Sued Over GPS Tracking Patent… Or Something

GPS technology has been around for a while. Wikipedia puts the start of development at 1973. But it wasn’t until the 1990s that it became available for consumer use. And even then, it took some time before the government removed restrictions on accuracy that it had on its use by civilians. (The government had added an intentional error to the signal that made GPS variably inaccurate up to 50 meters.)

With the loosening of restrictions on GPS came furious development in consumer applications?and a flurry of patents.

Which brings us to this month’s Stupid Patent of the Month. The dubious honor goes to U.S. Patent No. 6,442,485, “Method and apparatus for an automatic vehicle location, collision notification, and synthetic voice,” filed in 1999. The “Background of the Invention” talks about a need for an automatic voice system that could speak for a driver involved in a collision and transmit location details to 911. For example, the patent says that “[i]t would be desirable to have an automatic vehicle location and collision notification system that would ascertain if a vehicular collision had occurred and communicate directly with an emergency facility.”

But after this background, the patent devolves into a wilderness of made-up words and technobabble. The patent includes fabricated phrases such as “Location Comparator-Indicator Module” and “Automatic Speed Controlled Location Detection Module.” (Google searches of these phrases turns up nothing other than results related to the patent.) Reading the patent to try to figure out what it means becomes an exercise in cross-referencing and guesswork. Even worse, key terms in the claims (this is the part of the patent that is supposed to clearly explain what that patent covers) don’t even appear in the description of the purported invention. This means  that it is very difficult, if not impossible, to understand what the claims mean and to guess how a court might interpret them.

This sort of made-up gobbledygook is likely what has allowed NovelPoint Tracking LLP, the owner of this month’s Stupid Patent, to sue over 90 companies for infringement. The latest round of lawsuits, filed on March 27, 2015, includes companies such as Subway (the sandwich artists, not a company related to transportation), McDonald’s, and Burger King.

And what do these fast food franchises have to do with vehicle location, collisions, and synthetic voices? With respect to Subway, NovelPoint claims that Subway’s Windows phone mobile application infringes NovelPoint’s patent.

Here’s the description of Subway’s app from Microsoft’s website:

Don’t know where to find a local Subway? We’re here to help. This app will display a list of local Subway locations along with the ability to get directions and let your friends know where to meet you.

We don’t know what, exactly, NovelPoint thinks it owns, but it looks like it is accusing Subway of infringing because it has an app that shows a map with directions. And given the incomprehensibility of its patent, it can get away with this, at least enough to secure a quick settlement and get out before a court rules that no, in fact, it doesn’t own a map with directions.

And indeed that is what appears to have happened. Of the almost 100 cases NovelPoint has filed, exactly none of the cases has had a decision on the merits of NovelPoint’s claims. From what we can see, all of the cases have settled very quickly, most likely for small nuisance sums.

Patent owners shouldn’t be able to get away with this. Patents should be clear and understandable. If new words are used, they should be defined. And if words already exist in the relevant art, they should be used. NovelPoint’s patent is a great example of how using fake terms can be used to obfuscate what the patent actually claims, and then used to claim infringement by something no one would have considered the patent owner to have invented. We have laws that should prevent this sort of gaming. The Patent Office and courts need to start actually enforcing them. 

Reposted from the Electronic Frontier Foundation’s Deeplinks blog

Posted on Techdirt - 29 December 2014 @ 12:58pm

In The Spirit Of The Holidays: It's Not Too Late For Uber To Avoid Stupid Patent Of The Month

“Good Spirit,” he pursued, as down upon the ground he fell before it: “Your nature intercedes for me, and pities me. Assure me that I yet may change these shadows you have shown me, by an altered life!” ? Charles Dickens, A Christmas Carol

As our devoted readers are aware, each month we highlight a Stupid Patent. This month, in the holiday spirit, we’ve decided to highlight a Stupid Patent Application. Our motivation for doing so is that we hope that our post, like Dickens’ Ghost of Christmas Yet to Come, encourages a prospective patentee to change its stupid-patent-application-filing-ways. You see, we recently learned that Uber has filed for a patent on something so basic, so fundamental to our economic system, that it should be called out now before it becomes too late for both Uber and the public.

Here is some background: imagine you own a transportation company. You have a limited number of seats and you know that customers are willing to pay different amounts based on their sensitivity to cost. But you don’t want seats to go empty, since every empty seat is a missed profit opportunity. So you implement a system where the more demand is up or supply is down, the more you charge. Or conversely, the more demand is down and supply is up, the less you charge. And then you file a patent application for your “invention.” 

Because Uber did just that, Uber is being forewarned of its risk of receiving the Stupid Patent of the Month award. Specifically, Uber has applied for a patent on a form of dynamic pricing, a practice that (even if it didn’t exist before the study of economics) has been heavily in use by various industries, including most famously by airlines, for over 20 years.  

Here is claim 1 from U.S. Patent Application 13/828,481:

1. A method for adjusting prices for services, the method being performed by one or more processors and comprising:

making a determination of an amount of requesters for a service at a given time;

making a determination of an amount of available service providers for providing the service at the given time;

adjusting a price, relative to a default price, for using the service provided by one or more service providers based, at least in part, on the determined amount of requesters and the determined amount of available service providers; and

transmitting pricing data corresponding to the adjusted price to one or more requesting devices or one or more provider devices so that the adjusted price can be displayed on at least one of the one or more requesting devices or the one or more provider devices and be indicative of an adjustment in price as compared to the default price.

Essentially, Uber claims to have invented the method of (a) checking how many people are requesting a service; (b) checking how many service providers are currently available; (c) adjusting the price based on these two factors; and (d) then showing the price to the person requesting it. Not only was such dynamic pricing almost surely known before 2012, this is a claim directed to an “abstract idea” of dynamic pricing based on supply and demand. The addition of the “transmitting” clause (i.e. “do it on a computer”) shouldn’t matter to patentability.

In filing its application, Uber acts as a good example of how our patent system has encouraged the filing of applications that should never be filed in the first place. The story here is not about a patent that has been granted, but rather that Uber thinks a patent can be granted. Applications like Uber’s clog up the Patent Office, and oftentimes issue, despite clear flaws. Once issued, they can become fodder for trolls. Or in this case, they could be used to chill investment of time and resources in competitors.

We hope Uber’s application never becomes eligible for the regular prize, because this is a stupid patent application that the Patent Office should quickly reject. We hope Uber realizes the harm patents such as this one cause to the innovation economy as a whole. It is not too late for Uber to change its ways and reject a system of Stupid Patents. We encourage Uber to join our fight against stupid patents before it suffers from “No rest, no peace. Incessant torture of remorse.”

Republished from the Electronic Frontier Foundation

Posted on Techdirt - 31 October 2014 @ 06:14am

October's Totally Stupid Patent Of The Month: Filming A Yoga Class

EFF recently learned about a patent that covered a method of filming a yoga class. We reviewed the patent and discovered that it was just as ridiculous as it sounded. Despite our familiarity with absurd patents and our concerns about cursory review at the Patent and Trademark Office (PTO), we were still surprised that this one issued. It seemed the so-called “invention” wasn’t the kind of thing that should be patented at all?or at the very least, was not something novel or nonobvious. Yet another stupid patent, and winner of our October accolades.

There’s a silver lining to this story. The yoga community affected by this stupid patent wasn’t willing to give in. Instead, the community fought back, and as our post was set to go live (and on the day EFF contacted the patentee’s lawyers for comment), the patentee publicly disclaimed all interest in the patent. So this stupid patent is now a stupid ex-patent.

Even though the patent owner, YogaGlo, Inc., has already given up, we think the story of this patent is still worth telling. We think it reveals a lot about how our patent system is desperately broken. This story is one of a grave series of omissions and errors that resulted in a patent that should never have been granted in the first place, and a patent applicant incentivized to do everything in its power to keep filing for more. This blog post goes into this history in detail.

Filing for a Patent on Filming a Yoga Class

U.S. Patent No. 8,605,152 claims to cover a “method and apparatus for yoga class imaging and streaming.” To be clear, the patent involves slightly more than just filming a class, but not much. The claims require, among other things, “a studio having a front area and a rear area,” “a line of sight corridor,” and an “image capturing device” at a “height of about three feet.” In non-patent speak: a room, a direct view of the instructor, and a camera positioned about three feet above the ground. Figure 2 from the patent, shown below, is described as “an embodiment of the present invention,” and shows all the elements of the claimed “invention.”

The yoga patent came out of U.S. Patent Application No. 13/763,569 (the “‘569 Application”), filed on February 8, 2013. Derik Mills, the CEO of YogaGlo, Inc., a Santa Monica based company that strives to provide “the experience of being in the class at your home,” listed himself as the inventor.

At the time the ‘569 Application was filed, a related patent was also making its way through the PTO. Mills had previously filed U.S. Patent Application 13/220,621 (the “‘621 Application”) on August 29, 2011. Both applications claimed priority (meaning there was a claim to an earlier date of “invention”) to a previous application filed August 27, 2010.

This sort of “continuation practice”?having multiple applications relating to the same or related inventions?is common at the PTO. What was not common, however, was that the original ‘621 Application was literally identical to the original ‘569 Application: Mills sought to claim the exact same thing through both the ‘569 and ‘621 Applications. (It is unclear why Mills filed two applications with exactly the same claims. One possibility is that Mills felt his chances with the second examiner were better than the first.)

Often, similar or related applications are assigned to the same examiner. But Mills’ applications were given to two different examiners for review (we’re not sure why). The ‘569 Application was assigned to Examiner Nhon T. Diep and the ‘621 Application was Examiner Mohammad J. Rahman.

Both the ‘569 Application and the ‘621 Application were initially rejected. Diep initially rejected the ‘569 Application on July 3, 2013, on two grounds: double patenting (can’t get two patents on the same thing) and obviousness (the “invention” was not different enough from what came before). In making the obviousness rejection, Examiner Diep relied exclusively on patents or patent applications. Shortly after that, on August 5, 2013, Rahman (faced with the exact same claims that had just been rejected) rejected the ‘621 Application for the same reasons.

But from there, the two applications and their histories at the PTO diverge.

“YogaGlo intends to enforce its intellectual property rights”

On August 26, 2013, despite having both its patent applications initially rejected on multiple grounds, YogaGlo sent demand letters to its competitors, including Yoga International. In the letter, YogaGlo (through its lawyers) pointed to its patent applications and stated its belief that Yoga International “streams online fitness classes that mimics [sic] the method and technique of YogaGlo’s U.S. patent application.” Although YogaGlo did not explicitly demand that Yoga International remove the videos it believed infringed YogaGlo’s not-yet-existing rights, it warned that the letter “shall serve as actual notice of the existence of the YogaGlo Patent Applications” and “upon patent issuance, damages may be due retroactively to the date of patent publication.”

Yoga International, concerned by the idea that a company could get a patent on filming a yoga class, decided to fight back. It told the yoga community about the letter and the yoga community went into uproar. Yoga Alliance, another Yoga organization, started a petition asking YogaGlo to withdraw its patent applications and received over 14,000 signatures.

YogaGlo responded with its own interpretation of the situation, saying that it filed for the patents “in order to continue to provide our community with this distinctive online yoga class experience at an affordable price.” In effect, YogaGlo’s argument appeared to be that without patent protection, it would cease to exist.

Except that for at least the first few years of YogaGlo’s existence, this wasn’t true. YogaGlo, it seemed, had been flourishing for many years without the patent protection it now felt it needed.

Patent Protection Not Required Nor Deserved

Patents are only supposed to be granted on what is novel and nonobvious. The Patent Office, in initially rejecting YogaGlo’s patents, relied on other patents and patent applications. But filming a yoga class didn’t seem to us like something that should (or would) be in a patent or patent application. Filming methods just aren’t something that are traditionally patented (nor should they be).

Instead, it seemed to us that prior art for systems and methods for filming would most likely be found in actual films. So in order to help understand just how “novel” YogaGlo’s invention was, we did an Internet search for other, similar “systems” and “methods.” Below is a collection of just some of the videos we found, all uploaded or filmed before YogaGlo filed its patent application:

Based on our search, it seems like YogaGlo’s patent should never have issued. But even more interesting is that last screen shot. Its similarity to Figure 2 of YogaGlo’s patent applications is not surprising, because it is from YogaGlo’s own website?and it’s dated July 28, 2009.

This is a problem for YogaGlo. Even if something is novel and nonobvious, a patent should not be granted if the application is filed more than one year after the “invention” is made, used, or sold. This is commonly referred to as the “one-year statutory bar.” Basically, you can’t patent something once the public has known about it for over a year. The public policy rationale is that patents are meant, in part, to get inventors to disclose their inventions to the public. If the invention has already been disclosed, the applicant didn’t need the patent “carrot”.

The one-year statutory bar is well known by patent practitioners and is often used to invalidate a patent or prevent one from issuing. One organization, after receiving YogaGlo’s letter, found YogaGlo’s invalidating videos and recognized their importance. After receiving YogaGlo’s letter, and before any patent issued, that organization sent YogaGlo’s lawyers a letter and pointed to the videos as prior art,.

And Yoga International wasn’t the only ones who noticed that YogaGlo shouldn’t be able to get a patent. A comment on YogaGlo’s own website on the post about YogaGlo’s patent applications, dated before any patent issued, also highlighted the videos:

That link at the end? That’s to the “Manual of Patent Examining Procedure” and the section on the one-year statutory bar.

Back at the Patent Office

Because YogaGlo filed its original patent application (the one to which both its applications claimed priority to) on August 27, 2010, more than one year after it had posted videos using its “invention,” no patent should have been allowed. The one-year statutory bar prohibits it.

But if the PTO doesn’t know about prior art, it can’t use it to reject an application. This is why the patent office relies on patent prosecutors (the people who file applications on behalf of inventors) to bring to light prior art known to the applicant. The PTO itself will do a search, but it’s expected that prosecutors will point out art too. Indeed, they have a duty to do so.

In prosecuting the two applications, Mills and YogaGlo were represented by patent prosecutor working at the same office as the lawyer who sent Yoga International and others the letter about YogaGlo’s patent applications. This is also the same the law firm office that received the responses, including its mention of YogaGlo’s own invalidating videos. But despite the duty of disclosure, neither Mills, YogaGlo’s lawyers, nor anyone else associated with YogaGlo notified the PTO about YogaGlo’s own videos that implicated the one-year statutory bar.

At this point, its important to note is that the ‘569 Application was filed under what’s called the “Accelerated Examination Program.” This program allows applicants to get their applications reviewed more quickly if they can meet certain requirements, including making a statement regarding the “most closely related” prior art and how the “invention” is different than what came before. (Normally a hopeful patentee isn’t required to particularly point this art out. It’s enough to merely list it on a form). YogaGlo identified and discussed some prior art, but it failed to bring up the most damning examples: its own videos.

So on October 7, 2013, when it came time to address the examiner’s initial rejection, YogaGlo did not identify its own videos and correct the failure to identify them at the outset. Instead, it filed an “amendment” and “request for reconsideration” of its ‘569 Application. YogaGlo modified its claims slightly, and argued that the claims were now patentable. The reason? The prior art, according to YogaGlo, didn’t disclose “a line of sight corridor.” In plain English: YogaGlo argued that when filming a teacher from eye level at the back of the room, it wasn’t known or obvious to keep students from blocking the camera’s view of the teacher (yes, really).

Incredibly, Mills and YogaGlo?despite Yoga International’s letter, posts on their blog, and explicit recognition of the duty of candor?never told the PTO about its videos. Instead, on October 29, 2013 and without explanation, Examiner Diep allowed YogaGlo’s patent, having never been given the chance to consider the art that was so clearly important.

To be clear, Examiner Diep did a search for prior art. He searched databases available at the PTO, but he did not do a YouTube (or even general Internet) search. Perhaps unsurprisingly, he did not find YogaGlo’s videos, or the many other videos that predated YogaGlo’s “invention,” among the patent databases he searched. The ‘569 Application issued on December 10, 2013, almost two months after YogaGlo received the information pointing out YogaGlo’s prior art videos, and more than four years after YogaGlo had first started posting its videos.

If at First You Succeed, Try Again?

Having received one patent, YogaGlo continued to seek a second through its ‘621 Application. On February 5, 2014, like with the ‘569 Application, YogaGlo modified its claims slightly and argued that the claims of the ‘621 Application were now patentable. Again YogaGlo did not disclose its own videos. But unlike Examiner Diep, Examiner Rahman searched for prior art on YouTube. Below is part of his results:

Through this YouTube search, Examiner Rahman was able to easily find YogaGlo’s own videos that implicated the one-year statutory bar. On that basis, the ‘621 Application was finally rejected on March 7, 2014.

But in a practice that has become all too common at the patent office, the “final” rejection became not so final. On September 17, 2014, YogaGlo asked the examiner to reconsider the application. In an act that can only be called brazen, YogaGlo argued that it’s own videos were not prior art, because “while the video appears to show the line of sight corridor, it is clear that it does not show the widening of the corridor as shown in Fig. 1”

Here is Figure 1 from the application with another frame from that “John Friend” video:

We’re having a hard time figuring out how this does not blow YogaGlo’s claim out of the water. When looking at the frame (a different one than that cited by the examiner), YogaGlo’s argument seems completely frivolous to us. But because the examiner cited to a different frame, YogaGlo was able to cite to some minute distinction between its claim and the picture Examiner Rahman found, and ignored the rest of its video. But even if a distinction exists, why does it matter? Is this really something that’s a “patentable distinction” over the prior art? Should someone be entitled to a patent every time a room is set up differently or a camera is moved slightly?

Practices at the PTO encourage applicants to keep filing, and to make this sort of meaningless distinction. Examiner Rahman had already finally rejected this application once. But YogaGlo is insistent. Unfortunately, if Examiner Rahman wants to get this work off his plate, the quickest and easiest way is to allow the patent. And applicants know this.

Symptom of a Larger Problem

YogaGlo’s patent never should have been filed, and never should have issued. Even more importantly, hopeful patentees should not be incentivized to continue to push for patents despite clear evidence showing the claims are invalid.

In the broader view, it seems unlikely that patents are needed in order to incentivize people to develop new systems and methods for filming. Hollywood has existed for many generations without every director rushing out to patent new styles and angles of filming. Most likely, this is because patenting a new way of filming just doesn’t seem like something that patents were meant to protect, and nor are they needed in order to encourage the next Stanley Kubrick. And YogaGlo seems to acknowledge this: their own statement says they wanted to protect the “look and feel” of their videos. This is not something our patent system was designed to protect. But our culture of overclaiming of intellectual property rights likely encouraged YogaGlo to file for a patent and incentivized YogaGlo to seek it at all costs?including honesty. We don’t know why YogaGlo’s decided to not disclose its own videos, but its failure to do so seems questionable (at best). We asked YogaGlo’s lawyer for comment, but he declined.

The PTO relies on applicant disclosures, and should be able to, but in this case, it is clear that such reliance was misplaced. And what is also clear is that an incentive exists to not disclose. The fee worksheet in the file history for the ‘569 patent application shows that YogaGlo paid $663 when it filed its application. After paying a few more thousand in fees during the pendency of the application, YogaGlo got an almost twenty-year monopoly on its systems and methods for filming a yoga class.

We strongly believe that YogaGlo’s patent never should have issued. And we’re glad YogaGlo has belatedly agreed. YogaGlo’s pending patent application is as deeply flawed as the issued patent. It should do the right thing and abandon its application too. Although pressure from the Yoga community convinced YogaGlo to do the right thing at least with respect to the issued patent, for most people getting rid of a patent is not so easy. To invalidate a patent, the cost is a minimum of $6,000, which is the cost of filing an ex parte re-examination.

Fortunately for the Yoga community, people were willing and able to fight back. But often communities aren’t able to do so, and EFF can’t help with every stupid patent we find (trust us, we see a lot of them). This is why reform is needed: too many incentives exist to encourage patent applicants to be less than forthcoming, and it is too expensive and difficult to challenge stupid patents. We hope that in telling this story we can start a dialog on how to fix the system to make sure that no one gets a stupid patent on filming a yoga class again.

Reposted from the EFF Deeplinks Blog

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