People in the tech business frequently find patents annoying. Often it seems to us that the invention is superficial, obvious, or already performed by other products. But we don't usually look at patents the way patent attorneys or the United States Patent and Trademark Office (USPTO) looks at them. There are rules for these things and, before you go expressing shock that a patent was granted, you should know what the law says about how they are assessed.
I spoke with Andrew Schulman, a software litigation consultant and attorney who examines this stuff for a living. Schulman is famous among techies as the author of Undocumented DOS and Undocumented Windows. Undocumented DOS was an essential book for all DOS programmers and exposed the wealth of services that Microsoft chose not to share with the rest of the world.
I asked Mr. Schulman about Microsoft's recent GPS-related patent, which became known as the "bad neighborhood patent." By putting in the abstract a reference to avoiding high-crime neighborhoods, Microsoft made it irresistible to writers who covered this story. BYTE's story went to some length to point out that there was a lot more to it.
Schulman's first instructions: "Focus on the claims." The patent's title or the abstract at the top are what grab most people, but they don't carry much legal weight. The claims are a list of sentences further down in the patent that are harder to read, but these are the key part. "The IP resides in the claims, with only a bit of help from other parts of the patent," he says.
An IP--infringing product, or one that constitutes "prior art"--has to perform all of the steps or elements in at least one claim in the patent. Schulman advises: "Before declaring something un-novel or obvious, focus again on the claims. How many elements does it have? If there are more than a few elements, ask whether combining all these disparate things is really so trivial as it seems if one looks at the title or abstract."
Consider the case of US Patent #8,090,532 (the Bad Neighborhood Patent). "To infringe one of the claims of this patent, someone has to be doing ALL of these things," says Schulman:
Computer storage media having embodied thereon computer-useable instructions that, when executed, perform a method, the method comprising:
- collecting a request from a pedestrian that a route includes a waypoint to a general location
- locating at least one information source
- retaining pedestrian history from a plurality of pedestrians and
- addresses of at least one information source that has a history of providing reliable information,
- identifying low quality information sources that do not provide information used in route generation, and
- blocking information obtainment for the low quality information sources;
- obtaining information related to pedestrian travel including security information,
- weather information,
- and terrain information
- wherein the gather component obtains the information from the at least one located information source;
- making at least one inference regarding a route based on a previous pedestrian behavior;
- determining, based on the at least one inference, the information that is likely relevant and
- deleting information that is commonly of little value
- in part through examination of previously produced routes;
- determining an importance of the information to a user,
- estimating how likely the information is to change, and
- choosing if the user should reach the destination through pedestrian route and/or through a conventional route;
- resolving conflicts between an information source with a financial interest and an information source without a financial interest and
- producing a direction set based upon the information source that does not have a financial interest in providing the direction set;
- collecting information concerning routes of other people; and
- using the collected information to update the pedestrian-based route in real time.
That's a lot. And as Schulman says, there's an old patent adage: "the name of the game is the claim." It's not the patent that is either infringed or anticipated (either by lack of novelty or by obviousness). It's a given claim.