Is This Patent Full Of Crap?

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:

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.

If you're a programmer, continues Schulman, think of the patent claim as an AND function: In order to infringe, a device must do all the elements; in other words, element one and element two and element three, and so on. Consider two examples:

Which of these claims is more valuable? Most likely it's claim number one, because it's easier to find someone doing only three things, than claim number two, where the infringer has to be doing five things. On the other hand, claim number two is less likely to be anticipated by the prior art, and so is less likely to be invalidated by prior art or obviousness. So number one is more likely to catch infringers, but number two is more likely to be valid, explains Schulman.

"Obviousness" is a term of art in patent law. Its meaning is not, well, obvious. Remarkably, people who know that terms such as "packet" or "file" or "thread" have a special meaning in computing often fail to appreciate that a term such an "obviousness" might also have a special meaning in its field. In patent law, an invention is obvious not if it is identical to what has already been done before (the prior art), but if the difference between the invention and the prior art would have been within the skill of an ordinary (non-inventive) worker in the field, at the time of the invention. Dismissing a patent as "obvious" ("They got a patent on THAT?"), without carefully examining both the state of the art and the level of ordinary skill at the time of the invention (not today), is like assuming that a thread has something to do with sewing (rather than multitasking in operating systems).

Separate from this are two rules having to do with the specificity of the claims. The so-called doctrine of equivalents states that competitors should not be able to escape a patent by making trivial modifications. On the other hand, the patent system encourages the ability to "design around" patents; in other words, to come up with new ways to do what is claimed without infringing the claim.

In between "trivial modifications" and the capacity for "design around" is a gray area. Patent law often tries to steer a course between extremes which under- or over-protect an invention.

It is often suggested--I've thought this way myself at times--that software is sui generis, a totally new type of technology that doesn't fit within existing patent laws that have accommodated other technical advances for several hundred years. Schulman isn't so sure. "Even were this true, it still leaves the fact that it is becoming increasingly difficult to draw a sharp line around 'software patents.' So any proposals for reforming software patents likely need to work for patents in general."

The US patent system goes back to 1790 when the first patent was signed by George Washington. It has a long history of adjusting to technological change. Maybe it can even catch up with software.