the law of web application hacking patent... · software and functional claiming williamson v...
TRANSCRIPT
NAPP 2016
Daniel Nazer, Staff Attorney and
Mark Cuban Chair to Eliminate
Stupid Patents, EFF
@danielnazer
Image credit: Opensource.com https://www.flickr.com/photos/opensourceway/6554315093/sizes/l CC BY-SA 2.0
Software, validity, and NPEs
• Pre-Alice estimate: 39% of software patents, if litigated to merits, would have claims found invalid as obvious or anticipated (compared to 28% for other patents).
• Software and other computer-related patents account for most NPE litigation.
• But selection effects are very hard to account for …
Sources:
• Shawn P. Miller, Where's the Innovation: An Analysis of the Quantity and Qualities of Anticipated and Obvious Patents, 18 Va. J.L. & Tech. 1 (2013)
• Michael Risch, The Layered Patent System, 101 Iowa L. Rev. 1535 (2016)
Quality is about more than validity
• Clarity – claim language can survive an
indefiniteness challenge but still be
unnecessarily vague
• Breadth – is patent scope commensurate with
inventor’s contribution to the art?
• Is the patent more likely to be a driver of new
technology or a litigation weapon?
Source: https://www.cbo.gov/publication/49487
More Patents Does Not Equal More Innovation …
http://www.wired.com/2012/03/opinion-baio-yahoo-patent-lie/
https://web.archive.org/web/20121014175503/http://blog.joshuafox.com/2012/10/the-evil-engineers-guide-to-patents.html
USPTO has more power to require claim clarity than courts
Claim construction during prosecution has a
lower threshold for ambiguity than a court's
determination. In re Packard, 751 F.3d 1307
(Fed. Cir. 2014), MPEP 2173.02
USPTO glossary pilot program ... no uptake
Software and functional claiming
Williamson v Citrix was a good first step, but …
We still have no test for when a patent claim
discloses structure. The puzzle of 112(f) and
software remains unsolved
See Kevin Emerson Collins, The Williamson Revolution in
Software’s Structure, at https://www.law.berkeley.edu/wp-
content/uploads/2016/04/Collins-Williamson-Draft-4-01.pdf
112(a) and software …
Where software constitutes part of a best mode of carrying out an invention, description of such a best mode is satisfied by a disclosure of the functions of the software. This is because, normally, writing code for such software is within the skill of the art, not requiring undue experimentation, once its functions have been disclosed.
Fonar Corp. v. General Electric Co., 107 F.3d 1543, 1549 (Fed. Cir. 1997)
Compare the biological arts …
A description of what a material does, rather
than of what it is, usually does not suffice. The
disclosure must allow one skilled in the art to
visualize or recognize the identity of the subject
matter purportedly described.
Enzo Biochem, Inc. v. Gen–Probe Inc., 323 F.3d
956, 968 (Fed.Cir.2002)
http://xkcd.com/1425/
Printed matter doctrine
No patentable weight should be given to the content of information in a substrate. See Ex parte Mathias, 84 U.S.P.Q.2d 1276, 1278-79 (BPAI 2005)
The printed matter doctrine probably arises less than it should as its contours are likely integral to an understanding of the patentability of software related inventions.
Dennis Crouch, http://patentlyo.com/patent/2015/12/printed-doctrine-patentable.html
blogmaverick.com/2014/01/28/so-i-got-sued-by-a-patent-troll-who-thinks-
they-own-downloading-movies-only-before-they-are-released-in-theaters-over-cellular/
US Patent No. 8529350
Open source prior art
Open source prior art, by definition, includes
source code. Should be a leading source of
prior art for software-related applications …
But it is both hard to search and hard to
precisely date.
See
http://www.uspto.gov/patents/law/comments/pa
_a_eff_20140313.pdf
US Patent No. 8605152
19
On obviousness:
The details of the exact camera angles have no patentable effect
on the working of the invention. This only affects the content of the
video and as such does not make a difference which could be
regarded as an inventive step.
On patentable subject matter:
The specifying of camera and people positioning is merely the
normal working directions of a director. This subject matter is not
patentable and does not constitute a manner of manufacture
according to section 18(1)(a).
Alice as a catch all …
• Abstract idea covers similar ground as printed
matter doctrine …
• Pre-emption analysis raises similar issues to
112(a) …
• Conventional steps raises similar issues to
103 …