NAPP 2016

Daniel Nazer, Staff Attorney and

Mark Cuban Chair to Eliminate

Stupid Patents, EFF

daniel@eff.org

@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 …