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The President's Executive Action Addressing Overbroad Functional Claiming ~pj
Thursday, June 06 2013 @ 08:59 PM EDT

When President Obama announced several moves he's intending to make to address the patent mess trolls have made, the biggest news was that he said out loud that it's a mess, that patent trolls are damaging the US economy. I've been reading what others have written about the announcement, and reactions have varied. Those who adore patents are calling for their smelling salts. The head of Intellectual Ventures, I read the other day, wonders why people don't realize patent trolls like IV contribute to the economy. He didn't say the word trolls, but now that the President has, I guess we are all free to do so too. And some cynics say the Congress won't do anything anyhow.

That part is likely true, unless a lot of folks contact their representative and raise the roof. But I thought I'd explain why it doesn't matter, even if Congress proves the cynics right. Because one executive action on the list has the capability to make a real difference, and it doesn't require Congressional approval or action at all. That's the beauty of executive actions.

The President has absorbed and accepted Professor Mark Lemley's suggestion that the USPTO look at functional claims more closely and make sure patent applications are for something specific, not claiming broad functions instead of specific implementations.

You can't build a better mousetrap if someone has already gotten a patent on "trapping mice", regardless of how or what device is used.

The President is a lawyer, after all. So it's not a total surprise that he understands what Lemley wrote. Here's the paper [PDF], if you'd like to read it for yourself. And here's Professor Lemley tweeting that he noticed that the President's suggestions included one about functional claiming.

Here's a snip from Professor Lemley's paper, detailing the problem:

Patent law purports to promote innovation by giving inventors the exclusive right to their inventions. In fact, however, modern patent law pays far less attention to what the patentee actually invented than to the patent “claims” – the legal definition of the scope of the patent drafted by lawyers. And lawyers have a natural tendency to broaden those claims as much as possible in order to secure the strongest possible rights for their clients. The result, particularly in the software and Internet industries, has been a proliferation of patents with extremely broad claims, purporting to own everything from international electronic commerce to video on demand to emoticons to means of hedging commodity risk....

Functional claiming is back. While experienced patent lawyers today generally avoid writing their patent claims in means‐plus‐function format, software patentees have increasingly been claiming to own the function of their program itself, not merely the particular way they achieved that goal. Both because of the nature of computer programming and because of the way the means‐plus‐function claim rules have been interpreted by the Federal Circuit, those patentees have been able to write those broad functional claims without being subject to the limitations of section 112(f). They have regained the ability to claim ownership not of what they built, but of what it does. They claim to own the function itself.

It is broad functional claiming of software inventions that is arguably responsible for most of the well‐recognized problems with software patents.

Of course, you can defend yourself in court if you have megabucks to spare, but good luck with that if you are a small company. The result, Lemley wrote is a patent thicket of claims that cover such a broad swath they can be used to go after anyone for anything. It is unique to software. In no other area are such broad claims accepted by the USPTO, he said. And the result is, patents become a block against innovation instead of an encouragement.

CCIA patent counsel Matt Levy commented on the executive action regarding functional claiming and explained it like this:

The most important order, and perhaps the most difficult to understand, is the Executive Order "Tightening Functional Claiming." This could help disarm some future trolls by staunching the flow of new overly broad software patents.

A patent "claims" an invention, which means that no one is allowed to make or use the invention without the patent owner's permission. A patent claim is the part of the patent that describes the invention, and it has to be clear and accurate. But a big problem with many software patents is that the claims only describe the features of the invention in broad terms instead of what the inventor actually did. That's how we get patents that cover the idea of backing up your computer over a network, which was the patent that NPR covered in "When Patents Attack!" It's like claiming the idea of an automobile when all you built was a go-cart. The President’s executive action should prevent trolls from running over businesses by claiming their patent covers wheeled personal transportation when all they invented was a go cart.

I have another real-life example for you from NPR's This American Life, When Patents Attack, Part 2. The transcript is available now, and look at this tragedy:

Laura Sydell: Not long ago, I was at a meeting in San Francisco put on by the Electronic Frontier Foundation, an advocacy group that's been critical of the patent system. It was an open meeting. And this guy you hear talking, Nick Desaulniers, had decided on the spur of the moment to drop in. And after hearing a couple of other people tell their stories, he got up to tell his.

He's an engineer. And his father's death had spurred him to invent a low-cost heart monitor, which he believed might have saved his dad's life. He developed a prototype in a graduate school class. And he'd started dreaming a bit.

Nick Desaulniers: You know, I got really excited about it. And I was thinking, maybe I can make a business out of this. My grandfather started his own business.

My father made his own business. I need to make my own business someday. So this was something I was really thinking, like, hey, I can make a business out of this.

Laura Sydell: But then he started a patent search to see if anyone else had come up with something resembling his idea already.

Nick Desaulniers: I was horrified at how generic some of the patents were-- "a system for remotely monitoring physiological signals." What the hell does that mean? There are so many ways, so many variables.

How are you getting the data from point A to point B? There are so many ways to do that. And this patent, it covers-- I guess it covers them all.

And seeing some of the numbers that these companies are going back and forth suing each other for, I'm terrified to create a business because of the patent system. I'm horrified. And I'm scared.

And I'm not going to create a business because of it. So however many jobs I could have created or however many lives I could have saved, that's it. Man ...


Alex Blumberg: And that is the current state of things. Something as dry as the US patent system can move somebody to tears.

A patent that covers all ways of getting data from point A to point B is too broad. That's obvious to you and me. But not to USPTO examiners sometimes. So, that's the point of the retraining, to make sure it *is* clear to examiners.

Now do you understand the damage that software developers have been telling the world about here on Groklaw for a decade? It's real. They can't do *any*thing any more without risking getting sued. And that also explains why the smartphone patent wars are so inconclusive and confusing and ridiculous. First Apple accuses Samsung of being a copycat and being guilty of infringing its design and utility patents. It wins in a US court, although it failed to get an injunction, but it lost in the UK and had to post a public apology. Then Samsung gets an injunction against Apple for infringing one of Samsung's patents at the ITC.

Who's the copycat now?

You want to know the real answer? -- Nobody. Or depending on how you look at it, everybody. Too many patents have issued. Too many bad patents have issued. And no one can do a thing in software development now without infringing somebody's patents.

Here's how the President's Executive Office report, "Patent Assertion and U.S. Innovation," described functional claiming abuse:

An additional reason that the issue of overbroad patents is particularly salient in software is due to the prevalence of “functional claiming” in these patent classes (Lemley 2012). A claim term is “functional” when it recites a feature by “what it does rather than by what it is” (In re Swinehart 1971).4 Functional claiming involves claiming exclusive rights over any device that performs a given function, regardless of how that function is performed.

Functional language can therefore lead to very broad and/or vague claims. These problems are especially acute for software patents. For these patents, it has been argued that the code is the function, with the implication that a software patent arguably excludes any other code that performs that same function. In contrast, in pharmaceuticals, the distinction between a function and the means used to perform that function is generally clear. For example, several patents have been awarded for the function of reducing cholesterol; each patent covers a different chemical compound—a different means of providing that function.

Compounding the problem is the fast-moving, interdependent nature of technical change in the software industry. Functional claims can be used to ‘over-assert’ a patent by attempting to cover products and processes that were never contemplated by the inventor or the examiner as being within the claim scope at the time of the invention. For example, a patent claim about a programmed processor could be asserted broadly to cover any and all devices that achieve the claimed result, rather than being limited to a device programmed with the specific software used by the inventor.

In addition, a single piece of software or website might have several thousand “functions” that could be claimed in as many patents. It is also difficult for an outsider to judge what an inventor meant by a claim and to know what sort of invention would be “obvious” to a skilled practitioner and thus unworthy of a patent. For example, in the case discussed earlier, the appeals court had to consider detailed features of twenty-year-old technologies to determine whether the shopping basket patents in fact made novel claims.

Thus, it can be very difficult to know if one is infringing patents. These broad, functionally-defined, and intertwined patents are therefore a key part of the PAE business model. These intermediaries acquire broad patents and threaten suit, in hopes of extracting settlements. If even one patent in a complex product is held to be infringed, the product cannot be legally sold (Lemley and Shapiro, 2005). This situation can lead to problems for practicing firms both large (note that a single smartphone may read on over 100,000 patents) and small (the basis of the demand letters discussed in the examples above is the alleged interaction between components of a computer network found in most offices). The stakes are particularly high when the venue for an infringement dispute is the U.S. International Trade Commission (ITC), given the ITC’s inability to award damages and reliance instead on exclusion orders barring import of products deemed infringing into the United States.

4 For example, functional language is often used to add further description to a structure or step, e.g., a claim may recite a conical spout (a structure) that allows several kernels of popped popcorn to pass through at the same time (a function). In re Schreiber, 128 F.3d 1473, 1478(Fed. Cir. 1997).

These days even end users, like some small restaurant in Podunk, USA, are getting letters from trolls claiming that because their customers are allowed to use the restaurant's WiFi, the restaurant owner owes the troll money. Any WiFi. All WiFi. No matter how it works. The restaurant didn't invent WiFi or do anything but buy a WiFi router and let the customers use the WiFi.

So, the problem is real. What is the President suggesting? Here are the five executive actions he proposes -- and remember that these are the actions he can take without Congress's approval. The one we really want to focus on is the second one:


Today the Administration is also announcing a number of steps it is taking to help bring about greater transparency to the patent system and level the playing field for innovators. Those steps include:

1. Making “Real Party-in-Interest” the New Default. Patent trolls often set up shell companies to hide their activities and enable their abusive litigation and extraction of settlements. This tactic prevents those facing litigation from knowing the full extent of the patents that their adversaries hold when negotiating settlements, or even knowing connections between multiple trolls. The PTO will begin a rulemaking process to require patent applicants and owners to regularly update ownership information when they are involved in proceedings before the PTO, specifically designating the “ultimate parent entity” in control of the patent or application.

2. Tightening Functional Claiming. The AIA made important improvements to the examination process and overall patent quality, but stakeholders remain concerned about patents with overly broad claims — particularly in the context of software. The PTO will provide new targeted training to its examiners on scrutiny of functional claims and will, over the next six months develop strategies to improve claim clarity, such as by use of glossaries in patent specifications to assist examiners in the software field.

3. Empowering Downstream Users. Patent trolls are increasingly targeting Main Street retailers, consumers and other end-users of products containing patented technology — for instance, for using point-of-sale software or a particular business method. End-users should not be subject to lawsuits for simply using a product as intended, and need an easier way to know their rights before entering into costly litigation or settlement. The PTO will publish new education and outreach materials, including an accessible, plain-English web site offering answers to common questions by those facing demands from a possible troll.

4. Expanding Dedicated Outreach and Study. Challenges to U.S. innovation using tools available in the patent space are particularly dynamic, and require both dedicated attention and meaningful data. Engagement with stakeholders — including patent holders, research institutions, consumer advocates, public interest groups, and the general public — is also an important part of our work moving forward. Roundtables and workshops that the PTO, DOJ, and FTC have held in 2012 have offered invaluable input to this process. We are announcing an expansion of our outreach efforts, including six months of high-profile events across the country to develop new ideas and consensus around updates to patent policies and laws. We are also announcing an expansion of the PTO Edison Scholars Program, which will bring distinguished academic experts to the PTO to develop — and make available to the public — more robust data and research on the issues bearing on abusive litigation.

5. Strengthen Enforcement Process of Exclusion Orders. Once the U.S. International Trade Commission (ITC) finds a violation of Section 337 and issues an exclusion order barring the importation of infringing goods, Customs and Border Protection (CBP) and the ITC are responsible for determining whether imported articles fall within the scope of the exclusion order. Implementing these orders present unique challenges given these shared responsibilities and the complexity of making this determination, particularly in cases in which a technologically sophisticated product such as a smartphone has been successfully redesigned to not fall within the scope of the exclusion order. To address this concern, the U.S. Intellectual Property Enforcement Coordinator will launch an interagency review of existing procedures that CBP and the ITC use to evaluate the scope of exclusion orders and work to ensure the process and standards utilized during exclusion order enforcement activities are transparent, effective, and efficient.

Number 1 means that operators like Intellectual Ventures won't be able to hide behind shells any more. New applicants will have to reveal who the real owner is, and current owners involved in any proceedings at the USPTO in any process will have to update their ownership information to show the real owner.

Number 3 is addressing the trolls going after end users, like the one sending dunning letters to restaurants letting customers using WiFi.

But it's Number 2 that we are particularly interested in:

The PTO will provide new targeted training to its examiners on scrutiny of functional claims and will, over the next six months develop strategies to improve claim clarity, such as by use of glossaries in patent specifications to assist examiners in the software field.
This means, going forward, that examiners will have to make sure applicants are not getting patents on claims as big as the sky. Will it work? The realistic answer is it can't fail to help.

As you know, I think the real problem is that software is mathematics, which is not patentable subject matter. So no, it won't solve all the issues. I don't think they expect it to, in that there are other suggestions for steps Congress needs to take. And even then, there are remaining issues. But it's a start.

If you look up the patent case mentioned in the patent report in the footnote, In re Schreiber, you'll find a reference to this case from 1971, In re Swinehart, that demonstrates that the problem is not just with patent examiners. Judges too have been enabling broad functional claiming. The problem has partly been, what is "too broad"? Where is the line? If you are a fan of patents and think they are bolstering the economy and encouraging innovation, you aren't going to rule that the line is at the same point as someone who thinks they are destroying the US economy. And judges on the Federal Circuit have historically been the biggest fans of patents anywhere but maybe the patent bar. In fact, in this case, the USPTO tried hard to deny a patent and the court reversed.

However, the functional claiming executive action will still help even with judges. First, the plan is to define terms so that the line is going to be made a lot clearer. Second, what the President said went out to judges too, not just to USPTO examiners, and they are all on notice that the government feels there is a huge problem and that he expects them to do their part against trolls. That made me think about what Judge Posner said in a debate in April, that he likes patent trolls. He called them buccaneers and privateers, and he said he thinks trolls are skillful. I'll guessing he'll think twice before saying that again. At least I hope he will.

Do you remember when one of the justices at the US Supreme Court in a hearing asked if bad patents were really such a big problem? The President has now answered his question with a resounding yes, there is a problem. And he's identified the problem as being functional claims that are too broad. And it's harming America. The harm to the US economy is real, he has told them. Now that the President has said that out loud, what judge is going to feel free to insist on damaging the US economy by approving broad functional claims?

Judge Newman, you're saying under your breath. Kidding. Sort of. She was on that 1971 case, though. And she thought CLS Bank was wrongly decided. *That* stupid patent was good enough for her tastes. But judges seriously are not trying to damage the US economy. That is the last thing they would knowingly do. And the US Supreme Court usually shows deference to agency rules, so the President saying he will set up a new rulemaking process at the USPTO regarding listing real owners resonates.

When implemented, the executive action tightening functional claiming, then, has the advantage that it will keep judges out of the picture, because such patents won't issue in the first place. It would then require an applicant to litigate to try to get a reversal of the USPTO's rejection, and not all can afford to do that, and even when they can and do, not all of them will succeed, particularly now, so at least there should be a real thinning of the ever-expanding patent thicket.

After that happens, hopefully folks will notice that the patent system is *still* a mess and still harming the economy, and maybe then they'll try the real solution, which is to face up to the reality that the courts damaged the US economy when they decided to let software be patented. It was a major mistake, and we are paying for it now.


The President's Executive Action Addressing Overbroad Functional Claiming ~pj | 457 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Corrections Thread
Authored by: bugstomper on Thursday, June 06 2013 @ 09:08 PM EDT
Please summarize in the Title box error->correction or s/error/correction/ to
make it easy to scan see what needs to be corrected and to avoid duplication of

[ Reply to This | # ]

Off Topic threads
Authored by: bugstomper on Thursday, June 06 2013 @ 09:08 PM EDT
Please stay off topic in these threads. Use HTML Formatted mode to make your
links nice and clickable.

[ Reply to This | # ]

News Picks Threads
Authored by: bugstomper on Thursday, June 06 2013 @ 09:10 PM EDT
Please type the title of the News Picks article in the Title box of your
comment, and include the link to the article in HTML Formatted mode for the
convenience of the readers after the article has scrolled off the News Picks

Hint: Use Preview to check that your links are ok. Geeklog may post long links
incorrectly unless you insert line breaks at punctuation points to make short
lines such as

<a href="

[ Reply to This | # ]

Comes transcripts here
Authored by: bugstomper on Thursday, June 06 2013 @ 09:11 PM EDT
Please post your transcriptions of Comes exhibits here with full HTML markup but posted in Plain Old Text mode so PJ can copy and paste it

See the Comes Tracking Page to find and claim PDF files that still need to be transcribed.

[ Reply to This | # ]

About time
Authored by: OpenSourceFTW on Thursday, June 06 2013 @ 09:11 PM EDT
I was expecting some half hearted action. This stuff doesn't sound half bad.

Thank you, Mr. President.

[ Reply to This | # ]

Executive order number 4
Authored by: PolR on Thursday, June 06 2013 @ 09:43 PM EDT
We are announcing an expansion of our outreach efforts, including six months of high-profile events across the country to develop new ideas and consensus around updates to patent policies and laws.
Waiting for the other shoe to drop. It sounds like we will have other opportunities to talk to the USPTO and the president.

[ Reply to This | # ]

Lawyers prefer functional claiming for software patent
Authored by: Anonymous on Thursday, June 06 2013 @ 10:47 PM EDT
because there is no such thing as a software invention.
Software are mere predefined instructions for a computer and
there is nothing software can make a computer do that was
not already predetermined. Therefore all software is
trivial, non-novel and not patent subject matter.

What makes computers useful are the abstractions the
software embodies. But of course these are not patent
subject matter either. I'm sure the software author
explained all these to the lawyer and so emphasis on
function to make the software sound more less abstract and
more concrete for the overworked patent examiner.

[ Reply to This | # ]

The President's Executive Action Addressing Overbroad Functional Claiming ~pj
Authored by: Gringo_ on Thursday, June 06 2013 @ 10:47 PM EDT

When implemented, the executive action tightening functional claiming, then, has the advantage that it will keep judges out of the picture, because such patents won't issue in the first place.

What about the thousands of overly-broad patents that are already out there?

[ Reply to This | # ]

It's all about intellectual monopolies of functionality
Authored by: jbb on Thursday, June 06 2013 @ 10:50 PM EDT
Bugstomper's post about blueprints under the previous article on an amicus brief regarding Oracle v. Google made me realize there is a deep similarity between the president's actions and Oracle's lawsuit.

The president is trying to get rid of the intellectual monopoly of functionality in patents, particularly in software patents. PJ's article explains why this particular type of monopoly is really bad for business. Oracle is moving in the exact opposite direction. They are trying to gain an intellectual monopoly on functionality by copyrighting APIs. The amici briefs also explain why this particular type of monopoly is extremely bad for business.

Our job is to remind ourselves that there are more contexts
than the one we’re in now — the one that we think is reality.
-- Alan Kay

[ Reply to This | # ]

Einstein was Wrong
Authored by: Anonymous on Friday, June 07 2013 @ 12:07 AM EDT
Proof is in the mouseover comment xkcd.
What can Obama do about that?

[ Reply to This | # ]

The Best summary of the mess
Authored by: Anonymous on Friday, June 07 2013 @ 01:42 AM EDT
You can't build a better mousetrap if someone has already gotten a patent on
"trapping mice", regardless of how or what device is used.

PJ has it in a nutshell.


[ Reply to This | # ]

But, what about rat traps?
Authored by: IMANAL_TOO on Friday, June 07 2013 @ 02:34 AM EDT
Context of functional implementation bothers me.

Like the excellent mouse trap metaphor, I would like to see any functional
patent to be generic, and if just linked to mouse traps but by necessity also
valid for rat traps. Unless one decides to remove the concept of software
patents altogether.

It is my impression that Lodsys, Apple and other trolls have confuddled the
borders between the pc:s, tablets, mobile phones, and smartphones claiming they
are distinct contexts so that one general idea can be patented for all classes



[ Reply to This | # ]

Here is the metric I am missing:
Authored by: Anonymous on Friday, June 07 2013 @ 04:28 AM EDT
What is today's main incentive to do a patent search? Minimizing damage.

The patent system is intended to distribute the cost of trail-blazing new technology.

Large companies producing themselves already have most of the costs accounted for by being first to market. The patent system is indeed intended to enable a business model for non-practising entities: inventors.

It turns out, sadly, that they have become mostly a mythical beast: non-practising entities are nowadays more or less synonymous with patent trolls.

Any regulation that will stop "non-practising entities" as such will also hit independent inventors, and those are the ones that the patent system is actually designed for. If you throw the independent inventors under the bus, it would be much saner to just throw the whole patent system under the bus rather than doing further window dressing.

So how is one going to distinguish patent trolls and independent inventors? Patent trolls are notorious for playing shell games with patents. But shell games are how intangible properties are being managed efficiently: in the parallel world of copyrights, the whole content industry is managed through more or less mandatory shell companies like the MPAA and RIAA.

So drawing the distinction there will not help much.

So the ultimate metric I see here is the return value: a patent needs to provide more value to the patentee than cost.

Patents are not to be awarded for coming up with an idea first, but for casting the idea into a form where making use of the patent is more economical than independent invention.

And the true litmus test is permitting independent invention, making patent licensing not as much a question of "who staked the claim first" but rather of "who built the road".

Patents are not supposed to be a reward for coming first, but a compensation for making a path that is worthwhile to travel on.

For often-cited things like drugs, this is easy to put into perspective: if you claim "independent invention" of a patented substance, you have to get independent licensing, make independent clinical studies etc etc. In that case, taking out a license will provide a significant advantage.

For most other questions, the fundamental question is not "was this the first person to think of it?" but rather "will some person working in this field on average profit from this patent or be set back by it?". If the answer is "set back", the patent should not get granted, as granting it is hurting society more than it helps. That's a much higher standard than laws demand nowadays, and the patent offices undercut the law standards significantly more, to boot.

In a similar vein, general handwaving claims along the line of "an apparatus to handle data received via channels" are not helping more than harming: they are staking claims, not making paths. While working prototypes can't be required from small innovators without manufacturing capabilities, the minimum standard are workable blueprints or schematics.

Not just general sketches.

Again, the decisive metric has to be: will a patent search in my field of work help me to get to a working product faster and cheaper? If the answer is "no", the system is not working according to its intention.

[ Reply to This | # ]

Patents are the problem, not just software patents.
Authored by: Anonymous on Friday, June 07 2013 @ 05:05 AM EDT

The thing is, Nick Desaulniers' invention would not actually be protected by
merely outlawing software patents. It *might* be solved by putting an end to
functional claiming, but that really is a crap shoot. It might solve his issues,
it might not.

No, the only way to *really* solve the core problem is to stop granting patents
in the first place. Abolishing the entire instrument as being too blunt, too
easily abused, too inefficiënt, and ,historically speaking, too ineffective.

Real scientific research proves that the patent system as such is doomed to
fail. It cannot possibly work to promote innovation, and if it doesn't do that,
then what on earth do we have it for?

End the patent mess: End patents.

[ Reply to This | # ]

The President's Executive Action Addressing Overbroad Functional Claiming ~pj
Authored by: Anonymous on Friday, June 07 2013 @ 08:28 AM EDT

For Making “Real Party-in-Interest” the New Default, IMHO the full ownership chain of the patent should be required so that it is clear when large, anti- competitive companies are selling their patents to trolls like lottery tickets.

Say the following ownership chain existed:
Original 'inventor' -> ... -> Big anti-competitive company -> Laundering shell -> J Random Troll -> Troll Shell

AIUI, under the proposed new rule in any litigation instigated by Troll Shell they would have to declare that they are working on behalf of J Random Troll. Where J Random Troll got the patent from need not be stated.

But this still allows any nasty company (NC) which wants to disrupt a competitor to conclude that selling some patents to trolls might be worth it:
- if the competitor settles it will cost the competitor money and some hassle and NC gets a PR opportunity to rebuke their competitor for not respecting IP and how NC is a paragon of virtue. The troll gets a relatively modest payout and can move on to their next victim.
- if the competitor fights and loses the fine will likely cost the competitor substantially more than settling and the hassle cost will be greater too. Again, NC gets to parade around the media lambasting their competitor. The troll has hit the jackpot.
- if the competitor fights and wins they still have to pay for their defence. The troll might lose the patent if it is particularly flimsy, but this isn't NC's problem as it is no longer their patent. As far as NC are concerned it is a lost opportunity, but they have plenty more patents and trolls ready to have another go.

In all the above scenarios NC doesn't need to get any share of a payout on the patents - the stifling effect is the primary objective and anti-trust law would probably prevent direct action anyway.

Having full visibility of the patent ownership chain would mean that if the same company name kept popping up it would be clear to everyone that NC are conducting a proxy war against their competitors and perhaps something could be done about it.

[ Reply to This | # ]

Contributing to the Economy
Authored by: DannyB on Friday, June 07 2013 @ 09:02 AM EDT
As an initial matter, because trolling patent trolls such as Intellectual Vultures object to the term "patent troll", I will use the non offensive term PTE to refer to Intellectual Vultures and other patent trolls. (PTE = Patent Trolling Entity).

Shuffling money around does not contribute to the economy. Moving money from your pocket to my pocket in exchange for not getting beaten up, but with nothing of material value having been created or no service performed does not enlarge the economy. When a PTE extorts money from innovators, money has changed hands, but nothing of value has been created or no service performed. Remarkably, the money is exchanged in order to prevent something bad from happening.

Note the remarkable similarity of PTE's to SCO's business model, or to a protection racket of organized crime, or Prenda Law's extortion letters wanting a settlement not to suggest to your friends, family and neighbors that you might be a filthy pirate of pornography of the worst kind. SCO created nothing of value and had no hand in the development of Linux but wanted to impose a tax on Linux. No code owned by SCO was in Linux. SCO did not even own copyrights to Unix. Yet SCO wanted money from Linux.

Note the similarity of Microsoft extorting money from Tom Tom for its GPS navigators running Linux. And Amazon, Samsung, Barnes & Noble, HTC, and others. Microsoft did not create something that these victims obtained in exchange for paying their extortion money to the PTE. Microsoft had no hand in creating any of these products -- in some cases quite the contrary as Microsoft made interoperable formats and protocols secret or difficult to use or discover.

The economy is about oranges, tires, usb thumb drives, milk, and many other things of value being exchanged for money. Also we must include services, such as painting the house, installing new plumbing, mowing the lawn, cutting and styling hair, and other services that require skill or labor.

Paying money to a PTE to be able to exercise a natural right you already had, in order to build something, did not grow the economy in any way. It merely moved money around. You would have had no greater difficulty (and almost certainly less) in building your innovative product if the PTE had remained under the bridge. (Or if new patented Trolinicide had been sprayed under all bridges open to public use.)

I'm sure those at PTEs such as Intellectual Vultures make statements about the economy so that they can sleep better at night. They may even have rationalized their behavior for so long that they have internalized this belief. But that doesn't make it true.

Between the two extremes of Google's "Don't be Evil" and Microsoft's "Be Evil Always", the PTE's should seek some moderate comfortable middle ground as Apple has done. While some may still find such a middle position objectionable, other industry leaders such as Microsoft and Oracle would not object.

The price of freedom is eternal litigation.

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Another biased, inaccurate, posting: Of course you can build AND PATENT a better mouse trap
Authored by: Anonymous on Friday, June 07 2013 @ 09:32 AM EDT

Mousetrap and method
App. - Filed May 23, 2011 - Published Nov 29, 2012 - Michael Hansen - Hansen
An apparatus and method are disclosed for improved operation and
functionality of a spring-loaded mousetrap. The improved mousetrap ...
&#8206;Overview - &#8206;Related - &#8206;Discuss
Safety disposable mouse trap
App. - Filed Sep 22, 2005 - Published Sep 14, 2006 - Jack B. Sr. Crider -
Crider,, Jack B. Sr.
This product is designed to provide a disposable spring-loaded mouse trap
with a safety arm to prevent accidental discharge of the bow of a spring-loaded
&#8206;Overview - &#8206;Related - &#8206;Discuss
Electronic mouse trap module
App. - Filed Aug 3, 2011 - Published Feb 7, 2013 - Rany ARLICHSON -
Arlichson Rany
A controller for a pest trap that includes a sensor, signaler, power source
and activator in a housing to be attached to and detached from a pest ...
&#8206;Overview - &#8206;Related - &#8206;Discuss
Mouse trap
App. - Filed Oct 25, 1989 - Published May 17, 1990 - Aake Silvandersson -
Silva Miljoe Ab
The invention relates to a mouse trap (1), consisting of means for catching
and killing any mouse (2) which may find its way into the trap, which is simple
and ...
&#8206;Overview - &#8206;Related - &#8206;Discuss
Safety disposable mouse trap
App. - Filed Sep 22, 2005 - Published Apr 6, 2006 - Jack B. Sr. Crider -
Crider,, Jack B. Sr.
This product is designed to provide a disposable spring-loaded mouse trap
with a safety arm to prevent accidental discharge of the bow of a spring-loaded
&#8206;Overview - &#8206;Related - &#8206;Discuss
Electrocuting mouse trap with automatic chamber-clearing mechanism ...
Grant - Filed Dec 3, 2009 - Issued Apr 16, 2013 - Robert T. Cruz -
Woodstream Corporation
An electronic mouse trap is provided having multiple kill and automatic
killing chamber clearing capabilities. The trap includes an elevated ...
&#8206;Overview - &#8206;Related - &#8206;Discuss
Animal trap, particularly a mousetrap
App. - Filed Apr 15, 1986 - Published Oct 23, 1986 - Yngve (Deceased) Eskil
Goete Holmberg - Holmberg Brita G E, Holmberg Dick L L
Animal trap, particularly a mousetrap, comprising a jaw (13) pivoted to a
base plate (10), which is spring biased to engage the base plate on one side of
the pivot ...
&#8206;Overview - &#8206;Related - &#8206;Discuss
Enclosed mousetrap having improved trap mechanism
App. - Filed Nov 8, 1985 - Published Jan 7, 1988 - Denis G. Kaiser - Amcan
An enclosed mousetrap (10) has a trap mechanism (12) mounted on a back wall
member (26) and having a bail wire (36) with a straight portion (42) that ...
&#8206;Overview - &#8206;Related - &#8206;Discuss
Animal trap, particularly a mousetrap
App. - Filed Apr 15, 1986 - Published Apr 15, 1987 - Göte Eskil Yngve
HOLMBERG - HOLMBERG, Göte Eskil Yngve (deceased, legally represented by
HOLMBERG, Brita G. E.)
Animal trap, particularly a mousetrap, comprising a jaw (13) pivoted to a
base plate (10), which is spring biased to engage the base plate on one side of
the pivot ...
&#8206;Overview - &#8206;Related - &#8206;Discuss
Electronic mouse trap module
App. - Filed Aug 3, 2012 - Published Feb 7, 2013 - Rany ARLICHSON - Ym Tech
A controller for a pest trap includes a sensor, signaler, power source and
activator in a housing to be attached to and detached from a pest trap. The
sensor ...
&#8206;Overview - &#8206;Related - &#8206;Discuss

1 2 3 4 5 6 7 8 9 10 Next

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Are techies the only ones amused by this?
Authored by: albert on Friday, June 07 2013 @ 09:54 AM EDT
BTW, did the study allow for all the extra runtime getting rid of viruses &

I thought not.

And where is Chromium?

I thought it was a little too early to start grasping at straws.., but if
there's a straw to grasp, MS will grasp it,


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The President's Executive Action Addressing Overbroad Functional Claiming ~pj
Authored by: Anonymous on Friday, June 07 2013 @ 11:32 AM EDT
"You can't build a better mousetrap if someone has already
gotten a patent on "trapping mice", regardless of how or what
device is used. "

That's brilliant! A perfect description of what is wrong with
the patent system.

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Cash Entropy Cost
Authored by: BitOBear on Friday, June 07 2013 @ 11:49 AM EDT
One of the concepts that I think need to be stressed in front of judges who ask
about the how serious the harm might be is what I call the "cash entropy
cost" of any system.

People talk about "toll taking" and similar terms as if they are
bounded incidents. The idea of "taking a toll" is very one-shot in the
mind. It sounds discrete. One thing, and gone.

But the thing is the costs of bad patents are continuous. Worry. Delay. Paten
searches before the fact. Building defences portfolios. Buying unnecessary
licenses. Clean-room avoidance to duck "willfulness" claims. Writing
around claims.

Much the way friction changes by material and circumstance, but cannot be
avoided altogether, the software patent racket imposes an continuous cost if you
program, sometimes enough to prevent the programming in the first place.

So a continuum exists, and along that continuum is a suppuration of cash in all

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The President's Executive Action Addressing Overbroad Functional Claiming ~pj
Authored by: Anonymous on Friday, June 07 2013 @ 12:10 PM EDT
What rejection do you propose that an examiner make for an
overly broad functionally claimed software invention?

102/103 rejections over art should have been used already
(in fact broad claims should be easier to reject with prior
art) so narrowing the scope of functional claiming does not
help here it would make it harder to find prior art.

101 whether software is statutory is a different issue not
related to the scope/breadth of the claims.

112 2nd paragraph can't be used because "breadth is not
indefiniteness" [mpep 2173.02 (I)].

that leaves 112 1st: written description or enablement both
of which are very hard cases to make. A person of ordinary
skill in the art of program is likely enabled to write code
to perform a function once described.

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The President's Executive Action Addressing Overbroad Functional Claiming ~pj
Authored by: Anonymous on Friday, June 07 2013 @ 01:06 PM EDT
My favorite quote from part 3:

"End-users should not be subject to lawsuits for simply using a product as

So then all software patents are now invalid since they're just using a computer
as intended? Nice.

[ Reply to This | # ]

Sad about the TiVO settlement
Authored by: Anonymous on Friday, June 07 2013 @ 05:42 PM EDT

Even if its a "low" $490 million - that's a LOT of money for such
simple patents!

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I am not convinced that the effects will be much more than cosmetic
Authored by: AH1 on Friday, June 07 2013 @ 10:15 PM EDT
While I both agree and applaud the President for taking this step, the reality
is this is an Executive order not a change in the law. If I understand
Executive orders correctly the effect will provide instruction/guidance to the
Patent Office. From what I see/read The USPTO will begin looking at
implementing rules for disclosing the true assignees/owners of patents involved
in litigation. They have also been directed to provide more scrutiny over
functional claims to prevent overly broad patents from being granted. While
this sounds good in theory, implementing this is going to be far more difficult.
Let's face it, the Patent Process was never envisioned to include software. As
a result, it is unlikely that the majority of the patent examiners have the
background/training to evaluate software patents. The result is likely to be
either a delay in issuing software patents, or incomplete scrutiny of patents
being issued. OK you can call me a cynic but "Empowering the Downstream
User" through education and outreach is likely to end up being little more
than window dressing. I doubt that education and outreach from the USPTO will go
any further than links on a website. So long as a Patent Troll and their
attorneys "feel no pain" when they send out "demand letters"
then the practice will continue. Unfortunately, the USPTO does not have the
jurisdiction to halt this practice. Sorry but the statement about expanding
dedicated outreach and study ends up as yet another unfunded mandate to the
USPTO. While it sounds good without funding it becomes little more than
updating mission statements. The statement regarding enforcement of exclusion
powers is, fortunately, a statement that has no meaning. It tells the USPTO to
launch an inter-agency review and find ways to improve processes and standards.
I am not a big fan of even recommending this one given the nature of the
"Thermonuclear patent wars raging between Apple, Samsung, Microsoft,
Oracle, Motorola, Google, etc. Given the USPTO track record for bad analysis
and overly broad patents I have little faith that the enforcement and exclusion
powers will favor the troll rather than the innovators.

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Patent Function is to patent Perpetual Motion
Authored by: BitOBear on Saturday, June 08 2013 @ 04:58 PM EDT
Consider breaks --- e.g. things that stop other things --- if the function of
breaks and the application of such things to other things like wheels or cars or
trains were patentable the fruit of that patent is perpetual. We now have
air-brakes on planes and we have breaking rockets on spacecraft. It's the gift
that keeps on giving.

This is particular to the nature of language. Long ago "wherefore"
meant why --- and it still does really --- but countless school kids are reading
Romeo and Juliet and thinking that Juliet's speech on the balcony is a query of
location. Asking "where" Romeo is not "why" he is the son of
the enemy of her father. This is so pervasive a mistake that it became the basis
of a TV commercial. The language has been yanked out from underneath the
original work and re-purposed to the detriment of the work itself.

Now software is itself an expression of function. That is, the text is the
action, modelled and frozen, waiting to be invoked. So any patent on any
software task is not just legally "purely functional" in the abstract
it is a case of "form and function = patent" "form =
function" therefore "patent = form form form". If you asked a
waiter for "milk and milk" and he said "so two milks" and
you said "no just the one milk" well how much sense would that whole
conversation make.

Part of the reason you cannot really patent the law, or patent the spy novel, or
poetry, indeed any situation where the words are the function is tied to the
fact that the words _are_ the function. Any description of the words of the
function is now far removed from the function.

I describe cam and lever arrangement for slowing a wheel and the function is
slowing the wheel and the form is the lever and cam. The more accurately I
describe the lever and cam the more correctly the fabricator or replicator of
the invention can make the lever and cam. Function and Form exist orthogonal to
one another, each amplifying the other. If I don't understand the description
but I can get my hands on the device my understanding of the description is
enhanced. Similarly if I have the device and I don't understand it the
description may help advance my understanding as well.

I think that is why the language of patents involves the patent
"teaching" the invention.

So if I show up at the USPTO and drop a rock on the desk and keep repeating the
word "rock", it is unlikely a patent will issue. The fact of a thing
doesn't teach a thing.

And if I show up with vague representations of opacity and weight I likely won't
get a patent for all things heavy and opaque.

So this gets us back to perpetual motion (believe it or not) because perpetual
motion machines are usually "things that would work but for friction and
entropy". Now those a huge things to omit, but they are such givens that we
tend to omit them. And when we just forget about them the devices described look
both inventive and functional. So lots of patents were granted for such devices
but nobody could build them because the details of the patent, absent a working
prototype, didn't have any total meaning. The function of the perpetual motion
machine was illusory because the form and the method were incomplete.

But if those patents were issuing today, we would be having people trying to
enforce the fractional claims. "Hey buddy, you have a ball rolling down a
ramp. I own that as part of my 'wheel of articulated ramps and balls'

Now you may have heard programmers say "only the code details the function
of the code"; this is the attempt to explain the missing friction in the
perpetual motion patent problem.

Patents on software, absent the full text of the software itself, are pure
hand-waving. They don't describe the function any more than "heavy and
opaque" fully describes the properties of a particular rock, let alone
rocks in general (quartz, for instance, being translucent not opaque). And the
lawsuits pursuing claims, to a programmer, are like having someone come by and
say "well I can't sue you for the opaque part but I've got you by the
"heavy" bit so I'll see you in court.

The prima facia defense from a software patent that includes the code would be
to pop out different code and say "look, my thing is different, go
away". Just as if you were sued by the cam-and-lever break guy and you
brought out a disk-and-clamp example of your own devising.

This is the meat, in fact, of why copyright is distinct from patent. When you
write novels or indeed software, the writing is the thing and nothing else will

The only real fix is to have congress officially class software as a matter of
copyright and not a matter for patent. Software patents need to be banned just
like perpetual motion patents were banned.

And just like perpetual motion patents were the basis of scams and significant
economic harm, software patents are harmful and without value, but instead of
being used in scams, they are being used in extortion.

[ Reply to This | # ]

The other NPR report on Patent Trolls.
Authored by: Anonymous on Sunday, June 09 2013 @ 08:50 PM EDT Heard it on the radio the other day. Pretty damning to IV. Apologies if already seen.

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The President's Executive Action Addressing Overbroad Functional Claiming ~pj
Authored by: JonCB on Monday, June 10 2013 @ 10:18 PM EDT

Good article overall and definitely positive news i think. I have two comments.

such as by use of glossaries in patent specifications to assist examiners in the software field.
Why this isn't de rigeur to begin with i don't know. Technology in general has a problem with overlapping fields of knowledge and conflicting (and non-obvious without skill in the art, which lawyers and judges aren't) terminology such that (as far as i'm concerned) a patent without a glossary defining its terms should be knocked back without further examination.
After that happens, hopefully folks will notice that the patent system is *still* a mess and still harming the economy, and maybe then they'll try the real solution, which is to face up to the reality that the courts damaged the US economy when they decided to let software be patented. It was a major mistake, and we are paying for it now.

Don't disagree with anything you've said, just would point out that I think this step is necessary. Right now the pro-patent crowd don't understand why software should be so special as to not get any patent protection whatsoever. By working with them to cull the obvious bad apples (e.g. functional claiming) then we reduce the problem without being fought every step of the way and then either get to a place where the problems no longer occur or where the only possible solution remaining is divorce the two.

I think another step that needs to be taken is to clarify what is meant by a) prior art and b) obvious. So many cases I see where the patent is "do what was written X years ago in this academic paper" or "do what is done in this X year old open source project", and neither of these things seem to warrant patent protection. And yet if USPTO rubber stamps the patent to victory, it's an uphill battle to fix.

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