The Register has an article by Robin Bloor on a patent, Patent No. 5,132,992 being used as a litigation weapon by Acacia Technologies. The article's title indicates that it is a special threat to open source. Actually, it's a threat to anyone with a web site and streaming video or audio. The article correctly points that out, and it goes on to mention the submarine patent threat to open source.
A Groklaw reader asked for more information on this patent, so here it is. It turns out that the Register article doesn't tell you that you may be able to do something about this patent.
It is numero uno on EFF's new Patent Busting Project's list of what they are calling their Ten Most Wanted Patents, wanted in a playful sense for
"Crimes Against the Public Domain; Willful Ignorance of Prior Art; Egregious Display of Obviousness". Here's the purpose of the project:
"B. Challenging The Patents
"Once it has identified some of the worst offenders, EFF will begin filing challenges to each in the form of a 're-examination request' to the U.S. Patent and Trademark Office. These requests create a forum to affirmatively invalidate patents rather than forcing technology users to await the threat of suit. Under this procedure, EFF can choose particularly egregious patents, submit the prior art it has collected, and argue that the patent should be revoked. EFF will collaborate with members of the software and Internet communities as well as legal clinics and pro bono cooperating attorneys to help in these efforts."
From their announcement:
"EFF Announces Ten Most-Wanted Patents
"Start forming your patent-busting posses! Today, the Electronic Frontier Foundation's Patent Busting Project announced which patents the organization will target first in its campaign to rid the world of frivolous patent infringement lawsuits. After sifting through dozens of software and Internet-related patents submitted to its patent busting contest, EFF targeted ten whose crimes have made them enemies of the public domain. All the most-wanted patents are dangerously overbroad; many pose a threat to freedom of expression online. And every single one of the targeted patents is held by an entity that has threatened or brought lawsuits against small businesses, individuals, or nonprofits. Target number one is Acacia, a company that has litigated relentlessly against small businesses to enforce patents that it claims cover a broad array of technologies used to send and receive streaming media online. Victims of Acacia's legal threats include websites that host home videos and several 'mom-and-pop' adult media companies."
Here is what EFF says about the threat from this patent, from their page on the Acacia patent: "Laughably broad patent would cover everything from online distribution of home movies to scanned documents and MP3s."
They are asking for help in bringing down this patent, specifically by searching for prior art. If you wish to help, here is the information you need:
The Accused: Acacia Technologies
Patent Name: Audio and video receiving and transmission system
Patent Number: 5,132,992
Description: Patent covers the sending and receiving of streaming audio and video over the Internet.
Critical Date: January 7, 1991
How to help:
Click here if you are a law student, prior art searcher, or a patent attorney interested in helping bust this patent.
Click here if you are a technologist interested in providing technical analysis to help bust this patent.
Click here to submit prior art to help bust this patent.
EFF also lists some links for more info:
You might enjoy reading about one patent that recently foundered on the equitable doctrine of "prosecution laches" [sometimes, as in this document, spelled
latches] -- the courts ruled that the inventor waited too long to prosecute (in one case 39 years), so the patents were declared unenforceable. If you'd like to read a transcript of the testimony of a patent expert trying to say the patents were valid, here's the transcript of a John Witherspoon's direct testimony at trial. He evidently worked for the Patent Office, on the Board of Appeals. It will give you an idea of what patent trials can be like (zzzzzzz) and also that they are normally experts dueling with one another. In this case, Mr. Witherspoon's expert testimony did not carry the day.
If you think that only organizations like EFF think the patent system needs fixing, you might also like to read the Opening Statement [PDF] of HP's Associate General Counsel, Director of Intellectual Property, Stephen P. Fox in February, 2002, before the FTC/DOJ Hearings on Competition and Intellectual Property
Law and Policy in the Knowledge-Based Economy.
[HTML] Here's one part of what he said:
"The current state of the patent law system is problematic from HP's standpoint. We have
witnessed in recent years a vast proliferation of patent grants by a seriously understaffed PTO and an
equally vast proliferation of complex litigation over patent validity and scope. Notwithstanding the
centralization of patent law development in the Federal Circuit over the past two decades, the governing
standards for patentability and patent law jurisprudence generally remain plagued by unpredictability in
their application, particularly with respect to patents bearing on new or emerging technologies. The
result is pervasive uncertainty about legal rights, both in terms of ability to enforce one's own patents
and ability to avoid rapidly escalating exposures to infringement claims by others. And that uncertainty
heightens risks surrounding innovation investment decisions.
"Those risks, moreover, are a growing menace to innovation efforts across the information
technology landscape. Given how much they burden and impair a company as resourceful as HP, the
loss to society from their cumulative impact on companies large and small including the most otherwise
promising start-ups unable to raise capital for their projects in this environment must be considerable. It
is without doubt a serious drag on the technological and scientific progress that the patent system was
designed to promote.
"Competition policy is deeply implicated in this unsatisfactory situation. An unknown but
undoubtedly significant number of invalid patents are issued; an unknown but undoubtedly significant
number of patents generate lawsuits or threatened lawsuits involving overbroad claims. Both
phenomena create serious impediments to competition, both from existing products on the market and
from new products in the development stage. Litigation has become a poor means of addressing these
problems, in part because of the unacceptably high cost and length of the litigation process and in part
because of the already mentioned unpredictability of litigation outcomes. There are high stakes for
plaintiffs and defendants alike in these suits. There are, however, equally high unrepresented stakes for
the public in these same suits. Courts are called upon to adjudicate sharply conflicting arguments over
IP rights without hearing from a voice on behalf of the public's interest in results consistent with
innovation-encouraging competitive markets.
"We would respectfully suggest a new role for the Federal Trade Commission and the
Department of Justice in filling that gap. Specifically, both agencies could look for appropriate cases in
which they would participate in an amicus capacity to present their perspectives on issues of patent law
with significant competition policy implications. There are many issues of this sort on which the Federal
Circuit in particular could benefit from FTC or DOJ input. Examples of issues on which the Federal
Circuit could benefit from your agencies' thoughtful analysis of competitive effects include all of the
following: (i) patent claim certainty versus the doctrine of equivalents; (ii) licensee estoppel; (iii) when
patent misuse should and should not coincide with antitrust liability, (iv) prosecution latches or late
claiming; and (v) the proper role of juries in patent cases."
The FTC in October of 2003, after the hearings, put out a report, which made recommendations for the patent system. The PDF of the report itself is here. Among the important recommendations were these:
"Specifically, the report recommends:
"Creating a new administrative procedure that will make it easier for firms to challenge a patentís validity at the U.S. Patent and Trademark Office (PTO), without having to raise an expensive and time-consuming federal court challenge; and
"Allowing courts to find patents invalid based on the preponderance of the evidence, without having to find that clear and convincing evidence compels that result. The current standard of 'clear and convincing evidence' undermines courtsí ability to weed
out questionable patents. This is especially troubling, since certain PTO procedures and rules tend to favor the issuance of patents.
"The report also recommends that Congress limit the award of treble damages for willful patent infringement. Some hearings participants explained that they do not read their competitorsí patents because of concern that learning about othersí innovations will expose them to treble damages infringement liability. Failure to read competitorsí patents, however, can harm innovation and competition. . . . .
"The FTC also outlines in the report several steps it will take to increase communication between the antitrust enforcement agencies such as the FTC and the PTO. In particular, the FTC will:
"Continue to file amicus briefs in important patent cases that affect competition;
"Ask the PTO Director in appropriate circumstances to reexamine questionable patents that raise competitive concerns; and
"Urge the creation of a Liaison Panel between the FTC, the DOJ, and the PTO to permit the exchange of policy views on important issues as they arise."
Obviously, somebody would be supposed to care if patents were ever to be used as an anticompetitive weapon against FOSS, and there is a process in place. The National Academy of Sciences also released
recommendations on fixing the patent process, and they suggest that Congress pass legislation to create an "open review procedure" for third parties to challenge recently issued patents before the USPTO's administrative patent judges, leaving federal district courts free to focus on patent-infringement issues.
While they debate, the EFF is moving on the prior art front. If you feel like working on the EFF's prior art project, happy hunting! And if you have technical expertise, you might want to know that the Public Patent Foundation is seeking technical experts willing to work on a pro bono basis. If you wish to volunteer, you can do so via their web site. Here's what they are looking for:
"Technical experts work with PUBPAT's legal staff to analyze specific patents within their field of expertise. Example projects include researching and drafting reports on specific technological fields and providing written or oral testimony in support of PUBPAT's legal services."