Groklaw member Tkilgore attended the Santa Clara Law conference Solutions to the Software Patent Problem on November 16th for Groklaw, and he has now sent us his report. We have a second one due also later, but let's get started with his.
He is a mathematician, so that is his frame of reference, and I hoped that he'd be able to raise questions that might help conference speakers to see a side of things that they otherwise might not.
As you know, Groklaw stands for the proposition that software is algorithms, nothing else, and that algorithms are mathematics, and hence unpatentable subject matter, so I hoped he'd be able to present that thought. Sadly, although he tried to ask questions, he was never called on.
However at the end of his overview of the day, he writes about his impressions of the day, how the room seemed to be divided into two groups, 1) programmers and academics who teach computer programming, and 2) lawyers or those representing corporate interests. It gives an interesting and unique flavor to his coverage, one not to be found anywhere else.
A Report on the Santa Clara Conference on Software Patents
The conference was a one-day conference, which started at 8:50 am and ended
at 5:20 pm with a a reception afterwards from 5:30 to 6:30. There was a
lunch break from 12:15 to 1. The schedule can be found at the conference
It was adhered to closely.
The morning program consisted of three panels. The first was called a
"Keynote" and was titled "What is the Problem?" The second was "Panel #1:
Legal Reform, Part 1." Then after a coffee break we had "Panel #2: Agency
The afternoon panels were called "Keynote #2: Views from the Trenches" and
then "Panel #3: Legal Reform, Part 2." After this an afternoon coffee break,
then "Panel #4: Self Help" and at the end "Keynote #3."
Some of you who were not in attendance were able to view the sessions live,
except for the talk of Richard Stallman who refused to have his talk
streamed on the ground that Silverlight was in use. Since I was actually
present, I do not have the live streaming to look at, and thus my
presentation of what happened is based upon my notes, which in what follows
might be embellished by memory and thus not word-for-word correct.
got tired toward the end. I also tended to write less when things seemed to
get repetitive, when the presentation seems to echo a well-known position,
or was a talk which presented the activities of an organization, when those
details can best be found in the organization's own online resources.
The conference begins:
Eric Goldman opened the conference at 8:50 with a
10-minute introductory talk. He explained that the conference was
organized and held under the premise that software patents are a problem,
and the idea behind the conference is to look for solutions to the problem.
Though there is a broad consensus about the existence of a problem, not
everyone is in agreement about its precise nature, nor in agreement about
proposals for solutions to the problem. So, that is why the conference is
taking place. He mentioned the EFF and IEEE as co-sponsors and several
others, too. I could not catch all the names of the co-sponsors; the list
presumably coincides with the list on the conference web page (Berkeley Center for Law and Technology, EFF, IEEE Santa Clara Section, IEEE CNSV, and Cooley LLLP).
Goldman then added that many of the conference resources and materials
are and will be presented at the conference web page (see above) and at
wired.com (these materials are also linked from the conference web page). As
I am transcribing these notes, the text of several of the talks has indeed
been posted, and one hopes for more.
Dr. Goldman further explained that the conference schedule was very tight and
they were going to run a very tight ship to keep on schedule, which was done
just as he had said. He said that there would be an online poll on
Twitter after each panel, and the participants could vote about which
presentation or "solution" to the software patent problem presented by the
respective panelists that they liked best. I myself did not take part in
this survey, as I came to the conference only with "old technology," ready
to use pen and paper but not equipped to participate in electronic voting
Then, he stepped down and the first panel began.
Keynote #1: What is the Problem? ( 9:00 - 9:40 am )
The moderator of this panel was Andrew Chin of the Uinversity of North
Carolina [Let’s Create a ‘Concrete Causation’ Standard for Software Inventions], and the panelists were Richard Stallman and Kent Walker from
Google. First to speak was Richard Stallman, then Kent Walker. Time was
allotted for questions at the end.
Stallman [Giving the Software Field Protection from Patents]:
Richard Stallman started his talk consistently with his well-known
principles, by requesting that live screening be turned off, as he had
been given the information that it was using Silverlight, which, he said, is
non-free. When it was confirmed to him that the recording had been turned
off, he proceeded.
His opinions on the topic of software patents and on the
subject of "intellectual property" in general are well-known, but the
repetition of those ideas at a conference on the problems of software
patents is both timely and appropriate. "Why are software patents bad?" he
asked, "Why are patents on ideas bad? Software patents interfere with
freedom. Software *does* need patent protection. It needs protection from
Patents are different from copyright. We should not use the term
"intellectual property" as an inclusive term. "Intellectual property" is bad
terminology. One needs to talk about specifics, not generalities. So, what
is bad about patents?
Stallman then proposed a comparison to the bad effects of software patents
by supposing that music had been subject to a series of "musical idea"
patents from the 17th and 18th centuries onward. Patents covering riffs,
chord progressions, and such. What would have happened to Beethoven? His
contribution to music was the combined effect of what he did, not the
individual components (many of which were borrowed from others).
Patents on software have a similar effect. Software developers are
threatened by patents. Patent systems should (should have) avoided that.
Patents are not property. They are government-given grants. Government
could take away as it has given. But how to ask for solutions? We need to
ask for software to be a "safe harbor." Stallman then qualified this by
explaining that software needs to run on a "general-purpose machine" (in
order to stay within this safe harbor). Diamond v. Diehr, he said,
required hooking up a rubber-curing machine. The CAFC then twisted this
decision around to mean that the computer was what was patented, not the
Stallman then concluded by saying that people keep looking for
half-solutions. That is a mistake. We need to protect all software
developers, not just some. We need to get the support of all software
developers, not just some. We also need to avoid future stretching and
misuse of the boundaries of what can be patented.
Walker [Don't Let Trolls Exploit Patent Systems Flaws]:
Kenneth Walker (from Google) then spoke. He mentioned first the following
Then he asked, why do trolls hit tech companies? And his answer was that
there were so many patents with broad and vague claims, including claims
which included or covered technology which had not really been invented yet
when the patent was filed.
- There are lots of patent challenges to Google.
- Article I Section 8 of the constitution permitted patents as "support for
the useful arts," drawing an obvious negative comparison to current reality.
- A patent examiner has on the average 20 to 24 hours to evaluate a patent.
- 4000 patent suits were initiated last year.
- Troll claims cost US companies an estimated $29 billion a year in settlements.
- Building the Panama Canal cost $12 billion in today's dollars.
- It is products and services, not patents, which really serve the country.
He characterized the result as classic "dead weight social costs."
As a solution to the problem, he said that we need to refocus the patent
system to promote real innovation. The CAFC and the Patent Office, he said,
have recently taken positive steps. But we need to do much more. He listed
the following points:
1. Patents should be about creative production, not creative writing.
2. Weed out bad software patents already issued.
3. We need clear rules about damages. We need easier ways to collect costs
for frivolous claims.
The above, he said, will not solve the larger problem, though. We need for
the whole system to be refocused.
The floor was then opened for comments and questions. Dr. Chin made a
comment which at this point I do not fully know how to interpret, that we
"need a concrete causation problem."
Then there was a question for
Richard Stallman, "Do you have any good definition of
His answer: "Any software which runs on a general purpose computer should be
excluded from patentability."
A series of several more questions for Stallman then followed:
He was asked whether some very special programmers might deserve patent
protection (presumably because what they had done was particularly ingenious
or valuable). His answer was, "No."
It was at this point, I think, that he
was asked, too, whether he could conceive of such a thing as a "good"
software patent, and he said "no" to that, too. He further explained that
to make such distinctions would make some people more protected than others,
thereby opening the door to abuse and also thereby splitting the class of
people whom he was attempting to protect into factions, and that it is also
nearly impossible to make such distinctions about what is really, really
valuable and what is not quite so valuable as all that. He further pointed
out that there is lots of really difficult mathematics and nobody ever said
it is patentable even though some of that mathematics is both famous and
essential for modern life.
He was asked about comparing software to other fields where things are
patented on a regular basis and nobody is complaining (and so, then, what
exactly are software people complaining about and why is it that they are
not just bellyaching?). His response was that software patents are patents
on thought. The effects of software patents are not confined to specific
industries and special groups of people. *Everybody* is doing software
development. He explained that this means, essentially, the whole
population and practically every branch of business, industry, and
technology. Large and small companies are writing their own software for
their own use, either hiring programmers or writing it themselves. Thus, he
said, software patents are a burden on all of society and are an
infringement on human freedom, in a manner which does not apply to patents
in any other field.
At this point, questions for the Keynote #1 panel were cut off, due to the
In this "Keynote" session, it was certainly agreed that software patents are
a problem, but differences in approach were already manifest. Richard
Stallman described patents on software as patents on thought, which amount
to patents on the use of the human brain to reason and to solve problems by
the application of reasoning. Thus, to Stallman a patent upon software is a
direct threat to human freedom. Stallman got a lot of obvious agreement
from a large portion of the audience, too.
On the other hand, Kenneth
Walker focused mainly upon the deleterious effects of "bad" patents and the
economic chaos caused by "trolls" and by the misuse of patents as
competitive weapons between companies. These two points of view, which are
in fact very different from each other, were manifested in many other talks
during the conference and also in many of the questions which were asked
from the floor. Also, the idea of trying to find common ground between
these points of view and trying to find a program or programs of action
which everyone could support was an oft-recurring theme.
Panel #1: Legal Reform, Part 1 ( 9:40 - 10:50 am )
The panelists were James Bessen (Boston U. School of Law) [ Can New Fees Fix the Patent System? Experts Weigh In], Colleen Chien
(Santa Clara U. School of Law) [Tailoring the Patent System to Work for Software and Technology Patents], Brian Love (Santa Clara U. School of Law) [ How PTO Fees Could Decimate Patent Trolls],
Christal Sheppard (U. Nebraska College of Law) [Congress (In-) Action: Resolving a Court Created Gordian Knot on Software Patents]. Two commenters were also on
the panel, Michael Meurer (Boston U. School of Law) and Jason Mendelson
James Bessen led off by pointing out that there are economic aspects of
software patents, and he compared the situation in the EU to that in the US.
In the EU, he said, there has been restraint on software patents and in the
US there has been exponential growth. He then listed a series of court
decisions which provide, he said, some limits and restraints on the
patenting of software:
1972: Benson and Flook
(Disclaimer: I might have missed something he said about these decisions. He
was moving fast)
(no date given) CLS Bank
In spite of the negative decisions which were intended to slow or stop
software patents, he said, the economic forces which have favored them have
been irresistably strong. Money was the main driving force, and it is
necessary to do things to inhibit the pressure of money. Meanwhile, there
have been a lot of bad consequences.
He explained that patents are almost impossible to search because the words
might be quite different. For example, one would not find "slide to unlock"
whle searching for "activating the function" (or was it "activation
function"?) and this could literally be costly. I think I remenber he said
that this example was based upon an actual patent search which really did
take place, really did come up with nothing, and the failure to snag
anything relevant was indeed quite costly to the company which did the
search and failed to discover the patent which impinged on what it was about
to do with its commercial product.
He explained that patent applications and descriptions are "full of magic
words" which are meant to pretend to describe exactly and to increase the
appearance of novelty, such as "slide to unlock" containing the words
"continuously moving the finger." In short, "word games" are played, which
involve and entangle the courts, the patent drafters, and the USPTO.
Again, he said, the pressure for all of this is money, resulting in
continuing and concerted efforts by those who want the patents to get
around any previous restrictions.
He said that what is needed is a "Pigovian tax" (a piece of economist
jargon; see Wikipedia). He compared the situation with software patenters to
that of polluters, in that there are social costs for software patents and
social costs for pollution, but those who take out software patents do not
need to pay those costs, just as polluters do not need to pay for having
caused pollution but instead the costs are shunted off onto all of us.
Thus, one of his central suggestions is to change the law so that "polluters
Among the social costs, he mentioned two items: deadweight loss from market
power and patent troll litigation. His proposed solution, then, was to
mitigate those effects by changing the fee schedule for patents. He would
escalate the fees over the years for the renewal and maintenance of patents.
This, he said, would provide a strong disincentive to trollish behavior,
because patent trolls are typically shoestring operations which expect to
hit a big jackpot and right now they need pay practically nothing for the
maintenance of their patent portfolios. In this regard, he pointed out that
in some other countries, Germany in particular, the kind of escalating or
steeply progressive scale of renewal fees for patents which he thinks should
be adopted is already in place.
Another proposed reform would be to tie the cost of application for a patent
to the field in which it was to be issued. Significantly more fees should
be charged in fields where the probability of lawsuits is shown to be high.
Adoption of this measure across the board, over all fields, would directly
affect software patents without mentioning software patents by name. Fees,
he asserted, are part of the solution.
He concluded his talk with the words, "See if you can find words to change
the world. But remember. Money talks. BS walks."
A very serious and quite credible analysis was presented here of the
economic forces which have driven the expansion of software patents,
overcoming any attempts to put on the brakes, and then of the deleterious
effects upon business and the economy which have ensued.
When the time came
for questions from the floor, I did not get called upon, either at this time
or any other. So I did not ask any question. But the presentation
certainly gave rise to one. I would have asked, in view of the apparent
inevitability of the economic forces which were thus depicted, that just how
(without stepping outside this analysis) could any attempt to mitigate the
obvious bad effects by such things as fee adjustments be expected to take
place? After all, the people who are making so much money out of a system
which seems to bend to the Almighty Dollar would certainly see that coming,
and they would move heaven and earth to stop the changes, wouldn't they? I
mean, we seem to have had trouble making polluters pay for pollution and for
similar reasons. But this question remained unasked and unanswered.
Colleen Chien was up next. She pointed out that the problem of software
patents was not new. She mentioned in particular a Presidential Commission
in 1967 which argued against software patents, and a public hearing which
took place in 1994. Why, then, has the problem persisted? Answering her own
question, she said that the interests of Big Pharma short-circuited the
interests of the tech industry. We need differentiation.
Then she mentioned that there is a perceived problem with the TRIPS treaty
and related international agreements. Article 27 of TRIPS, she said,
contains a clause that "patent rights will not discriminate between fields."
She then tried to debunk the idea that TRIPS causes a real problem,
mentioning that surgical methods are exempted from patent enforcement (i. e.
surgeons can not be sued for violating a patent if they apply some patented
procedure during a surgical operation), also certain exemptions relating to
drug patents, and several other examples which I could not write down.
How can such exceptions be done, she asked, and answered by saying that
exceptions are OK if they have narrow, well-defined application and they do
not short-circuit "legitimate interests." She then explained that tech
patents are different from patents in other areas, because
- it is impossible to search patents on tech and software
- infringement is usually inadvertent
- small inventions, patented, are used in big products
- short production cycles
Such criteria are already applied, she said, in courtroom cases about
software and technology patents, especially the one about small inventions
in big products. Based upon this analysis, she proposed that an exception be
carved out for software patents, similar to the ones mentioned above for
medical practice. There should be a clear test for the exception. She
commented that the patent system as a whole has no legitimate interest in
Finally, she mentioned two other tangible steps which ought to be taken:
1. significant increase in patent maintenance fees after 5 years
2. carve out a limited "innocent user" exemption
The next panelist was Brian Love, also from Santa Clara Law School. He has
done a study which analysed what happens during the 20-year cycle of a
patent, with some detailed collection of data, and this talk was based upon
that study. It is not possible to give justice to the presentation of what
was essentially an academic article in this brief description.
One of his main points was the need for term reduction, especially for
software patents, that the standard 20-year term is just too long a term to
fit software. Then, expanding on that point, he pointed out what he called
"the bad news," that 17 to 20 years down the road is precisely the time when
most troll patents are litigated. The observed facts and implications:
- Product companies and Non-Practicing Entities (NPE's) tend to enforce
their patents at opposite ends of the patent term spectrum.
- The last three to five years of the terms of technology-related patents
are primarily of benefit only to trolls.
In fact, the situation is such that 60% of the patent lawsuits filed by
trolls would be impacted if there were a three-year shortening in the life
of the patents. Other lawsuits filed in this last three years period would
be affected, too, suits filed by "product companies which are acting like
trolls" in order to make a last attempt to monetize their patents. He
mentioned Kodak and Encyclopedia Britannica as specific examples of
companies showing this "troll-like" behavior.
Impediments to an attempt to shorten the terms of technology patents could
be foreseen to come from TRIPS and from congressional gridlock.
As an alternative to statutory change, patent maintenance fees could be
adjusted upon an escalating scale as time passes. The PTO has the right to
adjust its own fees. Several other countries are already doing similar
things with fee scales, including UK, Canada, and some others.
This essentially was the end of Brian Love's presentation.
Both Brian Love and the previous panelist, Colleen Chien, have
mentioned maintenance fees for patents. Some others, later on, mention these
fees, too. It is not easy to make clear what the issue is about, just from
some quickie notes about the talks, so what follows is a distillation of
what several people said about the issue of maintenance fees for patents and
why a change would help.
When a patent is filed, there is an application fee. At fixed intervals
after the patent is granted, up to the 20-year maximum life, the patent
holder must pay a maintenance fee in order to keep the patent in force. If
the maintenance fee is not paid, then the patent automatically expires when
the maintenance fee is delinquent. Many patents in fact do expire at due
dates of maintenance fees precisely because nobody bothers to pay the fee.
The maintenance fees for US patents are currently quite low, also roughly
the same at the various due dates, which occur at periods something like 2
years, 5 years, 12 years, and so on (I don't remember exactly but some
panelist, probably Brian Love, put up a table). The maintenance fees in
other countries increase dramatically as the patent gets older. The
reasoning which justifies that is, if the patent is valuable to the holder
because of actual use, then the holder will renew it. If it is not actually
valuable, the holder will not want to spend the money for a worthless
So, how is the maintenance fee schedule deemed to affect patent trolls?
Well, patent trolls typically buy up lots of patents, treating them like
lottery tickets and hoping that one of those patents will win the Irish
Sweepstakes. The troll relies upon having few or no fixed expenses in order
to do this, and produces nothing and has no income unless someone licenses
one of its patents, or the entire portfolio. Thus, the troll is taking
great advantage of the extremely low patent maintenance fee in order to
maintain lots of patents. A significant increase in the maintenance fees,
therefore, is a significant hit against typical troll behavior. This is
especially true, moreover, because the observed behavior of trolls is to buy
up older patents which either nobody noticed or nobody enforced, and then
try to take advantage. If the maintenance fees were to go up sharply in the
later years of a patent's life, then, the current pattern of troll behavior
would be severely affected.
Several other countries have deemed it good to increase steeply the
maintenance fees as patents get older, and have put a sliding fee scale into
effect. The US has not done so. In any event, the above comments are
intended to explain what the discussion of maintenance fees was about.
Next up was Crystal Sheppard, University of Nebraska School of Law.
In a nutshell, she said that the problem was Congressional action or,
better, inaction, toward resolving a court-caused problem. She mentioned
specifically the following court decisions:
- Gottschalk v. Benson
- Diamond v. Chakrabarti
- Diamond v. Diehr
- (some others)
Asked the audience whether they expected anything positive from Congress
(show hands, please) and no hands went up. Shrugged, and said this just
points up the problem. So, short of getting some legislation passed, what
*can* be done? In essence, the problem is to change the law without passing
Falling short of an actual change in the law, she suggested trying to obtain
a "Sense of Congress Resolution" which would serve to tell the court system
what Congress thought it was enacting, when it passed the existing laws.
This would itself, of course, require a Congressional process to be pursued,
but it might be more feasible than the actual enactment of legislation.
Such a resolution ought to say that a patent on software is not listed in
sections 102, 103, and 112, and requires "transformation of a
She said that TRIPS is not an impediment to such a resolution being passed.
Finally, she said that if Congress can not act by passing such a "Sense of
Congress" resolution, it should formally and officially abdicate and bow out
of the process.
Meurer and Mendelson:
Michael Meurer and Jason Mendelson provided comments and analysis, and then
the floor was opened for an extremely brief discussion. It was time for the
morning coffee break, and I don't think that there were very many questions.
I do not have a record of any. Actually, I do not think that there were
really very many things to ask. The lectures were clear, focused upon
measures to tweak the system so that it functions a little bit better.
Probably because of that focus the panel was exciting mainly to the
attorneys in the audience.
Panel #2: Agency Reform ( 11:05 - 12:15 )
The panelists are listed as:
Peter Menell, UC Berkeley School of Law [ Promoting Patent Claim Clarity]
Arti Rai, Duke Law School [Let's Tame Software Patent Claims: Lessons from Bioinformatics]
John Allison, McCombs School of Business, The University of Texas at Austin
Michael Risch, Villanova Law School
Commenters: Amy Landers, McGeorge College of Law
Christina Mulligan, Yale Law School
The first speaker was Peter Menell (I think). He gave some background of
vague patents. He said that the problem, in fact, goes a long way back, and
he quoted several rather extensive complaints and critical descriptions
about vagueness which dated all the way back to the middle of the 19th
century. Some of these complaints were even written by people in charge of
the patent office, and some of the complaints were attached to rejections.
He said that the patent office "has to play an essential role" in handling
this issue. As evidence that no one else can do the job right, he described
a simulated experiment, more or less of the form of a "moot court" in which
the judges of the CAFC were asked to participate as individuals, outside of
their official capacity, and asked to evaluate patents. They were given
some samples of (vague) patents to evaluate. The results, he said, were all
over the map and showed no pattern at all -- except that it is impossible to
make rational and coherent and objective decisions when confronted with
Summing up, he said that the time may be right for clarifying claims and
constructions. By this, he meant that the PTO has to insist upon clarity.
John Allison was next up. He opened his talk with the statement, "I am not a
great fan of software patents, but I think they are inevitable." He listed
the two biggest problems with software patents as
1. claims are not clear
2. inadequate disclosure (not sure what this meant)
He does not believe that software or any other area should be "singled out"
for special treatment regarding patents.
He mentioned that he is involved in a very big statistical study which will
"probably turn into a retirement project" about the conformity of patents
with section 112.
He said that the biggest problems seem to occur due to patent attorneys
gaming the system and said again that he believes solutions and reforms
which are neutral toward software and technology would have the best chance
to succeed and would also have a strong positive effect on the problem of
Arti Rai mentioned that she had a background in biotech and pharma before
entering law. She proposed as a solution a change in the practice of the
patent office, not changes in the law.
She mentioned that there has been a flood of patent applications about data
processing. The claims are (typically) very vaguely written and are
incomprehensible. In 2003, she said, 77% of patent applications had article
112 problems, and rejections (not clear whether this was 77% of all
applications, or 77% of biotech applications, or 77% of data processing
For tangible improvements in the system:
1. Written descriptions need to be improved. In biotech patents, an actual
formula is required. A patent application on "quadratic discriminant
analysis" given with no algorithm attached needs to be improved. By this,
she seems to imply that if recently adopted standards for biotech patents
were applied to software, too, we would all be better off.
2. Distinct claims and definiteness need to be enforced.
Comment: Algorithm or no algorithm, a patent on "quadratic discriminant
analysis" appears to this mathematician to be nothing more than a patent on
mathematics. Am I wrong? I would have asked about this during the Q & A but
did not have the opportunity.
Next up was Michael Risch. His views are familiar to many of us from the
previous discussion here, on Groklaw. He made the following points:
We need to apply existing laws more rigorously.
We need to focus on the patents which are being litigated and reviewed.
"Stallman will not agree with this approach."
The reason we have the problem pre-dates the CAFC. It is due to a flood of
new technology, combined with the ignorance of examiners (and judges?).
He gives examples about how to apply current rules:
1. Patents on "pushing bits around" : Does the patent actually do
something, or is it a mere building block? (see Gottschalk and Benson)
2. Novelty. Functional claiming has to go. The idea of a "new machine" is
wrong. Searching works better now, so require it to be used seriously.
3. Obviousness. He mentions the Groklaw discussion and the view that the
invention was the general-purpose programmable computer and not the
programs which people write to run upon it, which therefore will all be in
some fundamental sense obvious. He explicitly rejects this characterization,
and says that the problem with obviousness is: What was the problem? That
might be the biggest part of the problem. Because of this, he is unwilling
to reject categorically the patenting of software.
It is not clear to me what Risch's boundaries are for patentability. If
patentability hinges upon non-obviousness due to having asked the right
question to solve, are we not back again to patentability of ideas and
concepts? The logic genuinely escapes me. I wanted to ask about this in the
Q & A at the end of the session, but I did not get called on.
The commenters brought up the following points:
Patents are "gotcha" game because it is practically impossible to
In regard to claim construction and closure, what is the likely impact of
these proposals? Improvement of claims, obviously. But will that be a
panacea in court? Probably not. Nevertheless, the solution of this problem
will also have the positive effect of making patents more useful for their
original purpose (as a positive encouragement of technological progress).
The commenter does not believe that this improvement would have any effect
on the amount of R & D which goes on. Also does not believe that
the envisioned improvements of the system would decrease the general
eagerness to file for patents.
Keynote #2: Views from the Trenches ( 1:00 - 2:00 )
The speakers were:
Moderator: Kristen Osenga, University of Richmond School of Law
Caroline Dennison, United States Patent and Trademark Office
Honorable Edith Ramirez, Federal Trade Commission
Honorable Paul Grewal, Northern District of California
Caroline Dennison led off, giving the views of the patent office. For them,
the first question is, what is a software patent?
Are software patents such things as
- business method patents
- (I missed one)
- applied things such as measurement and testing?
After this, what, exactly, is the problem? Is the problem that
- the patent was issued?
- the patent is problematic to enforce?
- is vague?
- is obvious?
- does not represent a technological advance?
- is excluded by statute?
- or what?
Tangible responses of the patent office include the existence of the Patent
Quality Assurance office, which will request comments from the public. Other
tangible steps include
- retraining agents
- partnerships with various outside groups, professional societies, trade
groups, and such.
- opening a branch office in Silicon Valley.
Edith Ramirez, from the FTC asked as a first question, "Why is the FTC here
at this conference?" Answering her question, she pointed out that the FTC
has long involvment in IP issues, though those issues usually involve
aspects of IP other than patents, and that the FTC is and has historically
been heavily involved in enforcement work.
She also stated that the FTC had been aware of patent issues for quite some
time and gave some history.
2003: a report which examined competition issues related to patent policy.
It looked at problems arising from vague patents and bad quality patents,
also looked into issues of the effect of such patents on the market, on
competition, and related issues. The report also raised issues related to
patent stockpiling and patent trolls.
2011: A new report considered patent notices and remedies. This report laid
down a principle that the framework for damage remedies has to relate to the
economic value of the claimed invention.
Injunctions are a hot-button issue. The threat of an injunction is a big
club to hold over the accused patent violator. She mentions the Ebay case as
a case which can inhibit injunctions.
However (contrasting the different roles of the FTC and the ITC and their
independence from each other), the ITC can offer exclusions very easily.
Ebay does not apply to cases filed with the ITC. Nevertheless, the FTC is
concerned about this issue and urges the ITC to use the "public interest"
test in weighing exclusions. This test is intended to factor in the effect
on consumers and the effect on competition.
The FTC and SSO's (Standards Setting Organizations): Courts and the ITC need
to deal with these issues, but SSO's need to do more to codify things when
RAND patents are at stake. She mentions the Rambus case as one in which the
FTC perceived that the standards process was abused.
Paul Grewal, a judge for the Northern District of California, looked at
patents and patent cases from the point of view of the judge and the
judicial system. For obvious reasons, he did not comment about specific
cases, but he wanted very much to come to the conference in order to provide
everyone present with some needed perspective about how judges are thinking
and reacting while on the bench. The particular questions which he wished
to address had to do with the issues of how software patents and patent
cases are handled in court, and how ought they to be handled.
- The issue of stays relating to PTO re-examinations comes up with
increasing frequency, as patents are challenged. A judge's question about
this is, "How long will this take?" His informal answer, speaking as a
judge, is that if the PTO can stick to its promise of a 12-month turnaround
time, there will be more stays issued.
- Many of the proposals made today will affect patent cases in federal
- One thing to keep in mind: A software patent case is one of 500 to 800
cases which the judge is handling simultaneously. Therefore, he finds any
simplification to be quite welcome. Parties who are in court because of a
patent dispute are in court because they could not come to an agreement by
themselves, and so they expect that the judge will handle their
disagreement. They ought to keep those other 800 cases in mind while
expecting the full concentration of the judge upon their disagreement.
- There are always problems about legal interpretation, new decisions which
come down from higher courts, and the role of the district judge is to apply
and implement those decisions. As a concrete example, consider the
Prometheus case and its effect on the analysis of software patent cases.
What is a district judge supposed to do, based upon this case? When and how,
for example, should non-patentability arguments be considered? At the
beginning of the case, at the middle, or at the end? As a separate issue or
together with others? At the summary judgment stage? What, exactly, to do?
- The issue of damages: Are the issues raised regarding damages a special
problem of software patents? No. And yes. So, damages are very important.
But when in the trial to bring them up? And what should or should not be
allowed by the judge in presentations to the jury on the issue of damages?
Questions from the audience:
Why aren't there more court-appointed experts under Rule 706?
Answer (from Judge Grewal): Mostly these issues need to be asked for by a
litigant during the trial.
What about experts to decide novelty or patentability?
Grewal: Hmm. Maybe.
A question is asked about the role of the ITC.
Ramirez for FTC says that the FTC cannot speak for the ITC, but the ITC is
in a new area. The IP issues involved regarding patents are not the IP
problems which the ITC has dealt with in the past.
A question for Judge Grewal: Why not an infringement expert and a damages
Grewal: Good idea, but there are time constraints at trial.
What about fee shifting (presumably for things like frivolous or meritless
Grewal: The US legal system and the UK legal system are not the same. But
this is something which might start to happen anyway.
Time for questions is up.
Panel #3: Legal Reform, Part 2 ( 2:00 - 3:10 )
Mark Lemley, Stanford Law School [http://www.wired.com/opinion/2012/10/mark-lemley-functional-claiming/#more-120423]
John Duffy, University of Virginia School of Law [Let's Get Rid of Kludgy Patent Fixes and Define the Non-Obvious]
Ted Sichelman, University of San Diego School of Law
Samson Vermont, University of Miami School of Law [ No Social Harm, No Legal Foul]
Commenters: Suzanne Michel, Google
Heidi Keefe, Cooley LLP
Too many software patents, too many bad ones ...
He wants to focus on what he considers a fundamental issue, overclaiming.
A big difficulty is the phenomenon of patenting the problem, not patenting
the solution. Ten percent (left me wondering is that all, not lots more?) of
software patents at least claim to patent the problem.
Patenting or attempting to patent the problem is not, in fact, restricted to
software patents and is not something recent. This tendency dates back to
the patents of S. F. B. Morse on the telegraph, and the patents of the
Wright Brothers on controlling the airplane. Morse tried to patent not just
his telegraph but made much broader claims, and his efforts in that
direction were ultimately knocked down. The Wright Brothers tried to claim,
essentially, all methods of controlling aircraft by their patents on "wing
warping," and extended legal battles ensued with others, who had adopted the
use of ailerons and flaps to achieve the same results.
Method claims can exist, but their efficacy is limited to what is actually
claimed in the patent. Attorneys have gotten around this limitation by
specifying "a computer" or "a processor" as the substrate of the patent,
attempting to use the most general terms possible. The problem is, that
*all* software has to run on a computer! So this is no bound at all upon the
patent. We need to apply to software patents the same issues which are
applied in all other fields!
His background was in engineering, and now he is a law professor.
Advice: Don't seek a kludge. Seek the elegant solution. Says that exempting
software from patentability is a kludge.
So, he says, look at the basic question, which is why do we have patents in
the first place?
Stallman said nobody wanted or asked for software patents. He claims that
there are no reasons for having patents in areas where nobody gets new
knowledge from them. There is supposed to be a tradeoff, here. This is
So, said Duffy, my proposed "solution" to the problem (of what to patent) is
to look for the question of whether or not the proposed or alleged patent
would have actually brought new and useful knowledge or not. Software
patents in general do not.
I am not sure at this point whether the next line of my notes was my own
question, or whether it was part of the talk. Either way, I think it is a
very pertinent question.
The big question is, of course: How to implement this?
Sichelman's main focus was on a proposed change in the structure and methods
of enforcement. He perceives the present approach as both destructive and
divorced from the original purpose of patents, which were supposed to
promote innovation in society as a whole. He made the following points:
What if you were a defendant in a patent suit and you lost? The current idea
is that the patent owner needs to be "made whole." In short, tort law on
damages governs what happens after that.
Why is this wrong? Because patent law is supposed to promote optimal levels
of innovation, not remedy private harms.
Where do make-whole remedies break down?
- component patents (on part of a product), and high switching costs
- very large dead weight on public
- duplicated development costs
- make-whole remedies not needed to incentivize innovation
Also, what about the issue of institutional competence (must have meant the
issue of whether the patent is really any good, or not) and the issue of
So, his final question was, how to carry out his proposed reforms? Judges
would have to implement them. How? With what guidelines?
His idea is to predicate remedies for patent infringement upon the harm done
to the public.
The problem: US patent law has lost touch with its ultimate purpose, which
is to serve the public good. Therefore, the proposed solution is to excuse
infringement when certain factors are present. Excuse infringement which
optimizes "social enjoyment" of the invention.
Four items were then listed as factors impinging upon how to handle
infringement, of which I managed to catch three of them:
1. The question of whether the patent holder actually practices the patent,
2. (I did not succeed in capturing this one)
3. Whether the cost of search exceeds the cost of (independent) invention.
4. Questions of social utility of the infringement.
Comments from the commentators on the panel:
The Federal Circuit looks for magic words in the patent. It reduces things
to a claim construction exercise. The patent system is not natural. It is
not that you cannot walk on my lawn; the patent system is *not* a property
rights system. Few people outside of this room seem to agree, [but] the
goal of the patent system is to foster innovations.
If you are a client and want innovation in the system, then you need to call
me. You need to be willing to keep on with your case. Be willing to
challenge the current statement of the law.
Questions from the audience:
At this point, Richard Stallman came from the back of the room up to the
front and was given the microphone. My impression is that he shared the
frustration of many of those attending, who seemed to feel that the problems
of software patents, which gave rise to the conference in the first place,
were not being taken seriously and were surely not being addressed by those
who were proposing "solutions."
He said a lot of things, which I did not
write down. In part, that is because the things he said were the things one
would expect him to say because he has been saying them for a long time,
long before this conference, and had spoken at some length and detail as the
leadoff speaker of the morning. As I said, his remarks struck a very
sympathetic chord with a large portion of the audience. He got a very
strong round of applause. It is impossible to know, of course, whether what
he said had any effect on what happened for the rest of the afternoon, but
he did raise some crucial aspects of the software patent problem up to the
Among the things which he said were that what were being proposed as "solutions" were halfway measures, and the
clean, neat, and elegant solution would be, simply, to abolish software
patents. In particular, he attacked the statement that to abolish software
patents is a "kludge" and said that, in fact the situation is the other way
around. Those who want to fix the problems with the system by adopting
"neutral" solutions which in practice would turn out to be impractical and
in reality impossible to implement and which in fact do not really address
the problem are the ones who really are engaging in a kludge. Just to ban
software patents altogether would be much simpler to carry out and would
solve the whole problem at one stroke.
At this point, he was interrupted by a panelist and was asked what is a
software patent, anyway, and where would you draw the line between hardware
and software? His answer I probably do not need to repeat. Even more
interesting to me was that sitting at my table was a professor of computer
science who remarked very acidly that perhaps if the people running the
patent system were confused about what is a software patent perhaps they
shouid consult the field of computer science. Namely, he said, hardware is
the material object in which the electrons go round, and software is the
human activity of programming that hardware. The distinction is clear. It
is fundamental, and everyone who works in the field knows it. This little
episode pointed out very well the basic problem about a discussion on
software patents between the legal scholars on the one side and the computer
programmers on the other. In the famous words from Cool Hand Luke, "What we
have here, is a failure to communicate."
Stallman also reminded the panel and the audience that the problem of
software patents had arisen, unwanted and unsolicited by anyone in the
computer industry and certainly unwanted and unsolicited by anyone who does
programming, and not sanctioned by anything in the underlying statutes
enabling patents. He characterized the entire edifice of software patents
as based upon "judge-made law." And again he pointed out that the patenting
of software is an infringement on human rights for the very fundamental
reason that patents on software can not avoid being patents on the thoughts
that people are thinking.
As I said, Stallman's comments got a long and loud round of applause which
came from all over the room.
Panel #4: Self Help ( 3:30 - 4:40 )
Keith Bergelt, Open Innovation Network
Jennifer Urban, UC Berkeley School of Law [A Proposal for a Defensive Patent License]
Dan Ravicher, Public Patent Foundation
Wendy Seltzer, Yale Law School
Commenters: Brad Burnham, Union Square Ventures
Benjamin Lee, Twitter
Says that norms are shifting. Says that we need access to all the prior art
that is out there. Sees that there is more awareness that big interests are
gaming the system, to stifle innovation by individuals working alone or
together in groups. The rest of the talk consisted of a missionary talk for
First: Let's listen to others.
Second: He respects judges and juries, and believes that everyone else
should, too. They are trying to do a very difficult job and in the main are
trying very conscientiously.
As to "frivolous cases": We have rule 11.
Instead of complaining, lets talk about jobs!
The rest of his talk was a missionary talk for the work done by the Public
Patent Foundation (PubPat). He further recommended that it is a good idea
for companies to support an independent foundation which exists to challenge
patents. Sometimes a company is constrained by circumstances not to mount
the same kinds of challenges that PubPat can mount, but to contribute to a
non-profit foundation which pursues a policy is not the same thing as to
pursue the policy oneself.
Wendy Seltzer is involved with legal support for W3C, the World Wide Web
Consortium, which is an international standards organization. In this
capacity, she is concerned about patents and patent policy.
In 1994, W3C formally adopted a policy for only "Royalty Free" patents (RF)
to be used in its standards.
She says that this policy is very good, but it has obvious deficiencies
which are very hard to deal with. Namely, the policy can not address the
problem of NPE's (non-practicing entities) coming forward and saying that
everybody needs to license their patent -- after what their patent allegedly
covers has already been incorporated in a standard and people are using it.
Also, the policy can not deal with FUD, such as questioning whether a given
standard is actually free of patents, or not, and asking repeatedly whether
anybody actually knows the answer to the question.
As to the practical question of how to keep things on an RF basis, she says
that the rule is, if you know of a patent which impinges on a standard,
existing or proposed, then you have to give notice. If you are a member of
W3C and own a patent, then you have to agree to RF licensing before the
patent can be incorporated in a standard.
This policy can not work against an outsider. Eolas is an example of that.
Jennifer Urban is one of the authors of the Defensive Patent License. Her
talk outlined the reasons why the license was written and highlights some of
The problem: Innovation in the shadow of software patents.
This problem especially affects open innovation communities.
Defensive patenting is a kludge. There are three possible uses for it:
- threats between companies
- threats from bullies
- threats from trolls
Why don't FOSS and small firms use patents defensively? Three reasons:
- cultural and political opposition
- what will happen if someone else gets your patents?
The DPL sets up a distributed licensing group.
The DPL is like the GPL; the licensor opens its entire portfolio.
DPL users are free to litigate against someone not under the license.
DPL users may stop offering licenses with 6 months notice. (From what was
said here, I am not sure whether this means new licenses, or whether
existing licenses can be withdrawn, and it would make a difference)
What about trolls? (no answer to that problem, here or from anybody else)
What about patent quality? Patents are the best form of prior art.
Says that there might be further questions, and go ahead and ask.
Ben Lee (Twitter):
Advice to startups: If you use Linux, then join OIN and support PubPat.
He is a venture capitalist from New York. He supports companies using FOSS
for web services. He summed up his experiences with companies he had
supported. One of the things he has learned is that software engineers do
not like software patents.
Burnham then told some very sad stories of companies he had supported, which
had been hit by trolls. Says that defensive patents would not have helped.
Companies had to shut their doors and people were put out of work over
frivolous patents. Ravicher said to talk about jobs, and he is talking
I would have had a question for Wendy Seltzer, but I did not get to ask it.
The question relates to the problem of trolls who attack an already-adopted
standard, which large numbers of people, businesses, and organizations are
already using, on the basis of some patent which they claim that the
standard itself infringes. Realizing the general problem of getting
legislation passed about these patent-related issues, I wonder if it is
possible to solve this one nevertheless. We do have in many other areas the
concept of legal notice. Every local newspaper has a section devoted
exclusively to legal notices. Legal notice is required, for example, before
any foreclosure of property by a lender or a tax collector, or in case there
is a divorce. The legal notice must be posted in a place prescribed by law
and for a requisite length of time, and all interested parties are supposed
to know to look there. Could it be possible to get this concept of legal
notice extended to standards set by standards organizations? Then, everyone
who is in the standards organization must put its relevant patents on the
table, and anyone outside the organization would have been legally notified
of an obligation either to speak up now or to forfeit any future rights to
object. I don't see exactly why a bill to put this into effect could not
get through Congress. Nobody would want to object to it other than trolls,
and the trolls are surely outnumbered and are politically outgunned by more
productive economic interests about a matter like this.
Keynote #3 ( 4:40 - 5:20 )
Moderator: Nair Flores, Facebook
The conference was adjourned, and there was a reception afterwards, at which
a light meal was served.
Pam Samuelson, UC Berkeley School of Law
Julie Samuels, Electronic Frontier Foundation
Julie Samuels made the following points:
Coalition-building makes a difference.
Policy makers in Washington are listening to the tech community and tech
companies because they are afraid.
Remember SOPA and PIPA.
Right now the next issue is fear of TRIPS.
We will need to make compromises regarding software patents in order to
get something done. Let's continue to work together.
The last 25 years have seen progress. Now it is recognized that there are
problems with software patents:
- low quality
- inadequate disclosure
- functional claiming
- incompatibility of software and patents
- gamesmanship about RAND and FRAND
The Supreme Court does not like computational patents.
Ideas for progress should include active engagement and
- the patent office
The fact that there is a public-interest standard for patents should be paid
attention to and raised on any appropriate occasion.
Self-help measures should not be neglected.
The National Academy of Sciences has a panel on patent policy. Interact with
Standards organizations (SSO's) need to refine their policies on patents.
The DOJ should pay attention to the problem.
Contact and interaction with professional societies such as ACM and IEEE are
This was the end of the talk, also the end of my note-taking.
Some concluding comments on what I saw at the conference:
I mentioned at the end of the first session, Keynote #1, that there were
essentially two groups of people at the conference, with two different
mind-sets and two different views of the problems arising from software
One way to characterize those differences seems to be based upon
what the people in the two groups do for a living. It seems to be a very
basic difference between people who do programming or who teach programming on
the one side and people who represent corporate or legal interests on the
A large number of people who do or teach programming for a living seem to
see a patent system into which their work and their teaching seems to have
been jam-fitted due to outside forces, when the system seems, to them,
fundamentally not to fit. They feel that something painful has been and is
continuing to be inflicted upon them from outside and they can not see any
positive good coming out of it, neither for themselves, nor for society as a
whole. They feel threatened by nebulous but powerful outside forces, and
their personal convictions are violated by a system which is driven by the
greed of others, and that the patents which result from that system are
almost without exception stupid, harmful, and border on insanity.
A lot of
talk was devoted to questions about how to reform the system, so that, for
example, it is easier to search for patents. For these people, one might
doubt whether any such reform would make things easier for them. They write
code. They sit and think about how to set up software which will address or
solve problems. They do not perceive that they have anything to learn from
already-issued patents, even if the patent is deemed to be meritorious and
sound, from a legal point of view. In short, they do not see how any patent
can ever "teach" them anything, which is supposed to be at bottom one of the
motivations for the patent system.
Those who run the system indeed refer to
the "teaching" function of patents, which makes the system seem to this set
of people to be even more insane.
And the members of this group do not look
forward with pleasure, either, about the prospect of spending the rest of
their careers searching for patents, or challenging individual patents on
grounds of invalidity, or living under the threat of being sued for
"violation" of patents which they never dreamed could exist.
wonder, for example, what all of the improvements in patent searches are
going to do to the profession of computer science even if successful. Will
the consequence be that the computer science student will have to spend
three years of a four-year college education learning how to search patents,
which will then necessarily replace a large part of the curriculum currently
in effect? Would we really be any better off as individuals, or as a
Those who hold such views as described above, based upon their own
experience and background, find a great resonance in the proposal of Richard
Stallman, simply to get rid of something which was never asked for, never
wanted, and does great damage. Moreover, his description of patents on
software as patents on thinking seems to have great resonance, too, and over
time it seems better and better to fit reality.
With the increases in power
of desktop and handheld computers and the abilities of even cell phones to
run serious programming applications, computers and the programming of them
has become available to great masses of average people and are used by
increasing numbers. More people are programming than ever before.
Computers and programming of computers have become ubiquitous in the
society, giving a new, contemporary weight to the emphasis of Stallman that
software patents impinge upon human rights, a position of his which in fact
has not changed for many years.
The second group of people comprises the leadership of companies, patent
attorneys, the patent office, the regulatory agencies. Among this group,
economic advantages are seen if a company gets a lot of good patents. There
is also the motivation of serving the country by obliging other countries to
license "intellectual property" from the US as our exports of material goods
seems to decrease over time and manufacturing of goods has moved to a great
They do not see the shortsightedness of this policy.
Foreign companies, too, can obtain US patents, as one of the panelists
mentioned. Moreover, foreign companies can also buy US companies along with
their patent portfolios. In fact, both of these things are happening.
Many from this second set of people do indeed agree that there is something
wrong with the patent system as far as software is concerned, but they tend
to see the issue as one of "good" patents and "bad" patents, not as an issue
of what are the areas which the patent system ought or ought not to cover in
the first place.
Those of them with some sense of history would argue that
the patent system has seen similar crises before, has gone through periods
of turbulence, but in the main, as they see it, patents are really good for
society. The system needs to be protected from misuse, from its own errors
and excesses, and from outside harm. If it is said to them that software
patents were wrong and illegitimate in the first place, then they come up
with scholastic arguments about what, precisely, is a software patent. If
pressed, they will argue that, at least abstractly, there could be such a
thing as a good software patent, and therefore one should not exclude a
whole category from the system.
During discussions, they tend to dismiss
complaints about software patents and of harm done by software patents as
"anecdotal." They also seem to believe that programmers, the true
beneficiaries of extending patents to cover software, will at some
indefinite time in the future begin to adjust themselves and to become more
tractable and accepting of this protection which they did not ask for but
which the system has nevertheless beneficently and altruistically extended
Even those among this set of people who do not quite hold the
attitudes which I have just described are of the firm belief that what has
been done can not be turned back. That software patents simply will not go
away, and somehow or other everyone is going to have to adjust to the
Finally, there is the existence of Free Software and Open Source software.
While quite different in philosophical approach, both of these movements
have greatly increased public participation in the development of software,
and both movements have popularized computer programming and made it easier
for ordinary people to participate. Writing software and even the
development of large projects with complex and long-range goals has gotten
out in public.
The first group of people, the programmers who have attacked
the appropriateness of software patents, has drawn a large part of itself
from people who have directly participated in these movements or in large
projects sponsored and nurtured by one of these movements. The first group
is thus well aware of these issues.
The first group is also well aware of
the irreconcilability between typical patent licensing terms on the one
hand, and Free Software on the other.
Some of the members of the second
group almost instinctively think of software and especially of technically
advanced software as being developed by large companies and then sold to a
comparatively passive public. They may know of the existence of Free
Software, but even so they tend unconsciously to discount its social
effects. If their world view were actually valid, patent protection for the
advances in knowledge performed by those big companies might be appropriate.
But this is not what is happening and has not been what is happening for
quite some time. Thus, that world view does not completely mesh with social
All of this is quite obvious to the first group, but it is
instinctively rejected by those in charge of many large companies and by
other elites. Such people come to accept such a realization very slowly
because it goes against so much which is at the very basis of their world
view. Thus, quite likely the thesis of Stallman that software patents
oppress society as a whole and are an infringement on freedom of thought, a
fundamental human right, must no doubt seem strange to members of the second
group, who shrug off and discount that argument. That almost subconscious
rejection is a mistake. Stallman's arguments are incisive and logical and
strike to the heart of the matter. The evident popularity of his views at
this conference did not spring forth from a vacuum.
And thus there are two groups with divergent interests and divergent
perceptions. Perhaps what is new and positive here is that both of these
groups perceive at this point that the patent system really has somehow gone
wrong in regard to software patents, and something needs to be done to
correct the situation.
The organizers and sponsors of the conference
certainly deserve credit and appreciation, too, for bringing together these
groups of people with divergent perceptions and interests but with a common
goal together, in order to discuss their views.