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Learning from Apple Patent’s Newsreader for Mobile Devices

Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
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Posted: Apr 8, 2011 @ 6:10 pm
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Earlier this week, on April 5, 2011, Apple, Inc. was awarded U.S. Patent No. 7,921,187, titled “Newsreader for mobile device.”  The patent application was originally filed June 28, 2007, and as a result of delay by the Patent and Trademark Office Apple will be entitled to a patent term that is extended by 830 days.  While patent term extension seems to be a growing problem due to the backlog of applications, let’s not focus on the patent term, but rather look at the core of what is being protected and how this patent was obtained.  I’m not going to defend the patentability of this invention, but rather try use this as an illustration of how to read a patent and search for clues in the file history regarding how and why claims are awarded.  It should also adequately demonstrate how easy it can be to distinguish prior art references and overcome rejections if you know what you are doing or are represented by someone who does.

When reading a patent I never jump first to the claims, preferring to start to get an understanding of what the invention is and taking everything in before trying to tackle the claims.  This is typically helpful, I find, because the specification is the omnibus disclosure of the invention and works to support the language and terminology presented in the claims, which are nearly universally a subset of the overall invention disclosed in the specification.

The Background of the patent application explains that mobile devices are known to be be configured to access and retrieve content, including web pages and multimedia content, over a wireless network connection.  The information that can be retrieved by mobile devices is hardly limited, and mobile devices can, in fact, access one or more data feeds over the wireless data network.  For example, mobile devices can access RSS feeds, which can be used to identify the information most recently made available on a source web site, such as the latest news stories, forum posts, and listings.  Nothing earth-shattering here so far.

The Summary of the Invention then leads into explaining the invention by pointing out that pursuant to the invention disclosed, a mobile device can be configured to transmit a request for one or more items of content to an information provider.  Still doesn’t seem earth-shattering to me, but I kept hanging in.  The Summary goes on to explain that the mobile device can also be configured to determine whether information received in response to the request for content is supported by the mobile device. For example, the mobile device can examine a content-type received from an information provider to determine whether any unsupported content is being received and if such unsupported content is being received can recognize the need to request from a service provider reformatted or translated content capable of being supported by the mobile device.

At this point I went back to check the date of the original application and noticed it was originally filed on June 28, 2007.  Surely this sort of thing had to be known back then, no?  But I persisted.

In the Detailed Description the text associated with Figure 3 appears to be the best technological summary of the invention as it was claimed.  A portion of this description explains:

Upon receiving a response to the request to access the URL, the mobile device 100 can detect whether an RSS feed or other unsupported format is associated with the URL (315). For example, the RSS feed can be detected according to the content type of the URL (e.g., text, image, video, audio, etc.). In general, the content type can be detected in the first few bytes of the received RSS feed, such as by accessing a content-type header included in the received information. The content type also can be determined by identifying an XML tag associated with an RSS feed. An RSS feed corresponds to a single HTML page. Thus, only one HTTP request is transmitted to access the RSS feed. Therefore, if an RSS feed is detected in the information received in response to a request to access a link, such as a URL, the mobile device 100 can terminate the receipt of information associated with the RSS feed (320). For example, the mobile device 100 can close the port to terminate the feed or discard the information received in response to the request. Further, in response to detecting the unsupported information received in response to the request, the mobile device 100 can automatically generate a request to a service provider, such as the .MAC server, to receive a translated version of the information corresponding to the URL (325). The request to receive translated information can be structured as a single request addressed to the translation service provider that includes a URL identifying the information that is to be translated. For example, a single HTTP request can include both the URL of the service provider and the URL of the information to be translated.

At this point I figured I am surely missing something because it appears to me that this invention which is essentially based on translation couldn’t hardly be new or patentable.  Surely the claims will reveal a more limited invention.  I am now ready to handle the claims having as full an understanding of the grandiose invention as reasonably possible.

Claim 1, which is the broadest claim in the patent, covers the following:

1. A method of receiving information by a mobile device, the method comprising: receiving, from a source system associated with a resource locator, information in a native format; before said receiving has completed, detecting that the native format is unsupported by the mobile device; responsive to said detecting, interrupting said receiving, and requesting, from a service provider system different from the source system associated with the resource locator, the information in a format supported by the mobile device, said requesting including transmitting, to the service provider system, the resource locator identifying the information in the unsupported native format; receiving, from the service provider system, the requested information in the format supported by the mobile device; and presenting the received information.

At this point I was confused.  How could this be patented?  So I decided to turn to Public PAIR in search of answers, looking primarily for the last version of claim 1 that was rejected so I could see what the previously offensive language was and what was added to overcome the most closely related prior art found by the patent examiner.

Here is the claim, as amended, in the last filed Amendment:

1. (Currently amended) A method of receiving providing information by to a mobile device, the method comprising:

receiving, from a source system associated with a resource locator, information in a native format;

before said receiving has completed, detecting that the native format is unsupported by the mobile device;

responsive to said detecting,

interrupting said receiving, and

requesting, from a service provider system different from the source system associated with the resource locator, receiving a translation request the information in a format supported by the from a mobile device, wherein the translation request includes a said requesting including transmitting, to the service provider system, the resource locator identifying the information in the a unsupported native format;

receiving, from the service provider system, the request information in the format supported by the mobile device; and

presenting the received information

accessing the information identified by the resource locator, wherein the information is retrieved from a local cache if available and otherwise is retrieved from a source associated with the resource locator;

translating at least a portion of the information identified by the resource locator to generate a translated filed in a supported format; and

transmitting the translated file to the mobile device.

The key reference used by the examiner to reject prior to the above amendment was U.S. Patent No. 7,574,486 to Cheng et al, which teaches in relevant part:

a user generates a request for a web page from a mobile device to a proxy server.  The proxy server forwards the user’s request to an origin web server which returns the requested web page to the proxy server.  A conversion engine within the proxy server extracts the desired content from the web page, and reformats the content in accordance with one or more predefined transform methods associated with the mobile device before transmitting the transformed web page with the desired content to the mobile device.

(see Cheng Abstract).

The argument used in combination with the above amendment was:

Cheng’s mobile device does not detect whether the format of the desired content of the web page is supported or not because that function is performed by Cheng’s proxy server.  Moreover, Cheng’s mobile device merely generates a request for a web page to a proxy server, followed by reformatting the content of the retrieved web page by the proxy server in accordance with predefined rules.

The argument goes on to point out that Claim 1 as amended is distinct because before receiving there is a detection, interruption in the case of unsupported format and a subsequent re-request from a different source the information in a format that is supported.



The patent examiner bought the argument and accepted the amended claim, explaining in his Reasons for Allowance:

Independent claims among other things teach “before receiving has completed, detecting that the native format of the information is unsupported by the device, then interrupting said receiving.”  Emphasis is drawn to the feature of interrupting/severing the receiving/transfer of information by the device when the device detects this unsupported native format of the information before submitting the resource location.  The prior art does not teach the cited limitation.

No doubt those who don’t like patents, particularly these types of patents, will kick and scream about how this patent represents everything that is wrong with the patent system.  Of course, there is a roadmap in front of you if you want to challenge the patent.  File a reexamination request and come up with prior art that demonstrates the interrupting/severing feature the patent examiner didn’t find int he prior art.

For those who are not blinded by hatred of patents this patent provides an excellent illustration of the fine line between claims that are patentable and claims that are not patentable.  All too frequently those with inventions in the computer implemented process or software space don’t realize that they have an invention capable of being protected, and as a result simply never make any inquiry.

It is not much of an exaggeration to say that virtually everything in the computer implemented process and software space can be patented if you are willing to layer on enough specifics so that your articulation of the invention in the claims offers a unique feature compared with the prior art.  The focus needs to be on finding that unique feature or set of features, making sure they are disclosed in the specification so that enough support exists to make the claim.  The only way to accomplish this is to start the process with an comprehensive patent search and brainstorming session.

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Posted in: Apple, Companies We Follow, Computers, Educational Information for Inventors, Gene Quinn, Inventors Information, IP News, IPWatchdog.com Articles, Patents, Software


About the Author

is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

 

15 comments
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  1. Nice post, Gene. I went through a similar analysis a few days ago regarding a patent that is being cited against Apple in EDTX and the ITC. Unfortunately, the file history for that patent was not available in PAIR, so I couldn’t readily take the extra steps you did regarding amendments. However, I was able to look at the litigators’ interpretation of the claim’s breadth, and at least that interpretation strained credulity as far as validity is concerned. http://www.applepatent.com/2011/04/ogma-v-apple-itc-disturbing-of-patent.html

    I am sure those being paid to mount the defense in that suit will order a certified copy of the file history, though, and see how the Examiner was convinced to allow the claims.

  2. An even better observation is that, due to human nature, people don’t know when to throw in the towel. Apple had an objective with this patent that they obviously didn’t achieve. But once you go that far, why not just get it issued, irrespective of its value. People have a hard time admitting defeat. It’s a lot easier to fake a victory. Who pays attention to details like this anyway. Not the investors, that’s for sure. All they care about is the total successes. They don’t want the company to trot out any body bags. Plain, simple, human psychology. The same reason we are in deep s#!t with the US deficit. Nobody wants to point out any bad news. Just keep everyone’s frail egos intact. That’s the goal.

  3. “No doubt those who don’t like patents, particularly these types of patents, will kick and scream about how this patent represents everything that is wrong with the patent system.”

    @Gene

    With all respect:
    All you do is bait these articles by saying something like that. FYI, your opinion of those you target with such an ugly tone are not aware of it, because they are too too busy with work and getting a good night sleep over productivity and new markets with growth and profits that are keeping some others up at night.

    I do believe you’ve mistaken only few, as representatives of those things you hate about change. Can you say that some of the largest patent owners, Coprs, are in fact not inforcing their patents, rather they are by working with others outside the patent system having success doing so ?

    Can you tell me if any major inforcements by Corps as IBM say, have taken down these nasty people that IBM has worked with and joined to the extent that IBM doesn’t see your view of them to want to enforce patents. Yet IBM with Mr. Kappos opened many patents for use in serious developers work, but not before those developers passed IBM’s requirements to do so. It seems obvious that those patents will not be inforced but rather protect those developments while IBM gains those developments, gains by adding value that otherwise, the patents alone wouldn’t have done.

    You should really look into who is taking part in a change that adds value and not takes it away. You should know who these people are, leaders of major Corps, worldwide taking part in working with many other that do not patent.

    Could you Gene, offer something that may clear this up for those with questions of why major patent owers are working (building value) with those that don’t patent ?

    Thanks.

  4. Gene,

    I found your column informative and helpful. Thanks.

  5. Thanks for the nice specific analysis of this patent and, more importantly, an effective approach to this type of patent analysis in general.

    This is another keeper in a long line of such.

    Greatly appreciate your time and efforts.

  6. Interesting analysis Gene. I think about that a lot too that those people out there that say that the patent system is broken don’t really know how hard it is to get it past the examiner!

    Minor clarification: in the first paragraph I understood what you meant, but you used “patent term extension” which term is not applicable here since the filing date was 2007. I believe “patent term adjustment” was meant.

  7. Trent-

    I very well might have meant patent term adjustment versus extension. Only in patent law could there be “patent term extension” and “patent term adjustment”, both of which extend the life of the patent but yet are different.

    Thanks for reading.

    -Gene

  8. ‘ I think about that a lot too that those people out there that say that the patent system is broken don’t really know how hard it is to get it past the examiner! ”

    On that point, I know it is true that someone that doesn’t patent, wouldn’t know.
    The broken refers to the quality of patents from the PTO. The quality of any product produced, reflects back on the producer.

    Small business people are some of those thinking the patent system is broken. It isn’t just those with an anti patent soap-box to stand on, as well it is making a mistake to believe those are the only representatives of such a view of the current patent system. Some largest patent owners share the view that the patent system is broken, having different opinions of how, but all have that common point to make about quality from the PTO.

    Asking if any small business wants patents, knowing the cost and time that must be invested, in most cases say ( I have talked to), they have no choice. The option is to go out of business, too many are making that choice because time and funds are not available to work through the patent system. It is worth to note, that many of the high number of startup business failures in the U.S., are do to lack of funds.

    As more large Corps are working with non-patenting startup as well experienced independent developers, with patent relationships that offer developments that are making inroads in the mainstream of many software stacks for example, in many businesses and industries. The non-enforcement environment of such relationships are the key reason for the success of these relationships. The trade-off for the large Corps in these relationships, is that a larger percentage of patent portfolios would pass into history making less impact as time would move on – are producing keeping such patent portfolios “alive” beyond their time.

    This value as a product of those relationships comes with time and money savings, with more that works, for more needing such value at any time. It soon will come to past that relationships and not just patents are the most important things. Quality of any value placed upon something, is in relationships and not the disposition of the current patent system.

    Thanks.

  9. This post illustrates the truism that clever patent drafting can mean the difference between receiving an issued patent and not. This is one of many reasons why it is important that independent inventors ALWAYS retain an attorney in the quest to patent an invention.
    http://online.wsj.com/article/SB10001424052748703806304576245064194577624.html#ixzz1Ikhfbie

  10. Nice post. I’ll often do the same quick analysis using PAIR with the most relevant prior art I found, just to see what of the elements in there are new, and to get a feel for the prior art in general.

    @KnowSherlok: I think that the patent actually has a far better scope than a lot of software patents I see, so Apple gained something here. I also think that this was done at relatively little cost compared to that of the original drafting, so it also makes sense from a financial point of view. And you should never discount the advantages that having a large patent portfolio in itself has for companies like Apple. It makes it that much harder for other companies suing them to be sure that there’s nothing that Apple could countersue them with. After all, as we all know, patent analysis takes time, and time is money – for sure when it comes to paying patent lawyers and agents.

  11. This is an interesting approach to the problem of a broad range of ever evolving file formats for internet content. If I understand it correctly, Apple is taking the approach of having a rather limited set of translators on the iphone and if anything shows up it doesn’t recognize, the phone contacts Apple’s main servers for a translated copy. That way Apple only has to maintain the translators on its main servers and doesn’t have to constantly update the translators on its phones. It also suggests that the main servers can do the translation in real time for all of the apple iphone users at once. Pretty impressive.

  12. On topic:

    A news reader isn’t a big deal (maybe to some), it is more a toy in technology circles. As 3D soon to come too, will be more eye candy to only sell devices to those that are entertained by the distraction of having to focus most all attention into a screen. As for prior art, it isn’t always that someone did it, or something like it before. Finding obvious isn’t something being in plain view or just a matter of a look-up for the item. Obvious is often overlooked when knowledge is limited by those viewing it, and so, being overlooked doesn’t mean any claim is valid or an invention couldn’t be found obvious.

    What ” patent haters” have to do with Apple’s invention, I don’t understand. Other then I can make this guess. That those questions not limited to a news reader exist with answers pending, that some ( patent haters ? ), may bring unwanted attention to such patent(s).

    The patenting with change in approach, must include answers to questions on the table now, questions about patent quality. As well the system that would except approach changes that I would have to believe the PTO is aware of, approves and excepts before granting patents. Patents granted upon shifting approaches isn’t going to stop the questions or boost convenience in the system by those outside of it – as I believe are patent haters ?

  13. New Here,

    You have slipped back into a mode of writing that is simply not understandable.

    I have no idea what you tried to say in your last post.

    None.

  14. @BD

    May I ask, what is the meaning of “Kool Aid” — as you mean it ?
    The reason I ask is because, you’ve used it in many context that I just don’t know what it is you’re saying by it.

    Thanks.

  15. Typos #12

    “except” and “excepts” should be accept and accepts.
    Using an editor that “remembers” words — my bad.

    Thanks.