On March 25, 2013, I spoke on the record with Eric Gould Bear (left) about software innovations, software patents and the trials and tribulations of litigating software patents long after they were first written.
Bear is an inventor on over 100 patents and patent applications in the software space. He has spent over 25 years working with numerous Fortune 500 corporations with respect to assisting them in the creation of new user experiences. He is also a founder of the design studio MONKEYmedia, which recently launched a patent infringement lawsuit against Apple that we will discuss in Part II of the interview. MONKEYmedia also has litigation pending against Sony, Disney and others. And on top of all of this, Bear is a testifying expert witness for patent infringement cases. Simply, there is little in the software/patent space that Bear hasn’t seen or been a part of over his career.
In Part I of our conversation, which appears below, we discuss the journey from ideas to designs that sit in the path of disruptive technology and could realistically be useful 5, 10 or more years down the road.
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Without further ado, my conversation with software expert and prolific inventor Eric Gould Bear.
QUINN: Thanks for taking the time to chat. As an inventor and an expert witness and as an all-around knowledgeable software guru, I imagine you probably have some thoughts on addressing the issues one faces when you first have an idea, that “ah, ha” moment. How do you get over the humps to put what you have into some kind of tangible form? That is something that a lot of people in new businesses seem to really struggle with.
BEAR: Are you asking me about the design and development side or what somebody, who’s already in the business of design and development, should do to make sure they keep a parallel track of IP protection?
QUINN: I’d like to talk to you about both. Let’s start with the first – as to how you get your arms around what is going to wind up being, at the end of the day, a monstrous task that starts with a design document.
BEAR: It’s important to remember that ideas are a dime a dozen. And what matters at the end of the day, in my mind, is what works well for people. It comes down to making sure that your flash of genius is a fit for what’s valuable to real people in everyday life. Whether in a consumer space or in business, it doesn’t matter. The underlying principles of making great design come down to how people act in the world. How do they think about themselves? What do they feel about your product? What do they think about each other? And where are they running into challenges in either accomplishing things or living life to its fullest. So, if it starts with an idea, I would challenge that premise to begin with – because I believe great design often starts with a question as opposed to an answer.
QUINN: Interesting. Let me stop you there for a second because that wasn’t where I thought you might end up going with this. This sounds like the way you would approach any kind of generic invention. I have a patent attorney friend who tells people, for example, that – and this is mostly with gadget inventions or tangible inventions – “if you don’t have five friends right now who would be willing to pay hard money for this then what are you doing? Stop.”
QUINN: And that seems to be where you might be heading, and I’d like to hear your thoughts on that. Then, let’s definitely circle back to start with the question, rather than the answer, idea or even the payoff.
BEAR: Certainly. I’ve worked with companies of all sizes – from nascent startups to Fortune 500 companies. Sometimes they have an existing product, sometimes they don’t. But they usually do have thoughts about where they want things to go. And then there are R&D programs, some of which I fund myself. In all cases, really, the question should be, “where is there going to be value for people?” I like to see projects start out with what we, in the user interface design field, call generative user research or generative design research.
This involves going out and looking at people in their everyday lives – whether in their workspace, in their car, walking down the street, in the living room, in the kitchen, at their desk – and watching them accomplish tasks or trying to make it through a communication or a media interaction. Wherever the demand is, watch how they do it. All kinds of things come up when you watch what people do in everyday life. It becomes quite obvious where the stumbling blocks are. It doesn’t mean that there are answers yet, but you start to see where the challenges lie. And if you look at enough people, then certain patterns and affinities reveal themselves to the design team about what might be needed.
So you take those findings from the user research and mix in the business goals. What does the business need to get out of it? Then, what are the marketing possibilities for how something like that could be sold? And then look at what’s technically feasible, given a particular window of time for getting the new product or service delivered. It might be that the solution is a fabulous answer to a discovered problem, but technically can’t be pulled off in the next eighteen months. It may be more of a framework for five years out. The art is finding an appropriate balance between those variables and making sure the right stakeholders from all of those different disciplines of the business are bought into addressing a common set of user needs. And until that’s done, it doesn’t really matter what the technology is – because there’s no tree to bark up just yet.
QUINN: Well, this strikes me as the revelation that Thomas Edison came to very early on as he made those wonderful, great inventions. Nobody bought them because they’re just – they were cool and they were revolutionary and they were interesting – but they were not in demand. He is famously quoted as having said that he was never going to invent again in an area where there was not consumer demand. And that seems to be what you’re talking about right here, right now. Get in touch with how consumers use these things, what do they need and what if anything can you realistically provide.
BEAR: That’s right. And there are two parallel tracks, at least, to be looking at. One is what can be reasonably built in a short period of time – well, short is relative to different businesses. The other involves delivering the best long-term model. Many businesses are handicapped because they’re looking at short-term P&L to drive decisions. I think we’re all better off when we take the long view and then step back and say, “That’s where we want to be in ten years.” Then look backwards from the future and ask, “How did we get here?” Split that distance, then split that distance again, and split it again.
That can give you a roadmap for how to start building things that make a difference in the world. Even if you’re not the one who eventually builds it, by planning for that sort of future you can end up with a market leader in the short run and – perhaps more importantly to your audience – end up with some IP that’s in the path of other people’s disruptive inventions ten years in the future.
That seems, to me, the magic bullet. Ship something soon that is not the end all product, but get a batch of interrelated patent applications into the pipeline that in ten years may be super valuable. Then reap the benefits of that investment for the final ten years.
QUINN: It takes so long to get these kinds of patents issued, that if what you’re doing doesn’t have a longer term goal in mind when you’re starting down that path, I wonder whether you really ought to be going down that path. Do you have thoughts on that?
BEAR: I think you’re absolutely right. A lot of people are shortsighted. There’s this idea that someone’s come up with; and they want to build it; and it’s this thing that they’re emotionally attached to; and that’s the exact thing they’re trying to patent. Seems bananas, because by the time it issues the company’s played leapfrog on itself, and that myopic patent is old news.
Since I’ve been working in invention and design and IP management together, I think of these disciplines in an integrated manner. But maybe for designers who are not thinking that way, there’s an opportunity for prosecution counsel to educate their clients in how to think about the longer term. I used to consider – when I first started filing patent applications on my work in 1992 – that the process of detailing a patent specification and writing claims was the opposite of design. Design is about converging on an optimal solution. Writing patents seemed backwards because it wasn’t necessarily about what was going to work well for people. Instead, it was about casting the widest net possible so that any solution in the vicinity of an ideal design would get caught.
Today, twenty years later, I’ve found a more productive way of thinking about it. Now, I approach IP in an integrated manner – with long-term and short-term views that are working together. There’s a great opportunity for patent prosecution counsel and designers to be in partnership – thinking about how to do that and how to identify the disruptive technology umbrella, if you will. Where do you cast that initial set of claims and draft the appropriate specifications to support a claim base that can grow over time – even if outside the range of the initial solution – in an intelligent manner.
QUINN: That’s what I always try and do with my clients. Well, my clients all do it because I suppose on some level when you’re picking patent counsel if their philosophy and approach is not something you’re comfortable with you find somebody else and go in a different direction. For the clients that I have, we do a patent search first. Not only to find out what’s out there in terms of how we’re going to distinguish over those things that are known, but to really try and identify where the open space is and where the boundaries may be and to get a sense of how big the open space is and where can this thing potentially grow.
Then, once we have an idea that the core uniqueness described could support some patent claims, I tell them the fun stuff starts now. The fun starts because you want to then and think about this from a standpoint that assumes bandwidth is no issue and money is no object. What do you want in version next, in version three times next to wind up being? If you can describe it we can protect it. Of course, you can’t just to say, “I want to produce a holodeck.” Yeah, that’s great. Well, how are you gonna pull that one off? But if you can articulate the vision and a path there we can include it in a software patent application even if it won’t be incorporated until later versions.
QUINN: With software, if you can dream it you can do it and at least describe it – and the limiting factor is bandwidth and money. So if you can get to a point, I always tell people, where you have this core uniqueness and then dream, now we’re starting to go down a path where you potentially would have something that could be relevant five to ten years down the road.
BEAR: Codifying that dream is part of what we call user experience strategy. And it includes defining the pillars of that experience and the bounds for how it gets framed for end users through an evolution of business processes and technologies of the times. And, you know, it makes a lot of sense to lay that out first and then use it to write the patents. I think the trick is being able to put one’s self forward ten years, and then picture yourself sitting in a Markman Hearing and having your claims being interpreted against a new technology landscape. Take something that might have been designed yesterday for a desktop screen with a mouse and a keyboard and then translate to a touchscreen on a tablet, to then tactile, voice and gestural kinesthetic interfaces – another step farther.
For example, MONKEYmedia has a new family of patent applications that I co-authored last summer about navigating through a three-dimensional video space on a handheld device. But if you look forward ten years, it’s likely that the navigation will not be bound to a surface you’re holding in your hand and the system could be more like Google Glass or a Microsoft Kinect type interface for navigating. So everything needs to be written in such a way that it can scale beyond the technology that we immediately know. Consider how to map it so that at least one of the claims can apply to a new form factor, without being shut down. You don’t want them so broad that they’re killed with prior art. And you don’t want so narrow that they’ll become obsolete by the time they issue and not be infringed.
QUINN: Right. That’s the big thing if you have a patent that’s going to wind up being useful beyond the relevant software life of the product you envision currently. It has to be able to be breathable. It has to grow and it has to relate. So how do you get from conception to span your head around where the marketplace is likely heading?
BEAR: Well, it’s very difficult. And it may sound crazy to you, but a great place to go to look at where things could go is science fiction. Not necessarily literally, and not to say those inventions are going to be what comes out, but science fiction establishes the bar in people’s minds for what the future could be. And, in a way, it shapes how we designers and engineers think about what we’d want to make ourselves. In reality, creativity is informed by the things that we see around us; and science fiction is a lot of what we see. So it’s a pretty good predictor of the kind of things that will end up being made. If you can imagine, take your favorite science fiction film – whether it’s Minority Report, which was a great herald of the kind of gestural interactions that we’re developing today, or Star Trek – and identify the best user experiences. Ok, now ask yourself, “How would my invention work in the 23rd century?” And then, probably in reality, it’s going to be more like ten or fifteen years. Be ready for that!
QUINN: I’m a Star Trek fan and I totally agree with what you say because I think science fiction really does inspire the next generation of creative minds, the engineers and designers that ask “what if?” and pursue some rather interesting paths. There’s now research into teleporting atoms or molecules and the patent office last year issued the world’s first cloaking patent.
PREVIEW: In Part II we will discuss defining a software innovation so that it can withstand judicial scrutiny many years after the fact. We also discuss the unfortunate reality that the top technology companies will simply not entertain licensing discussion unless they are sued for patent infringement first.