Software Patents: Drafting for Litigation and a Global Economy

By Gene Quinn
April 30, 2013

Eric Gould Bear, user interface patent infringement litigation expert witnessOn 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, among other things, is a leading authority on the creation of new user experiences, an accomplished inventor with over 100 patents and patent applications to his name and a testifying expert witness.

In Part I of our interview, titled Designing Into the Path of Disruptive Technology, we discussed the journey from ideas to designs that establish a technology platform that could realistically be useful 5, 10 or more years down the road. In Part II of our interview, which appears below, we discuss drafting software patent applications with an eye toward litigation and the unfortunate reality that the top technology innovators simply won’t listen to licensing overtures unless they are first sued.

QUINN: What separates having an interesting product from one that is worth really going forward and trying to get a patent on – to be able to parlay that product into something greater than just the sum of the immediately available market?

BEAR: I’ll give you a couple of examples. From my vantage point as a designer, I believe great inventions are often by people who think about repurposing and combining things that already exist. This was at the center of Apple’s early success. Much of their innovation was from off-the-shelf parts. Woz put those parts together in ways that hadn’t been done before, and Jobs found a way of creating a love affair around those creations.


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One of my inventions is called “Seamless Expansion.” It’s a way of getting to ancillary content while you’re watching a video. As the video is playing, you can get to optional content, and then the video you’re watching picks up right where it left off. I’d been working on this since the early 90’s before DVD and before TiVo existed that could pause live video. But even as late as 1999, I remember sitting down with a major software company to pitch this idea about taking broadcast video and being able to access additional content on the fly. They laughed at me and they said, “That’s crazy, because that would require a hard drive in your TV.” What do you do with a response like that? You just say, “Ok, they’re not ready.” But it was coming soon. TiVo starting doing it just a few years later. And now, it’s totally ubiquitous – hard drives in our set-top boxes, and now we’ve got affordable solid-state video buffers. There are a lot of hard drives in DVRs, in fact. Nothing magical there. It’s just recombining things and saying, “If we did this with it, we could accomplish something new and useful.”

Let me give you another example, and this is from a patent application based on a handheld user experience called “Walk-in Theater.” It’s for navigating a multiplicity of videos in three-dimensional space all playing simultaneously in an iPad. In writing the patent specification, we wanted to make sure that the claims would apply even if the methods weren’t performed on a handheld device. We’ve got a very thick lexicon. The specification is 50 pages long, but 10 of those pages are dedicated to the inventors’ lexicon. This is my new drafting approach – to take all of the imaginable pitfalls of Markman and build positions and arguments into the specification, up front.

QUINN: Right.

BEAR: There’s all kinds of good stuff in there that I’d love to share with you. But let’s start with this issue of planning for future technologies and define, for example, the term “handheld computing device.” Here, I’ll just read this to you:

The terms “handheld device” and “handheld computing device” can be used interchangeably to mean (a) a computer that may be held or worn by a participant during use and/or (b) a computer that can detect motion of a participant’s body in space. An example of the latter is a Microsoft X-BOX 360 equipped with Kinect motion sensing input hardware. Thus, the concepts described herein regarding detection of device postures and/or motions should be understood as inclusive of detection of postures and/or motions by a participant whose body is not in direct physical contact with a computer. For example, the described function of detecting the pivoting of a device around the device’s x-axis is meant to be inclusive of the function of detecting the pivoting a participant’s hand, for example, around an analogous x-axis of the participant or participant’s hand.

Then, I never have to talk about those alternate devices ever again. And I can focus on interactions from the standpoint of a handheld tablet. Because anytime I talk about a handheld device – by having defined it in the lexicon – I’m saying it also means something else. And it opens the door to that something else in the future. It’s one of those insurance tactics, if you will, to keep the patent from becoming useless too soon.

QUINN: Yeah, that surely is true. It’s certainly a good idea to define the terms that you’re using, particularly the important terms or the ones that have a long-term potential limiting effect. Just as the technology paradigms change, that which would be considered handheld will, for example, be quite different.

BEAR: Right, right.

QUINN: So, do you write your own patents or do you have patent counsel?

BEAR: I do use patent counsel because law is not my area of expertise. But I like to write my own spec’s. And I write my own claims because I have pretty high standards for how it should be done.

QUINN: Yes.

BEAR: And having played in court – especially in Markman where you’ve got the delicate balance between (a) going too narrow and losing infringement and (b) going too broad and becoming invalid. All those lessons come back and get applied in the drafting.

QUINN: So you work in cooperation as you’re drafting and finalizing applications?

BEAR: Absolutely. I have a great team of people that I work with and I like to work in cooperation between prosecution and litigation counsel holistically. To me, it’s an overall strategy. From my experience, prosecutors look at matters from a different perspective and intent than litigators – even though they both have the ability to stand in each other’s shoes. What they focus on day in and day out is going to be different. And you want them to not be general practitioners, but look specifically from unique perspectives and then see how the gestalt converges.

QUINN: Now, you’re involved in litigation, right?

BEAR: Well, I’m not personally a party. But I am a shareholder in a company called MONKEYmedia, which is a plaintiff.

QUINN: And you’re an expert witness, too, right?

BEAR: Yes, that’s right.

QUINN: So how do you balance that? Does it not present any issues or problems?

BEAR: Well, I’ll tell you, what interests me is truth and fairness. Now, there are others who play the game differently, and that’s not what I’m about. I’ve got to be able to sleep at night knowing I have integrity. And I’ve got to pass that onto my kids and I model that for the people I do business with. It’s about relationships and it’s about doing the right thing. And even if somebody on the other side of the table is playing by different rules, that doesn’t excuse it on this side. As an expert on other people’s cases, and even in cases where I have a vested interest, having it be right is deeply important to me, Gene. If that means patents I’m an inventor on are rightfully invalidated, so be it. Look, if somebody else came up with it first, then let’s celebrate them! Money comes and goes. That’s just not where it’s at.

QUINN: Yes.

BEAR: You know, I’m just sharing with you from my heart about this.

QUINN: I know, I can tell.

BEAR: Look, MONKEYmedia sued Apple because Apple all but said we can’t negotiate with you unless you sue us. The only emotion to have is sadness, because I’m a huge Apple fan. I learned to program on an Apple ][+ and was an intern at Apple right out of graduate school. In my family – my wife and my kids – everyone’s got a MacBook Pro, everyone’s got iPhones and iPods. We’ve got an iMac on the kitchen wall, a Mac mini for a server, and an AppleTV in the study. I have no negative feelings towards Apple. I’m an Apple shareholder and want everyone to be wildly successful. We also want to be able to find a balance that celebrates synergy between independent inventors and the companies that have the ability to get real products out into people’s hands.

QUINN: That’s interesting to hear you say that Apple wouldn’t negotiate with you unless you sued them. This is something that I hear more often than most people would probably think – that these companies, unless you sue them are just not going to talk to you. Sometimes maybe they won’t even look at what you send them. By the same token, they turn around whenever they’re lobbying Congress to weaken the patent laws they say, “We’re getting sued all over the place and if people would just come to us and talk to us about this we would try and do what’s right, but they choose to sue us.” They go and they say that. I guess, maybe it’s not under oath. I don’t know. Or maybe I don’t understand what it really means to be under oath in front of Congress or lobbying, but it doesn’t fit what I know to be going on in the industry. No matter what your right is, or how good it is, or how strong it is, the only way you can get the major players to take a look at what you’ve got is to actually sue them.

BEAR: It’s difficult to treat as black and white, because I can feel for their position as well. I mean, look, the number of people with illegitimate claims who are just trying to get nuisance fees – they’re the ones screwing it up for everyone. A lot of moving parts are transforming the ecosystem. Certainly, I’m not an expert on it. But I feel for their situation. If you’re a large organization, how do you know who to take seriously?

QUINN: I get it. Believe me, I get it. I just wish they didn’t then turn around and use the fact that they’re getting sued so much as support for their positions when in fact it seems to me that they’re getting sued a lot because of their intake and the way they have chosen to triage.

BEAR: It seems like it would be a lot cheaper to have business conversations. It doesn’t cost a lot to sit down and be humane. Independent inventors are generally driven by their passion for what they create and, I’d guess, probably by-and-large not greedy. They don’t have a large infrustructure to support with large amounts of money. Speaking for my own business, it’s not about breaking the bank of our partners or outrageous license fees. It’s just about finding something appropriate and workable for their use.

QUINN: I hear you. I totally get it. Now, let me ask you this question because there is something I definitely wanted to get your thoughts on. And this goes away from the patent stuff more into the implementation side.

BEAR: Sure.

QUINN: Your thoughts on two topics, one – using open source and then, two, having things coded, for example, maybe in India or overseas. These are things that I see new businesses struggle with and I have definitely some opinions and I’m happy to talk and share my thoughts with you. I wanted to get your thoughts though as to using open source solutions for some or, I guess, it can be all, but it has to be some of what you’re doing. And then what are your thoughts on outsourcing the development?

BEAR: Well, the way I can respond is from a practical standpoint. Philosophically, I have no national boundary bias. To me, we are all on planet Earth together. So I take a United Federation of Planets approach to thinking about the economy. In fact, when I call technical support and get someone in India, I love that – because I get to make a connection with somebody somewhere totally different, and, you know it’s a global community. That, when it works, is really good.

The challenge from the design and development side is the practicality of implementation. Rapid iteration is difficult to do well with a highly refined user interface design process. Nonetheless, you’ve got to have an engineering team that is well attuned to the user experience team. It will often work best if they can be in close communication and understand each other really well. So not being co-located is just a challenge to making great products.

QUINN: On top of that, if you’re sending to India, not only are you not co-located but your work day doesn’t overlap.

BEAR: Well, I think that may be a good thing because you can reap the benefit of all 24 hours.

QUINN: I suppose, but when I’ve seen what it does do it seems like – and maybe the experiences have jaded me – I have not seen a lot of good quality come out of India. Maybe there is some good quality. I haven’t seen high quality in software design and I have not seen quality with respect to patent searches or things like that.

BEAR: Ok.

QUINN: But when you’re trying to convey something and you think you get it through to them and you go through them working on it the whole day while you’re asleep and when you came back and it’s not what you wanted and now you have to wait another whole day on your end before you get the opportunity to stay awake at night to talk to them about what is was that you wanted.

BEAR: Yeah, right.

QUINN: When you’re co-located with the people — people are in house or even if they’re not in house but an independent contractor or consultant that’s down the street you can get together and talk about things or pick up the phone in real time and you can solve a lot of these small problems. Whereas, you send somebody on their way and then you hang up the phone in India and you go to bed and then they have a question an hour later, well, they’re not going to get you because it’s already the middle of the night for us and hopefully in R.E.M. for whatever hours you can sleep before you have to start all over again. So it seems like it adds a ton of time and needless delay.

BEAR: I have to say, I don’t have a lot of experience working with non-co-located development teams. But another key preventive measure is having great design documentation. And there’s a real similarity in some ways between patent prosecutors and user experience designers – because designers write spec’s. It’s like the relationship between an architect and a builder – when you’re talking about a house. The architect figures out how it should be made, figures out the details just enough so a builder can follow it to make the building without running into problems. That’s a model for the most productive relationships between designers and engineers. The designers figure out how the product should work for human beings – agnostic to how it works under the hood. To the designer, it doesn’t matter what the engine is built from. You code it in whatever language or manner. It doesn’t matter as long as it works right for people on the outside. And unless that specification lays out clear user experience requirements and detailed business rules for how it should work for people – and if you don’t have it worked out and tested in advance – then you run the risk of the design being misinterpreted.

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Interview Finale Preview: In the last segment of the interview we conclude our discussion of litigation, discuss working with patent examiners and then end with a discussion relating to the reality that an engineering mentality is very different from an experience design mentality, at least relative to development of software.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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