When embarking on a software development project it is critical to understand that in order to both maximize the chance of obtaining a patent, as well as the likelihood of developing a working computer implemented process, you need to approach the task with an engineering mind set, as well as a healthy familiarity with Murphy’s Law. Anything that can go wrong will go wrong, and once you release the process to end users a human element will complicate what should otherwise be a predictable, linear, machine driven response. Embrace the uncertainty and challenges because the fact that software rarely, if ever, works like it should is what makes a working process patentable.
The Background of the patent explains that social networking websites have systems for tailoring connections between various users, allowing for frequent, automatic notification of changes in the information posted by other users. Apparently as of the time the patent application was filed there were existing mechanisms that allowed a user to display information about other users, including news items, but these news items were disparate and disorganized, thereby requiring users to spend time researching a news topic by searching for, identifying, and reading individual news items that are not presented in a coherent, consolidated manner. Thus, what was needed was an automatically generated display that contains information relevant to a user about another user of a social network. Essentially, it seems the resulting “invention” was a news feed for a social network. While this may have been new to social networking sites in December 2005 through August 2006, automatically updating news feeds were hardly new even then.
I am sure it will come as no great surprise to anyone who is a regular reader of IPWatchdog.com, but let me be as clear as I can be and put my bias right out in the open. I am a true believer in the patent system and I like the US approach to patentability, which is one where practically everything is patentable. There are, of course, some notable exceptions in the US. For example, you cannot patent something that is only capable of use for an illegal purpose, but if you get a rejection based on this it shows an acute lack of imagination. You don’t patent burglar tools, you patent locksmith tools! In any event, you also cannot patent an idea, laws of nature (such as E=mc², or the law of gravity), mathematical equations or things that are merely discovered. Pretty much anything else is fair game though, including software, business methods, living matter and pharmaceuticals. Given that patent watchers and software folks are becoming increasingly impatient waiting for a decision from the Supreme Court in Bilski, allow me to focus on software and business methods.
On January 21, 2010, the United States District Court for the Central District of Californiaissued a ruling in Big Baboon, Inc. v. Dell, Inc. et al, staying further consideration on the motion for summary judgment for invalidity until such time that the United States Supreme Court issues its much anticipated decision in Bilski v. Kappos. This is exactly what I have been suggesting (see Offering Help), and it has amazed me that other district courts and the United States Patent Office are plowing ahead and making Bilski rulings. Reality be damned, many district courts and the United States Patent and Trademark Office would rather waste their own time, the time and money of litigants and patent applicants, knowing full well that the United States Supreme Court will issue a ruling that will change the Federal Circuit machine or transformation test announced in Bilski.
It has been just over two months since the Supreme Court heard oral arguments in Bilski v. Kappos, and we likely have at least several more months to wait for a ruling. Notwithstanding, pundits and commentators are certainly trying to figure out what the Supreme Court will do, engaging in thought exercises and gazing into crystal balls. The crystal ball of preference is history, tied together with a healthy bit of speculation based on how similar cases and issues were previously addressed by the Court. No single case could be more telling with respect to how the Supreme Court may rule than a case in which they did not rule — Laboratory Corporation of America v. Metabolite Laboratories. In this case the United States Supreme Court decided not to issue a ruling, which may not seem noteworthy at first glance. After all, approximately 8,000 petitions are filed with the Supreme Court each year, and an additional 1,200 applications of various kinds are filed per year that can be acted upon by a single Justice. There is simply not enough time to consider each case where Supreme Court review is sought, so the Court has historically been very selective in choosing cases, normally only issuing full opinions in roughly 80 to 100 cases each year. But, as is frequently the situation with the Supreme Court, there is more than meets they eye with respect to Lab Corp.
At the end of 2009 I did a two part series setting forth what I believed to be the Top 10 Patent Stories of the Decade, see Top 10 – #1 to #5 and Top 10 – #6 to #10. At the time I promised to do a third in the series, which would discuss the “Honorable Mentions.” After taking some time off between Christmas and New Year and then being out of the office teaching the PLI Patent Bar Review course last week, this honorable mention component of the series is long over due.
Obviously, my Top 10 is subjective, although I think the majority would agree with most of what I put on the list. Nevertheless, there are a few things that didn’t make the list for one reason or another, but deserve mention. I have a feeling that one or more of these might wind up making the Top 10 for the next decade, depending of course on where the cards fall and what other good, bad and ugly news occurs during the decade between January 1, 2010 and December 31, 2019.
Without further ado, here are 4 stories that I thought long and hard about including, but decided against.
An article I published yesterday – Praying the Supremes Get Bilski Right in 2010 – has already started quite a stir, bringing out the anti-software patent advocates. These folks always claim to be innovators and as innovators they know best and they state with an obviously flawed confidence that as innovators they can state with certainty that innovators despise software patents. Of course, this is utter and complete nonsense. Those who are anti-software patent are simply pro copying. They don’t want software patents because then they cannot copy the work of others freely and without fear of being sued. Those in the software industry who are not interested in software patents are not innovators, they are copiers. They steal the work of others. They also claim to have a sophisticated understanding of constitutional law and patent law, but reading what they say makes it apparent to anyone who is knowledgeable that they don’t know the first thing about law in general, let alone constitutional law or patent law in particular. It serves no purpose to retroactively kill patents and applications that could have satisfied the standard announced in In re Bilski, but were written to satisfy the now defunct State Street test. That is changing the rules in mid-stream and violates all ideals of fundamental fairness and due process.
The patent backlog and all of the associated problems that go along with it, such as the increasing length of time it takes to obtain a patent, is the largest single problem facing the United States Patent and Trademark Office. In fact, this problem is not unique to the US Patent Office. Other Patent Offices around the world are also plagued with growing demand as the global economy continues to transition into an information and technology based economy. In the US the reason for our backlog getting out of control over at least the last 5 years is well documented, and largely related to the top level political appointees not having any patent experience. That has changed under President Obama and there remains a lot of optimism with respect to where the Office is heading, although to really get to the bottom of the problem Congress will need to cooperate and fund the Patent Office rather than viewing it as a revenue generator for other government programs.
I am not naive, so I realize getting Congress to do anything relating to patents is nearly impossible and getting them to do anything that is actually helpful seems almost akin to believing in the tooth fairy. So the Patent Office is going to have to come up with incremental solutions on their own. From time to time I will offer solutions that will help, to one extent or another. Today I suggest that the Patent Office immediately suspend prosecution on any and all patent applications in which a Bilski patentable subject matter rejection has been or could be made. Redeploy patent examiners to other areas and dig into the backlog.
Yesterday I published my Patent Wishes for 2010. Those things identified were largely industry wide wishes or desires and did not focus on any particular category or classification of invention. I wrote about how the monstrosity of an obviousness test we are hobbled with thanks to the Supreme Court’s KSR decision must be changed and how Congress needs to take their head out of the sand and fund the Patent Office adequately. These and the other things I wrote about would benefit the patent system as a whole and assist the Patent Office in streamlining the patent process, which benefits everyone.
Notwithstanding, there were a few things I purposefully did not include in my 2010 wishes. The word “wish” does not really capture the essence or depth of the magnitude of the desire I have for a few certain, industry specific events that will take place at some point during 2010. So rather than “wish” for certain things I thought it might be appropriate to beg for them instead. Thus, I beseechingly request the following: (1) a decision from the Supreme Court in Bilski that does no damage; and (2) an end to the nonsense surrounding gene patents and biologics. I also wish with the utmost urgency that the City of Alexandria stop issuing parking tickets after hours. After attending the USPTO Inventors Conference I received a parking ticket at 8:27 pm, while parked at a meter requiring payment only until 5 pm. I challenged, and lost, which cost me an extra $10. Go figure!
On Friday, December 11, 2009, two more patents bit the dust thanks to the ruling of the United States Federal District Court for the Northern District of California. This case came to my attention through Docket Report, which provides a remarkably detailed and informative daily summary of patent litigation events. In the matter of Fuzzysharp Technologies, Inc. v. 3D Labs, Inc., LTD (Case No: C 07-5948 SBA) District Judge Saundra Brown Armstrong granted Summary Judgment for the defendant and ruled that the relevant claims of U.S. Patent No. 6,172,679 and U.S. Patent No. 6,618,047 were invalid for failure to satisfy the machine or transformation test set forth by the United States Court of Appeals for the Federal Circuit in Bilski. It seems inevitable that the Supreme Court will alter in at least some way the Bilski test, which Justice Sotomayor continually referred to as “extreme” during oral arguments and which also troubled Justice Breyer and others. In the meantime, because the Patent Office and District Courts continue to churn these cases, a lot of work will be wasted and money needlessly expended only to have to start all over with a new test. Talk about ridiculous!