• Tag Archives patents

  • The Patent Troll and the Scavenger Hunt

    Posted on by Azrael 1 Comment

    Ken Cooper runs a small business out of his home. Unfortunately Ken’s business was not so small that it avoided the notice of a patent troll.



    Ken has been writing code since 1973. His life in programming has ranged from small personal projects to founding a software company that was acquired by Microsoft. Today he runs a company called Coopercode. The company’s main project is a mobile scavenger hunt app for the iPhone and iPad called Klikaklu. Ken created the app to do scavenger hunts with his kids. It ended up being featured by Apple as a ‘New and Notable’ app and became popular with teachers. The app has been used at conferences, college orientations, and institutions like the Smithsonian and the National Gallery of Art. What began as a hobby project turned into a real business.

    But Ken’s new business hit a roadblock. On January 6, 2017, a patent troll called Locality Leap, LLC, sued Coopercode alleging that Klikaklu infringed U.S. Patent No. 6,320,495 (the ’495 patent), entitled “Treasure Hunt Game Utilizing GPS Equipped Wireless Communications Devices.” The patent claimed a method of playing a game that involves receiving a message, generating a message, and then having a player move to a location based on those messages. It didn’t involve any new technology. Rather, it suggested using messaging and GPS technology to assist with the age-old pastime of treasure hunts.

    Ken was stunned by Locality Leap’s patent. He’d had some experience with the patent system from his time at Microsoft. In fact, Ken is a named inventor on six patents. But his first thought on reading the ‘495 patent was: “Wow, you can patent that?” The patent seemed trivial. All it did was combine things Locality Leap didn’t invent – like GPS and wireless messaging – with an ancient game.

    Even though the patent seemed frivolous, Ken faced the prospect of ruinous costs from the litigation. Locality Leap filed its suit in the Eastern District of Texas. That made no sense to Ken. Coopercode is based in Washington State and Locality Leap is incorporated in California. Then Ken learned that the Texas forum had a reputation as being both patent-friendly and expensive for defendants. Instead of spending time growing his business (with marketing or creating an Android version of the app), all of Ken’s time was sucked into the litigation. Ken soon realized that the case might force him to close his business entirely.

    Fortunately, thanks to Alice v. CLS Bank, Ken was able to fight back. Locality Leap’s patent was likely invalid under Alice because it simply applied well-known computer functionality to an old practice. Since Alice can be raised early in a case on a motion to dismiss, it also offered Coopercode a way to defend itself without going through ruinous discovery and trial. As Ken described it, Alice was “manna from heaven.”

    With EFF’s help, Ken was able to find an experienced patent litigator who took the case for a reduced fee. Ken’s lawyer wrote to Locality Leap explaining that its patent claims were invalid under Alice and also invalid as obvious. She explained that if Locality Leap didn’t dismiss the case voluntarily, Coopercode would file a motion to dismiss raising Alice and would also seek attorney’s fees.

    Facing a defendant willing to fight back, Locality Leap folded completely. It dismissed its claims with prejudice and Ken did not have to pay any money. Instead of closing his company he could return to it full time and work on growing the business. Without Alice, he likely would have faced a very different result.

    Source: The Patent Troll and the Scavenger Hunt | Electronic Frontier Foundation


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  • How the STRONGER Patents Act Would Send Innovation Overseas

    Posted on by Azrael 1 Comment

    Senator Chris Coons introduced a bill this week called the STRONGER Patents Act [PDF]. The bill contains many terrible ideas. It would gut inter partes review (a valuable tool for challenging bad patents). It would overturn the Supreme Court’s decision in eBay v. Mercexchange (thereby allowing patent trolls to get injunctions to shut down productive companies, even though the patent infringed is only on a tiny piece of the larger product). Perhaps most strikingly, the bill includes a provision that would discourage companies from doing research and development in the United States. The STRONGER Patents Act shows how far the certain patent owners are willing to go to serve their narrow interests at the expense of everyone else.

    The general rule in patent law is that each country has its own patent system. This means that companies can only be found liable for infringing a U.S. patent for manufacturing or sales that occur within the United States. The Supreme Court has issued a number of sensible decisions affirming this rule. Senator Coons’ bill would upend this principle by making companies liable for foreign sales whenever they conducted the research and development for that product in the U.S.

    Section 108(3)(A) of the bill says:

    Whoever, without authority, supplies or causes to be supplied in or from the United States a design for a product embodying a patented invention in such manner as to actively induce the making of that product outside the United States in a manner that would infringe the patent if made in the United States, shall be liable as an infringer.

    In plain English, this means that if you design a product in the U.S., you can be sued for sales around the world. Worse, a separate provision the bill would have this rule apply even if you independently invented your product, and had no idea you were infringing a patent.

    To see the impact of this provision, we can consider how it would apply to fabless semiconductor companies based in Austin, Texas or Austria. The Austin company designs chips in Texas then has them manufactured in Taiwan and sold around the world. The Austrian company designs chips in Salzburg then has them manufactured in Taiwan and sold around the world. If these chips are found to infringe a U.S. patent, the Austin company would be liable for all of its global sales. The Austrian company, however, could be found liable only for its U.S. sales. In this way, Coons’ proposal punishes the Austin company for investing in research and development in the United States.

    You might think that the STRONGER Patents Act balances this big disincentive to innovate in the U.S. by making U.S. patents stronger. But that is wrong. You do not need to perform research and development in the U.S. to get a U.S. patent. As long as you meet the criteria for getting a patent, it doesn’t matter if your laboratory is in Austin or Austria. Indeed, in recent years more than half of issued U.S. patents were of foreign origin.

    Under Senator Coons’ proposal, the most sensible business model is to do research outside the United States. Foreign companies will have their overseas sales protected. Yet they can still get U.S. patents and use those patents to attack the global sales of U.S.-based companies. As Josh Landau suggests at Patent Progress, it’s hard to think of a more effective way to use patent policy to convince companies to shift their investment in research and development overseas.

    Patent owners often insist, without evidence, that “stronger” patents will always mean more innovation. The STONGER Patents Act shows why that is not true. The bill would “strengthen” the U.S. patent system in ways that actively discourages doing research and development here. It makes this choice solely to benefit patent owners. We hope that Congress rejects the terrible ideas in the STRONGER Patents Act and turns to patent reform that would actually promote innovation.

    Source: How the STRONGER Patents Act Would Send Innovation Overseas | Electronic Frontier Foundation


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  • Government Secrecy Orders on Patents Have Stifled More Than 5,000 Inventions

    Posted on by Azrael Comment

    More than 10 years ago, Robert Gold sought to do what many Americans have dreamed of their whole lives: patent an idea.

    Gold developed a breakthrough in wireless communications that would help people speak to one another with less interference and greater security.

    Then it disappeared like a dropped call.

    The Department of Defense concluded that his invention could be a national security threat in the wrong hands and slapped Gold’s patent application with a so-called “secrecy order” in 2002, which prevented him from discussing the technology with anyone. Five years later, his attorney succeeded in lifting the order, but by then, it was too late.

    “The window of opportunity, I believed, had really passed during those years,” Gold said. “So we have not been successful at commercializing the idea.”

    Gold stresses today that he didn’t oppose the government’s position -– public knowledge about covert communications techniques could undermine the military. The federal government sponsored his research and retained the right to use the technology.

    But it also promoted an incentive by granting Gold shared patent rights, meaning he could file an application with the U.S. Patent and Trademark Office and seek to commercialize the idea. Accomplishing that, however, required petitioning to have the secrecy order lifted as the years passed with his invention living in the shadows.

    It’s a common refrain in the stump speeches of politicians that America is a nation of ideas, but Congress decided in 1951 that some of those ideas must nonetheless be kept hidden. Today, as Silicon Valley and other innovation centers churn out thousands of patents a year, some lawmakers wonder whether the government should have broader powers.

    What is known about secrecy orders is largely the result of Freedom of Information Act requests filed by groups like the Federation of American Scientists, an independent, nonpartisan think tank. Those documents show that the overall number of secrecy orders has steadily increased in recent years, totaling more than 5,300 by 2012, with some of them in effect for decades.

    Full article: http://www.wired.com … y-orders-on-patents/


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