U.S. solicitor general, which represents the federal government, filed a brief in support of i4i, saying that the U.S. Patent and Trademark Office should not be second-guessed by a jury.
The Patent and Trademark Office absolutely should be second-guessed by a jury. Judges and juries are the only sanity-check the whole system has at this point!
Agree completely, had just copied the quote and was about to paste it to say the same thing. When we consider all the BS patents that have been rubber-stamped by the PTO, this is a very scary proposal.
It's so ridiculous theyre essentially patenting generic syntaxes for representing documents that anybody "skilled in the art" would come up with in 5 minutes. It would have been much better for small developers if Microsoft won this. It's funny how this is treated as a win for the little guys, who can't afford massive patent portfolios nor litigation battles like Microsoft.
"It's so ridiculous theyre essentially patenting generic syntaxes for representing documents that anybody "skilled in the art" would come up with in 5 minutes."
now - sure
but then? - apparently not as extensive litigation demonstrated.
And that 'non-obvious' nature back then - that's kinda the point, hindsight effect is a powerful thing
There is however the argument of prior art, so it still takes a little brain-racking to do.
Patents are more about digging some holes in the forest and covering them up, after which you go home and cross your fingers that someone steps into one of them in the future.
There is a well-known patent strategy where you patent a technology, wait for other people to start using it, and then proceed to sue them for large amounts of money.
From the point of view of other companies these are hidden traps that could be anywhere. You're just doing business as usual, solving problems, and bam, you're told that you weren't allowed to think of obvious idea X because someone has a patent, pay up $10 million dollars. (Actual dollar amount varies widely.)
The really evil ones patent stuff, get their patented ideas into standards, wait until everyone is following the standard, then start filing lawsuits. Past bad experiences with this are why standards organizations usually require that participants license any relevant patents that are needed to implement the standards.
> you're told that you weren't allowed to think of obvious idea X because someone has a patent, pay up $10 million dollars. (Actual dollar amount varies widely.)
And that's not counting the torturous legal fees, if you wish to try your luck at court in a case that is likely to drag on for eons.
Which is exactly why if you're in favor of software patents you should at least be in favor of a shortening of the duration. 20 years is an eternity for software.
I am in favor of software patents and I am in favor of shortening the duration. (In this context we somehow have to reform USPTO so that they can get a patent out in less than 3-5 years! remember this time comes off the term of the patent) :)
remember this time comes off the term of the patent) :)
Not at the moment, no. As I understand it, patents in the US are judged from the time of approval, not the time of filing, so the length of the approval process doesn't affect the amount of time a patent is in effect.
This makes sense. Otherwise, a competitor could tie any disagreeable patent up in litigation, ensuring that the patent would be in effect for only a very short period of time.
1. It could have been worse -- as correctly pointed out by carussell, the Supreme Court decision merely validates the the way courts have been deciding cases for the past 25-plus years;
2. The Supreme Court's opinion [1] urges judges to give specific instructions to the jury that it is allowed to take into account the fact that prior art introduced at trial was not considered by the patent examiner. That will be useful for defense counsel -- you can never know whether a given judge will agree to give such an instruction, so it'll be quite helpful to be able to refer the judge to a Supreme Court "suggestion" on that point;
3. The concurring opinion of Breyer, joined by Scalia and Alito, emphasizes that the clear-and-convincing standard applies only to proof of facts and has nothing to do with the ultimate legal question of validity. That, too, will be useful in trying to get the trial judge to give the jury a specific instruction on that point.
This article, and much of the reporting on this case, is very confused as to what it's actually about.
The case actually has to do with a feature called "custom XML" which was introduced in Office 2003 (I think?) and basically allows databinding between Office docs and XML files with some custom schema. You have some data represented in XML, and it shows up in a Word doc presented in a certain way. Then you can edit the Word doc through the Word interface, and the data in the XML will match your changes. So the idea is to let you use Office as an editor for structured data. I dunno how well it worked in practice.
The actual patent claim was over some detail of how the databinding relationship was represented in the file format.
This has nothing to do with the XML formats introduced in Office 2007 (.docx etc.)
That is a scary ruling. It basically strengthens software patents (and all patents for that matter). But in particular solidifies that once you have a patent, you aren't likely to get them overturned in court.
If you can invest in a patent troll -- now is a good time.
If you look at the details of the case, you will see that this was NOT a patent troll. i4i had started work to integrate their product with MS Office and started negotiations with Microsoft for licensing; then Microsoft in effect said "no thank you" and proceeded to implement the same (patented) technology on their own. While I am opposed to software patents, and despise patent trolls, I believe that this case should definitely not be misrepresented and linked to patent trolls.
No, I don't think i4i is a patent troll, and it wasn't my intent to imply they were.
I was rather pointing out that patent trolls also win with this verdict. Software patents are stronger, and are harder to overthrow in court, even if you have, for example, prior art.
My point wasn't to say anything about the specifics of this case, which are complicated, but rather that an unintended side effect is that it does help patent trolls.
@rwmj - the question is not whether it is obvious now but rather was their invention obvious then. Do you have any reason to believe it was obvious then? Remember that this very question has been litigated with MS doing everything in their power to demonstrate it was indeed obvious then, that there was prior art, and they failed! So it is easy to allege something like this now but I suspect that you are suffering from the hindsight effect and don't actually have any evidence supporting your claim of obviousness. I don't doubt your sincerity and I don't mean to be rude, I just don't think you are likely to have done the research (as MS and their attorneys did!) to prove it was obvious THEN.
The obviousness test is basically off the table after the patent has been granted. This is one of the things that is problematic with the system. Patent examiners tend to be too lenient, but the end result is you now hold a patent that is very difficult to overturn.
IMHO you are missing an absolutely critical point and are therefore falling prey to the hindsight effect.
Let's imagine that you have a brilliant idea right now, one that NOW is not at all obvious. What does that mean? It means that NOW (a) there is no prior art (b) there may well be teaching away from the art, in other words, even though the field is a familiar one and you would think it obvious once pointed out, nonetheless there is no evidence that anyone has thought of it before (c) there is no public domain publication or record of a talk etc .... Such evidence is taken as evidence that it is not obvious. Now let's assume that you take your idea further and turn it from an idea - an insight if you will - into an invention. That may involve a great deal of time and money. In some cases it certainly does. Now let us assume that you release a product and it achieves great success. The very success of your product means that it will become a part of popular culture and there have been several studies that show that within a remarkably short period of time people take what was your innovation for granted and consider it obvious. Bear in mind however that it wasn't obvious when you thought of it and when its obviousness was considered, for example, by the patent office. Failure to recognize this and the associated hindsight effect leads to people making statements about how obvious something is when that is completely irrelevant. The question is not how obvious it is but how obvious it was. If a patent is granted it can always be challenged and invalidated if someone is able to demonstrate that there was indeed prior art. The patent is assumed to have validity but that does not mean that evidence of prior art will just be disregarded, it just means that the evidence has to be clear.
It doesn't strengthen software patents. It upholds the lower court's decision and says the standard of proof will continue to be applied as it has in the past. Ruling in Microsoft's favor would have loosened the requirements to prove a patent invalid.
Don't get me wrong, it's the least favorable of the two, but it doesn't make things worse; it just doesn't make things better.
I think this case does make things marginally better. Before you jump all over me, look at the holding.
The Court said that it will maintain the CCE standard for invalidity defenses, not plaintiffs' claims of invalidity. It's a fine point, but important one neverhtless.
You see, CCE has been the standard for plaintiffs alleging patent invalidity since 1982. It's right in the statute. http://openjurist.org/title-35/us-code/section-282/presumpti... . The problem was that Microsoft was trying to reduce the burden of proof for the defense.
A weaker burden for defenses is very very bad. That means, even if a plaintiff shows, by substantial evidence, that a patent is invalid, a defendant can just give the minimal amount of defense...and the defendant will win.
This is an abomination. This patent clearly fails the obviousness test (that is, if somebody is capable of reading the patent all the way through without being disgusted and embarrassed for the "inventors"). Unfortunately, most of the software patents are like this: the Patent Office is clearly failing us. Math formulas are not patentable, and software is just that: math.
Seems like our only hope is if somebody powerful and famous, with a big software patent portfolio, can sacrifice it for the good of the industry and advocate for banning software patents. Steve Jobs and his position against DRM in music comes to mind as a similar move. Wouldn't it be great if leaders of the industry get together and petition/lobby for this change? One can only dream...
@romp please see my post above about 'the obviousness test' IMHO this relationship between patents and what is obvious is the source of a huge amount of misunderstanding about and opposition to patents. I have no problem with serious discussions about patent reform, but surely such a serious discussion should be based on a substantive understanding of reality not popular misconceptions? Let's all get clear on what is meant by 'obvious' in the context of patents and that will help us move things along.
You're attacking my use of the "obvious" word. Yes, the obviousness needs to be applied at the moment of the invention -- I agree wholeheartedly. I also agree that talking about obviousness of the already patented invention today is pointless: the information is published and everybody can claim that they had the same idea. We're on the same page here.
Now, the differences. The idea of storing markup and data in separate containers, at least one of which is XML-based is not something anyone with knowledge of XML can not think of. Let me re-read the patent in question. Yep, I got it right. While I can't turn off my hindsight, I can't also think that CSS doesn't fit into this, as well as many other technologies. BTW, i4i, in case you're reading, I didn't give you this idea and you can't use it, at least because CSS is at least 2 years older than issuing date of patent 5787449. Which reminds me of the prior art arguments, but I digress.
All that is neither here-nor there. You say it's not obvious -- I say it is. What really matters is the goal of the exercise. Patents were created when inventions were _hard_. Coming up with the idea of pumping air out of the glass tube with wolfram wire in it required lots of costly tests, trials and errors. Do you know how many stores stocked wolfram back then? Patents were created to _encourage_ innovation on the assumption that not too many people can afford innovating in the same field at the same time. Fast forward to today. Coming up with software patents today requires a whiteboard, a Word document and a phone to call a lawyer. I know, I have a few of those (equally embarrassingly obvious, I must add). Does it protect me and my invention _today_? Nope, since I can't afford to sue somebody even if I can prove beyond a reasonable doubt that the patent has been infringed on. Big companies plow over individual investors with their army of lawyers. The opposite, however, is not true (the in-app purchasing patent story is the point in case).
Another aspect of patent situation today is the shier vastness of the field. Who can afford doing patent searches for literally every line of code before it is written? So we all are forced to live on the minefield. This serves as an argument against innovation by individuals. And that brings results which are directly opposite to the original goals of the patent system. Which is not a good thing.
I sooo agree with this. Microsoft seems bipolar in its attitude towards patents. I understand why they are happy to sue into markets they aren't dominate, and then be upset at being sued in markets where they are. But they are so enthusiastic at both ends..
I am extremely satisfied with the ruling in this respect. Companies that use silly patents deserve to have silly patents used against them.
I agree it could have consequences. But that's a different (and possibly more important) discussion.
Peter Jurasik did a great job with that fun character. He and Andreas Katsulas had such amazing chemistry.
G'Kar is, by far, my favorite TV sci-fi character and the fact that Mollari was able to stand his own in such a huge shadow is a testament to Mr Jurasik.
Scary and sad. The only good that can possibly come from this is that the industry giants start pushing in earnest for patent reform. If all the big software companies seriously want a change, I think it can happen.
If you look at the holding, the Court just says that all invalidity defenses must be established by "clear and convincing evidence" (higher than preponderance of evidence but lower than beyond a reasonable doubt.)
It has been well-established that patent validity is a basic assumption. So, a plaintiff must prove patent invalidity by clear and convincing evidence. The issue here is once the plaintiff establishes patent invalidity, how much evidence does the defendant need to give to rebut the assumption of invalidity. The Court said that the higher standard of proof, not the lower standard of proof.
Maybe I'm being thickheaded here, but I don't see how that's terrible at all. In fact, it makes things equal. Once the plaintiff shows patent invalidity, it shouldn't be that easy for a defendant to rebut the assumption of invalidity.
Except for the fact that the PTO isn't an adversarial system. It would be different if prior to you getting a patent you had to go to court against companies who think you shouldn't have it.
And now that you have a patent and sue somebody, this other person may be able to put together some evidence that shows the patent is invalid, but they must climb a very high bar now.
In this case MS had prior art in a past i4i product that appeared to have the functionality that i4i had patented. i4i says it was different, but the source code had been destroyed. Had this challenge been brought up during the original patent examination, they could have pressed i4i to prove that this didn't infringe. But once i4i has the patent now MS must prove that it does, w/o the source code.
The plaintiffs trying to invalidate the patents have always had to climb a steep hill. My point is that this case doesn't change that. If you look at the statute and precedent, the plaintiffs always had to establish invalidity by clear and convincing evidence. (The appropiateness of that is a question for Congress, not the Court because the statute is clear on this point.)
So, this case just makes things equal between the plaintiffs and defendants. Once the plaintiffs do overcome the admittedly-high obstacle of proving invalidity, the defendant can't just put up a weak defense and get away with it. That's good!
Your problem with the patent system is completely valid, but the Supreme Court can't change law (or is not supposed to). Congress is the one who is responsible for this quagmire, not the Court.
The whole patent system is broken, and this case improves things by a nanogram (is that a word?)./
I don't disagree. And after reading the SCOTUS opinions, I think their reasoning was sound. Still disappointing in some sense, but it does read like the right decision.
Time to petition congress. It does feel like we're near an inflection point.
I just think that Congress needs to be reeducated about the different needs of today's technology industry versus the old-days of steel mills. It won't be easy, but I'm confident it will happen someday.
"Smaller companies that held patents worried that if Microsoft prevailed, it could lower the standard of proof for invalidating a patent, crippling small companies that depend on patent protection, legal experts say."
Other than patent trolls, which small (software) company benefits from (software) patents?
The article talks about "taking the case all the way to the Supreme Court", but is that accurate?
Reading the Court opinion, it seems like they aren't examining the whole case, but only one particular question of law raised by the case. There's nothing written in the opinion examining whether the patent itself is statutory, novel, and nonobvious; only Microsoft's objection to its validity is mentioned.
Can any law gurus explain how this certiorari thing works?
Well, I don't know about law guru, but I did go to law school. Take that for what its worth.
I'm not an issues and appeals lawyer, but here's what I know about appeals. Appeals are only for questions of law, never for questions of facts. And the question of law must be unsettled (otherwise, why would SCOTUS take the case?) SCOTUS probably took this case to clarify the defendant's burden of proof regarding invalidity defenses.
Now, this particular case was about the standard of proof for invalidity defenses (and jury instructions). The trial court told the jury that MS had to defend against invalidity claim by clear and convincing evidence. Microsoft thought that was the wrong standard. SCOTUS said that the lower court was right.
So, since the lower courts applied the right standard, this is the end of the line. The verdict against MS will stand.
tl;dr: appeals (cetorari_ to SCOTUS) focuses on unsolved or ambiguous questions of law, not factual issues. (Mixed questions of fact and law is a whole 'nother story...you don't want to know).
Is SCOTUS restricted to just the questions raised to them, or can they make their holding on another question that wasn't raised? For example, could they have said in this case, yes, the lower court applied the right standard for evidence, but the patent itself is nonstatutory following the Flook precedent?
P.S. Law school qualifies as guru for any questions I'm likely to ask.
SCOTUS is indeed limited to the question raised during the appeals process. Even if SCOTUS thought "geez this patent sucks," they can't do anything.
Why not? Well, for better or worse, the American judicial system puts a lot of weight on trial courts and juries' ability to assess facts. The appeals system was set up in such a way to prevent higher courts from actually deciding the case. If SCTOUS had found that the lower courts applied the wrong rule of evidence (burden of proof here), then the case would have gone back to trial and retried (isn't that crazy?).
And trust me, law school doesn't quality everyone as a guru. I have some experience with appeals, but I'm far from an issue & appeals lawyer (they're pros at this). So, take my words with a grain of salt.
U.S. solicitor general, which represents the federal government, filed a brief in support of i4i, saying that the U.S. Patent and Trademark Office should not be second-guessed by a jury.
The Patent and Trademark Office absolutely should be second-guessed by a jury. Judges and juries are the only sanity-check the whole system has at this point!