Definition - "Patent Troll"

"PATENT TROLL" - Any party that intentionally misconstrues the claims of their patent to assert it against another. A patent troll does not have to be a non-practicing entity (NPE) or in any particular industry, all that is required is an intentional misconstruing of the claims in an attempt to extort money from another.


Disclaimer - All information and postings in this blog are provided for educational purposes only. Nothing in this blog constitutes legal advice and you should not rely on any information herein as such. If you do not have a signed engagement agreement with me, then you are not represented by me and you should retain your own attorney for any legal issues you are having.

Thursday, June 16, 2011

More potential prior art for Lodsys patents

Note - I really like this first reference, but have not had the time to compare it to the claim charts.














Non-Patent Literature  (I currently have not found these references, but would like to see them.)

"Tiny Computer," Popular Science, Feb. 1977, p. 75
"Infopac I1/2 Data Terminal," Azur Data Literature, Mar. 1976

Thank you to Richard Pitt in the comments to pointing my search in a specific direction.


Financially Viable Patent Defense Strategy for Application Developers

Some commentators believe low-income application developers have no ability ($$$) to defend themselves against absurd patent claims like Lodsys is pursuing.  Such commentators fail to think outside the box and are stuck in sort of an old world way of thinking that does not actually provide real solutions to application developers.

Various commentators, including myself, have mentioned that application developers (or other companies) could join in a joint defense agreement.  The costs of a winning strategy against Lodsys could cost a minimum of $50,000 - $100,000, so even if the couple dozen threatened developers get together, they might still have to pitch in at least $10,000 each.  This may not be feasible or a good business decision for some application developers.

However, there is another option available to application developers and I believe this has to come from the developer community itself.  While this could be tough to implement quickly to deal with Lodsys and Macrosolve, this may help deal with future threats.

The application developer community as a whole, not just those developers that are directly threatened, could start a App Dev Patent Defense Organization.  This could be implemented in may ways and I am sure people will have contributions to this that I have not thought of, but here are the basics:

1) Application developers join and contribute a yearly fee ($500?) to an organization that is solely created to defend members against patent infringement claims. 

2) If massive participation could occur (I've seen the number of publishers near 90,000, but I have no idea if that is true)  If 10,000 developers join, then the fund would have $5 MILLION dollars PER YEAR to defend against the likes of Lodsys and Macrosolve!

That is a sizable amount of cash to defend against any patent threat, as most patent infringement accusations are disposed of for a lot lower amount than that.  There would be a lot of organizational details and structure to work out.  I would suggest to have some type of Troll test so as not to defend against actually valid claim assertions, though that might be too limiting; an alternative may be to limit the fund for paying for defense costs but not paying for judgments of actual infringement.  The fund should not provide coverage for actual infringers of valid patents.

If one of the OS makers (Apple, Google, Microsoft, etc.) included contributing to the fund as a requirement to use their app store, then massive participation could occur.  However, the App Dev Patent Defense Organization should be independent of any OS maker and owe a fiduciary duty to the app developer members, not any OS maker or other distributor. (though conflicts between members would have to be addresses also)

What do people think?  Let me know your thoughts.

Just my thought for the day, if you need legal advice, go hire an attorney.

Tuesday, June 14, 2011

To Kill a Patent Troll

Multiple lawsuits for declaratory judgment against Lodsys have been filed by Foresee, ESET, OpinionLab, and The New York Times.

I previously discussed a strategy to kill a patent troll.  While what is happening is not my actual strategy being implemented, I believe this is an important development that might encourage more companies threatened by Lodsys to file declaratory judgment actions.  Hopefully facing many DJ actions will deter future patent trolls from such aggressive tactics like Lodsys is using, thought I think ultimately we need some reform concerning what is required to file an infringement suit.

I would still like to see many, many more DJ actions filed in many other jurisdictions.  I hope Lodsys sees its legal bills skyrocket.  Though, Lodsys's response so far has been like a wounded animal, lashing out at everything that moves... before it eventually dies off, hopefully.  (In the corporate sense only, I do NOT wish literal death on any person, for the most part.)

Here's to hoping more companies pile onto the DJ actions!  I also would love to see the invalidity arguments... oh the anticipation of a good legal smackdown... (legal geek at heart) I hope that the DJ suits are not settled before disclosing the invalidity arguments.


Monday, June 13, 2011

Issues Raised By Apple's License

Apple is asserting license (contract) rights and patent law doctrines of exhaustion and first sale while trying to intervene in the Lodsys v. small app devs lawsuit.  This is a strategic move on Apple's part for likely many reasons, most of which we can and have guessed at, but will likely never fully know because we would need knowledge of Apple's licenses and relationship with IV. 

Apple's assertion of license rights will revolve around the critical question of who could be an infringer of the Lodsys patents.  If Apple is the direct infringer or caused contributory infringement, then per Apple's assertions, they are licensed for that.  This is the crux of Apple's defense, that Apple and only Apple could be an infringer of the Lodsys patents and Apple has a license which permits that.

However, if Lodsys can somehow establish that the application developers could infringe the patents exclusive of Apple, then Apple's license likely does not apply.  (I personally do not consider this very likely to happen; see my discussion of Divided Infringement.)  I would guess that we will see the application developers respond and assert claims of non-infringement because in essence, that is Apple's argument also, though Apple is being careful not to speak for the application developers.

Thus, if Apple is allowed to intervene and assert it's license rights, the lawsuit will still be decided on the question of infringement (direct, induced, contributory) and non-infringement.  And the issues surrounding Divided Infringement will be heavily analyzed and argued if the lawsuit gets that far.  Thus, Apple's attempted intervention does not necessarily short circuit the lawsuit by itself.  I hoped it would induce Lodsys to back off, but recent news shows that they have an aggressive campaign against many companies.

I have no idea how Lodsys will respond to Apple's assertions because I have a hard time trying to formulate legal strategies that are completely divorced from facts of the case and the law.  Lodsys's claim charts are a joke and no decent patent attorney would ever sign their name to a lawsuit asserting them.  As I have stated a few times earlier, I think Lodsys's patents are likely not infringed by anyone and highly likely to be invalid.

Just my thoughts, retain your own attorney if you need actual legal advice.


Thoughts on Apple's Intervention in Lodsys Lawsuit

If you have not heard, Apple has filed a motion to intervene in the Lodsys patent suit against application developers.  See here, here, or for additional analysis see here

I like Apple's move, as it puts pressure on Lodsys and tries to bring themselves in as a defendant with enough resources to fight Lodsys properly.  However, everyone should understand that Apple is not providing ALL application developers full indemnification.  Apple explicitly states this in the motion to intervene. (I'll add the citation later)  (It is not known if Apple has made individual agreements with the application developers already sued.) This is a smart business move by Apple because it is in their best interests to make sure Apple does not have an implied obligation to provide indemnity anytime an application developer is sued or threatened.  In some situations, an application developer may get sued, and unlike the Lodsys patents, if the patents could be infringed solely by the application, Apple will probably not want to provide indemnification or get involved.  (Note:  These possible situations are typically addressed in a standard indemnification agreement.)

In other suits,  Foresee Results has filed a declaratory judgment action against Lodsys, asking for a finding of non-infringement and invalidity of Lodsys's patents.  See here.


Tuesday, June 7, 2011

Why Macrosolve is substantially different from Lodsys

Macrosolve has been busy lately filing lots of lawsuits.  While Macrosolve seems to be a Troll like Lodsys, there are substantial differences that will affect application developers for their legal strategies and risk analysis.

A huge difference from the Lodsys analysis is that the claims in the Macrosolve patent (7,822,816) (from a quick review) do not necessarily require another party (such as the operating system or hardware) to be infringed, whereas I believe the Lodsys '078 patent does.  That is, in plain english, a software company or application developer could possibly infringe the claims of the Macrosolve patent due to just their products.

What this means from a practical effect is that there may be no hardware company or OS company (such as Apple or Google) coming to the rescue to defend the application developers or offer indemnification.

At this time, I have no opinion as to whether any applications do or do not infringe the Macrosolve '816 patent or whether there are any non-infringement or invalidity arguments with respect to the Macrosolve '816 patent.  From an initial reading of the patent, much detail will need to be analyzed to determine the scope of the claims and how they could apply to each application, which analysis may be different for each application.  Thus, a customized legal analysis for each application developer sued by Macrosolve might be needed.

(I have to run this will likely be updated later)


Monday, June 6, 2011

Leverage If You Are Threatened with Patent Infringement (and why you should ignore FOSSpatents)

Gene Quinn over at IP Watchdog has some good information on "What To Do If You Are Sued for Patent Infringement".  Go read the entire article.  Whatever you do, please ignore the advice of non-attorney commentators (such as Florian Muller @ fosspatents) because they can be shortsighted and are not qualified to provide the complex legal analysis and advice you will need.  (e.g. from one of Florian's latest posts about the Lodsys patents, any patent attorney should be able to recognize that Florian does not understand the law regarding patent infringement and numerous other issues.)

For example, some commentators (including Florian Muller @ fosspatents) are advising targets of patent trolls to roll over and pay the license fee; Florian is even advising you that the license agreement that has not been made public is acceptable for you to sign.  I very much question the soundness of this advice, especially considering the above article at IP Watchdog. Contrary to the bad advice and legal analysis put forth by Florian, there are options available to companies threatened by patent trolls and even if the outcome is a license agreement, Florian's legal analysis and advice is not solid. (I could write a white paper explaining why Florian's analysis is messed up, but I don't have the time right now.  If anyone requests me to provide more detailed analysis, I will put it on my to-do list.)

For starters, in my opinion, Lodsys probably LOVES Florian's analysis and opinions.  (I have no connection or contact with anyone at Lodsys, Apple, and no longer any contact with Florian).  He seems to be making all the arguments that support the troll's business plan - you can't afford to fight, don't even try, the trolls arguments are decent, just give in and sign the license.  Florian dismisses prior art searching, dismisses non-infringement arguments when he clearly does not understand the law, ignores invalidity arguments, misinterprets the claims to determine that Lodsys has a case that is possibly good enough to go to trial (remember, he is not an attorney), and makes statements such as "app devs will lose" unless they have blanket coverage from someone else.  (note - of course, Florian includes CYA language in his posts so that he can have wiggle room out of his responsiblity for misleading people.)

Generally, this is why Florian is wrong:  "In order to be a party at the peace talk table, however, you need to have leverage of some kind, otherwise you are not a party to talks as much as you are having terms dictated."  See Gene Quinn's article.  Gene does not provide a list of what that leverage might be, but he alludes to invalidity or reexam arguments.

To expand on that article, here are potential strategies that could add leverage during negotiations for a company threatened by a patent troll:
- have a non-infringement opinion
- have an invalidity opinion
- have a reexam prepared to file or filed
- file a motion for summary judgment
- file a declaratory judgment action
- consider counter claims (tortious interference, antitrust, etc...)
- have IP insurance provisions
- help fund a joint defense agreement
- hold off settling until a Markman opinion

Many of these strategies can be implemented by a small company.  Some companies may even implement more than one of these strategies at the same time.  As I have said before and Gene notes: "The advice you need, and will get if you hire an attorney, will be tailored to your unique circumstances.There are many variations of these strategies and others that can be implemented that will NOT cost one million dollars.  You need to determine the right strategy for your company based on your circumstances.

Any good negotiator (which IMO excludes Florian) will tell you that you do not negotiate with yourself.  Thus, I have no idea why Florian claims to be supporting application developers when he writes analysis that attempts to shred their potential leverage arguments and advises them to pay what Lodsys is asking.  If someone was truly supporting the application developers, they would be trying to bolster the application developers leverage arguments (as I have been trying to provide on this blog).

Another issue I have with Florian is he seems not to recognize the value of a non-infringement or invalidity opinion, which can reduce a significant amount of risk for a comparatively small cost.  Just another fail in his analysis.  (I think his excuse for will be that none of the accused application developers have the resources available for any strategy other than pay the fee.  Again, I think this shows why Florian is not qualified to advise anyone on strategy or risk concerning patent litigation.)

On a personal note, Florian accused me of being an "anonymous smearer".  While I am doing this anonymously, my response still stands:  "FYI rebutting factually inaccurate statements does not make me a "smearer", it makes you uninformed".

If you are threatened, whatever you do, hire an attorney to advise you for your particular circumstances.  There are many options and strategies available to you whether you fight or negotiate.

Just my opinion, go hire your own attorney for legal advice.

Saturday, June 4, 2011

Hint of help for app devs? Just speculation...

Yesterday, @chockenberry (Craig Hockenberry creator of Twitterrific) posted on Twitter: "Do the developers affected by Lodsys a favor next week: don't ask questions about what's going on. We can't talk about it. #wwdctips"

Please listen to his request, as I am sure there is a good reason.  While I wish he could talk about it, please respect that there are reasons why he can not.

Though, I am in a mood to speculate this morning, so I asked myself "Why can't they talk about it?" and here are some possible reasons:

1.  Maybe the app devs are in confidential negotiations with Lodsys and agreed not to talk about it publicly.

2.  Maybe Apple's legal team is talking to the app devs and they agreed to confidentiality with Apple.

3.  Maybe the app devs are in a joint defense arrangement with other app devs and they agreed to confidentiality in the joint defense agreement.

4.  Maybe their legal counsel advised them not to talk about it.

5.  Maybe the app devs are just sick of all the bullshit surrounding the issue and don't want to talk about it.

I personally hope that this tweet is an indication that option 2 or 3 might happen, but I have absolutely no inside information and this is pure speculation.  What I do know is that litigation is stressful for most parties involved, especially a small company that may be inexperienced as a defendant in a patent litigation.

Whatever the application developers do, I hope they have retained their own counsel (even if option 2 or option 3 is occurring) to look out for their interests first.

If anyone thinks of anymore reasons (hey, I think I do a good job, but I am not infallible) to add to the list, let me know.


Friday, June 3, 2011

More analysis and claims charts of Lodsys patent

Another firm, M-Cam, which is not associated with me in any way, has also done a good analysis, prior art search, and claim charts concerning the Lodsys '078 Patent.  See here.

The prior art focused on for the '078 Patent are:

US 4,634,845 - Portable personal terminal for use in a system for handling transactions

US 5,535,407 - Data processing system for locally updating customer data distributed by a host computer to a remote facility and for returning the updated customer data to the host computer

Their report is detailed and includes even more prior art for people to consider.

UPDATE (6/5): I have spent a little more time reviewing the M-Cam document.  While I am glad to see other organizations out there trying to help invalidate Lodsys's patents, their analysis, in my opinion, ignores some basic issues:

1) They state "Apple maintains that developers are legally covered under their license, citing the legal doctrines of patent exhaustion and first sale".  While I acknowledge that many non-attorney commentators are making similar statements, that is not exactly accurate from a legal standpoint of what Apple's letter stated.  Any good patent attorney should be able to dissect the Apple letter to really get at the heart of what they were saying.  For example:
 "Sewell recognizes that it is Apple, not the developer, that provides most of the claim elements in any reasonable mapping of the claim, and asserts that Apple is licensed to practice the inventions.  He says developers are protected by Apple's license, not that developers are fully licensed."  See igoeIP Apple Patent Blog.

In essence, this is all about divided infringement and non-infringement by the application developers.  The rest of Apple's letter is smoke and mirrors and any good patent attorney can tease out the true legal arguments.  Also see IP Watchdog.  I expect someone trying to produce a document such as M-Cam should understand and explain these legal distinctions.

2) Seems like they used "M∙CAM DOORS™ analytic platform", which I would guess is some sort of automated claim analyzer.  While such systems can be powerful and useful to point a prior art search in the right direction, analysis of claims need to be done by an attorney, which they do not say has occurred.

3) They compare claims of the '078 patent to claims of the prior art references.  This seems very odd to me, because an invalidity argument is not based on the claims of the prior art, but what the prior art teaches as a whole.  Thus, a patent attorney would not likely make such a chart for an invalidity argument using just the claims of a prior art system, they would include analysis from the rest of the reference.

4)  They completely ignore one of the major issues of the claims, what a "user perception of the commodity" is and whether their prior art addresses such.  A patent attorney should never write such a document while omitting any analysis of such an important claim element.

My conclusion: the art M-Cam cited is relevant, but they are far from having a high quality invalidity claim chart.  To be clear, M-Cam never asserted or labeled their claim chart as an invalidity claim chart, they label it as "similarities in innovation in this technology space", though I am not sure what the point is other than trying to establish invalidity.

I have not had a chance to review  their long list of other references, if anyone else does, please let me know.


Shortsighted to call App Devs a "mastermind"

Ugh, non-attorney commentators... give lots of bad legal advice.  Even if some conclusions and advice might be similar to that of an attorney, a lot of the analysis I have seen is not correct.  (and it is easy to get some things right, when you post a ton of crap, the percentages are in your favor).  Any person or company involved in highly complex legal issues, like patent infringement, need to receive advice and proper analysis from a qualified attorney.

One particular issue I read just this morning:
At least one non-attorney commentator I have read believes that the application developers could be a "mastermind" when considering divided infringement and thus, the divided infringement theory is skeptical (I refuse to link to his site because he is clearly giving legal advice and he is NOT an attorney).

Of course to come this conclusions, such commentator glosses over many issues and seems to ignore the facts of the case, the elements of the claims, and the law on the matter.

For example, if an attorney had done a similar "mastermind" or "control" analysis, they probably would have discussed this case, Centillion Data Systems, LLC v. Qwest Communications International, Inc. (Fed. Cir. 2011):

The only way that Centillion can establish "use" by Qwest is if Qwest is vicariously liable for the actions of its customers such that "use" by the customers may be attributed to Qwest. Our precedents on vicarious liability, BMC, Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1328-29 (Fed. Cir. 2008), Akamai Technologies, Inc. v. Limelight Networks, Inc., 2009-1372, 2009-1380, 2009-1416, 629 F.3d 1311, 2010 U.S. App. LEXIS 25825, 2009-1417, 2010 WL 5151337 (Fed. Cir. Dec. 20, 2010), and Cross Medical, analyze the circumstances in which the actions of one party ought to be attributed to a second party for purposes of direct infringement — vicarious liability. In BMC, we noted that "[f]or process patent or method patent claims, infringement occurs when a party performs all of the steps of the process." 498 F.3d at 1378-79. However, we noted that in some instances, one party could be liable for infringement of a method claim even if it did not perform all of the steps. This vicarious liability arises when one party controls or directs the actions of another to perform one or more steps of the method. Id. at 1379. We confirmed this approach for method claims in Muniauction, 532 F.3d at 1328-29  [*19]  and recently explained in Akamai Technologies that for infringement to be found when more than one party performs the steps of a method claim, an agency relationship or other contractual obligation to perform the steps must exist. See Akamai Techs., 2010 U.S. App. LEXIS 25825, 2010 WL 5151337, at *6. In Cross Medical, we considered the issue of vicarious liability for making a claimed apparatus or system under § 271(a). The claim related to a medical device and, as properly construed, required contact between the device and human bone. 424 F.3d at 1310-11. In the particular facts of that case, the accused manufacturer created the accused product, but did not perform surgeries to bring the device into contact with bone. We held that the manufacturer did not "make" the claimed apparatus. We held that if anyone made the claimed apparatus, it was the surgeon who implanted the accused device, possibly bringing it into contact with bone. Id. at 1311. We noted that the manufacturer would not be liable for the surgeon's direct infringement unless the surgeon acted as an agent of the manufacturer. Id.

Following our vicarious liability precedents, we conclude, as a matter of law, that Qwest is not vicariously liable for  [*20]  the actions of its customers. Qwest in no way directs its customers to perform nor do its customers act as its agents. While Qwest provides software and technical assistance, it is entirely the decision of the customer whether to install and operate this software on its personal computer data processing means."
With this in mind, I find it very hard for an application developer to be considered the "mastermind" or in "control".

These are very complex legal issues that need a great deal of legal analysis and advice from a QUALIFIED ATTORNEY.

If you are threatened, do not take your advice from non-attorney bloggers.  Hire a qualified attorney to advise your options and legal strategy.

Just my opinion, go hire your own attorney for legal advice.


Will Apple support the developers by filing a reexam?

In the past, when dealing with patent trolls, Apple has taken an aggressive stance in filing reexams.  Will Apple file reexams on the Lodsys patents to support the application developers that were sued?

As detailed with my posts earlier (here, here, and here), there is plenty of prior art out there to put together a high-quality reexam, especially if a company like Apple throws their resources behind the prior art searching.  The prior art I posted is the results of myself and a friend searching for only a few hours each;  Apple could easily fund a much more comprehensive search and possibly find even better prior art.  Most of the large companies sued by Lodsys have likely done prior art searches for invalidity opinions; I wish we could see the prior art they found, but I have not received any responses to such requests yet.

There are a lot of considerations that Apple is likely weighing to determine the amount of support or involvement to provide the sued application developers.  For instance, there are issues concerning whether Apple can directly challenge an IV patent (see here), which I do not know the answer to because it depends on the contracts between Apple and IV.

Hopefully Apple jumps in to support the application developers at least with reexam support.


Wednesday, June 1, 2011

Lodsys files suit to bully small app developers

Unfortunately for application developers, Lodsys has decided not to leave them alone.  This is not a surprise considering Lodsys's whole business model is based upon a mound of smelly bullshit.  Their patent infringement assertions are laughable and their patents are questionably valid They are in essence highway robbers that hope the threatened will pay them to let them pass unharmed rather than risk the expense of fighting.

Each application developer that is threatened or sued needs to hire an experienced patent attorney ASAP to consider which options will be most suitable for their business.

One option that should be given consideration is filing a motion for summary judgment of non-infringement.  See my arguments earlier considering non-infringement (these arguments will similarly apply to the '565 Patent that has been asserted).  This may be able to be done and allow the app developers to win the fight without sacrificing their whole company.  Though, each app developer still needs to determine if they wish to fight or pay the highway robbers.  I hope the application developers are also considering a joint defense arrangement to help with the costs.

This is a great learning moment for small business and other app developers not yet sued.  It might also be a good time to look into IP infringement insurance if you are in a tech industry.

ALSO SEE: igoeIP deconstructs the highway robbers bullshit offer of $1,000.  I planned to do another post on this exact thought, but igoeIP explained it all.

Best of luck to the application developers.


Friday, May 27, 2011

Trolls under the Bridge - Patent Reform Proposal

[UPDATE]  Patent trolls are not a software patent problem, they can affect any industry and commonly do.  I have spent over 10 years fighting patent trolls, mostly for the computer hardware industry (microprocessors, data storage devices, etc.).

While dealing with patent trolls, I have come to the following conclusions:

1) Patent trolls suck and usually need to misconstrue the claims of the patent to have an infringement argument;
2) It is hard to write a patent reform law to get rid of trolls (trust me, I have tried) because you will inevitably include some people who are not trolls who have a good claim against an infringer;
3) Patent trolls exploit loopholes in the patent system to maximum benefit (will explain below);
4) rarely are the claims nearly as broad as the patent troll is trying to assert. (thus, I do not believe a wholesale change to our patent granting system is needed to address this.)

One of the biggest loopholes of the U.S. patent system that patent trolls exploit, and which allows patent trolls to have a good deal of leverage over small business, is the lack of specificity and disclosure in the pleadings required by a plaintiff to file a patent infringement claim.  Here is a great short summary:
"According to the Federal Rules of Civil Procedure all a patent owner has to do is assert the number and title of the patent and then vaguely say that one or more claims are believed to be infringed." See IP Watchdog to read their whole article regarding patent trolls.
I believe patent trolls would lose a lot of their undue leverage in threatening a patent infringement lawsuit if they were required to include much more specificity at the time of filing.  For instance, I would like to see the following required to be shown at the time of filing in order for a plaintiff to file a patent infringement lawsuit:

1) Specific claims that are infringed must be asserted;
2) Claim charts mapping the specific claims asserted to the accused infringing product;
3) Claim interpretation arguments must be supplied explaining the support for such and how the claims apply to the product (i.e. Markman briefs must be submitted at the time of filing). 
My theory is that the leverage of the trolls exploiting these loopholes in the patent system will be reduced greatly if they have to show all the details of their theory of their case from the start, while parties with very legitimate claims for infringement will not have as many reservations about putting forth this specificity.  Also, I believe this serves the public interest by having a greater disclosure of information.

Further, another change in the law that would help would be:
4) The claim interpretations and arguments put forth by the patent owner will have estoppel attach immediately, whether or not the claims have been fully and finally litigated.  That is, the patent owner will be limited to the claim interpretations put forth during the pleading of the infringement claims and will be limited by such in future lawsuits regarding the same claims.

I have seen some discussion about these issues before at CLEs and in some articles, (I only found these articles with a quick search: here and here, paid content though-sorry).

Let me know your thoughts on this.


Android developer threatened by Lodsys?

Lodsys has not gone away yet, for Apple or Android developers.  According to at least one report, Lodsys has threatened to sue an Android application developer also, which makes sense.  If Lodsys claims (completely bullshit claim though, see earlier posts) that Apple's app developers infringe, then by the same totally misconstrued claim interpretations, then the Android developers would also likely infringe.  (But, if facts matter at all, they don't.)  The analysis and discussion of the '078 patent I have already posted also applies to Android applications and the results and options are likely the same.  See here for developer options.

For a good summary of where things stand for Apple's application developers now, see here.


Thursday, May 26, 2011

Preliminary Invalidity Analysis for Lodsys's '078 Patent

Background Info
Patents are presumed valid once they issue, however, a party may challenge the presumption of validity in a reexamination request, as a defense to a patent infringement suit, or in a declaratory judgment action.  There are multiple reasons why a party can argue a patent may be invalid, but I will only address the two reasons based on prior art:  Anticipation under 35 U.S.C. 102 ("102") and obviousness under 35 U.S.C. 103 ("103").

under 102:  For a piece of prior art to anticipate a patent claim and make it invalid, each and every limitation of the claim must be found either expressly or inherently in a single piece of prior art.

under 103: For a combination of pieces of prior art to make a patent claim obvious and make it invalid, the decider (a court or the USPTO) must ask whether "[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."  This is a very quick overview of obviousness and does not explain all the intricacies, which is not the goal here.  If you need more thoughts and detail about 103 see other articles (for example, here or here ).

Thus, the ultimate goal of any invalidity search is to find a single piece of prior art that includes all of the elements of the claim that is trying to be invalidated.

In my search, I have found a reference that MIGHT provide a decent 102 argument or could be a good 103 argument.  Whether it would be considered 102 or 103 art will depend on the interpretation of the elements in the claim, which can be affected by interpretations of the patent's specification, statements made by Lodsys during prosecution of the patent (or possibly another related patent), statements Lodsys makes during litigation, and other factors.  The interpretation of a claim is typically not determined by a court until a Markman opinion is issued during the patent litigation.

As with my previously posted search results (here and here), I am assuming the earliest possible priority date that Lodsys could claim based on the continuations and CIP filed dating all the way back to 1992.  Sorry, but I have not had the time to read through all the documents to determine which claims should get what priority date; just trying to beat the earliest listed date is the shortcut at this point.

Here is my preliminary invalidity chart:
Possible Claim Interpretation (note: needs more direct analysis from specification and file histories)
1.  A system comprising:

Hand-held computer system (p.243)
units of a commodity that can be used by respective users in different locations,
Multiple computer hardware products with a user interface
Hand-held computer systems (p.243) are commodities that can be used by respective users in different locations, as that is inherent in their design.
a user interface, which is part of each of the units of the commodity, configured to provide a medium for two-way local interaction between one of the users and the corresponding unit of the commodity, and
Each of the multiple computer hardware products has a user interface
Computer screen can show menus and scrolling lists on the hand-held computer, keyboard allows two-way interaction. (P. 243)  Also, the Psion included a keyboard and screen.

further configured to elicit, from a user, information about the user's perception of the commodity,
The user interface can be configured to ask the user a question about the product. 

Or, the user interface can receive feedback from a user about the product
A survey can be programmed.  Surveys may include questions about conditions or attributes.  (P. 244)   

USPA comments: Inherently, a survey could ask any type of question, including a question about the hand-held computer itself.  Thus, receiving user feedback about a product being used to conduct the survey is merely a simple design choice of the survey.

Also see to establish it was well known to receive user feedback about a specific product.

a memory within each of the units of the commodity capable of storing results of the two-way local interaction,
Memory in the product
Data can be collected during a survey and stored in a memory to allow the transfer of data to a PC. 
“… the hand held computer, should prove to be the optimum solution.  The data collected during the survey … the transfer of data to the main computer is controlled by programs on the PC and hand held computer…” (P. 243)

Also, the Psion Organiser included memory, ROM, RAM, EPROM, and data packs. (P. 243)  Also see
the results including elicited information about user perception of the commodity,
Configured to store answers to the question
Answers can be stored in the hand held computer .  “… the hand held computer, should prove to be the optimum solution.  The data collected during the survey … the transfer of data to the main computer is controlled by programs on the PC and hand held computer…” (P. 243)
a communication element associated with each of the units of the commodity capable of carrying results of the two-way local interaction from each of the units of the commodity to a central location, and
An interface for transmitting data to a computer
There is an interface or device to allow the data from a survey to be transferred to a PC. (P. 243)  “it is assumed that a database will be set up on a PC to handle the storage and sorting of the collected data for all systems.” (P.242)

“The transfer of data to the main computer is controlled by programs on the PC and hand held computer…” (P. 243)

a component capable of managing the interactions of the users in different locations and collecting the results of the interactions at the central location.
Software at the computer to manage the questions and store the results.
The hand-held computer can be programmed using survey design software.  A database at a PC can collect the results of the survey from multiple hand held systems.

“As with all computers, the Psion needs to be programmed to enable a survey to be carried out.  There are commercial packages available which enable the non computer literate user to generate a survey…” (P.243)

“The capital costs for the hand held system should also allow for the survey design software…” (P. 243)

“it is assumed that a database will be set up on a PC to handle the storage and sorting of the collected data for all systems.” (P.242)

Also see the following to establish that it was quite well known to elicit user feedback for a product:

(note on last link: scroll down to "User Feedback" section, p. 429)

I have highlighted above what I believe will be the critical issue in any litigation if Lodsys keeps pursuing its patent litigation on the '078 patent.  Also see igoeIP for analysis about interpretation of "user's perception". Whether the art I cited invalidates the '078 patent or even Claim 1 will depend almost entirely on the claim interpretation provided to the highlighted element.

For anyone not familiar with interpreting patents, it may seem like the claim chart above is not really addressing what the '078 Patent discusses in its figures and specification.  That is because the legal breadth of a patent is defined by its claims and, generally, it is the elements of the claim that need to be shown in the prior art to invalidate the claim.  For this analysis, I have assigned what I believe to be a reasonable interpretation of the claim, but I recommend anyone who might use this for an invalidity argument do a much more extensive investigation of claim interpretation.

Based on the above analysis, there is a good argument that Lodsys's patent might be invalid, at least the broadest (independent) claims.  I cannot guarantee to anyone that a judge or patent examiner will agree, but that is my opinion.  If Lodsys keeps pursuing this, we will keep looking for even better prior art and posting it for everyone to have access to it.  If you are aware of any prior art that we can document, please contact me.

These are just my thoughts for discussion, I would love to hear feedback.


Tuesday, May 24, 2011

Troll Blasting Strategy

Here is a strategy that a community of developers could implement to try to kill a troll.  It has risk, but the benefits are huge. 

Generally, trolls know exactly what they are doing when they set the license price for small application developers very low.  They probably chose this to give the application developers a huge incentive NOT to go to court.  Most trolls business plan is predicated on the idea that a certain percentage of companies will pay to avoid legal costs because the troll also wants to avoid legal costs.  (note: A troll, such as Lodsys, that wants a percentage of revenue does not guarantee that agreeing to the license will be the cheapest resolution to the problem.)

Below is a strategy that I would love to see implemented in response to a troll, though it carries with it a certain amount of risk.  But, it basically lets the application developer community slap the Troll down in a huge first round.  It would also make an amazing statement to other Trolls that might attack application developers.

The Troll Blasting Strategy:
1.  Prepare a declaratory judgment action to be filed based on non-infringement.  For Lodsys '078, the details found here and the details in Apple's letter to Lodsys lay out the non-infringement argument against Lodsys's '078 Patent.  Thus, the cost of preparing a detailed argument hopefully could be $10,000 or under.

2.  Find developers across the nation, hopefully in 100+ different jurisdictions, willing to file the declaratory judgment action.

3.  Each developer files the declaratory judgment action ON THE SAME DAY.  That way, the troll would be required, at least initially, to respond to them all at the same time.  Each developer may have to retain a local counsel to do this, but hopefully the costs for that are low (<$2,000 each? though we would need more specific quotes on this).

Goals of the Troll Blasting Strategy are 1) cause the troll to spend so much money defending against the claims that they will never recoup more than that from the app developer who filed the action; 2) bankrupt the troll; 3) show other trolls that the application developers will not be pushed around without a costly fight; 4) win the fight in a final battle.

Even if the developers are found not to have standing to sue (possibly due to no direct threats, though we can argue otherwise) or their actions are consolidated, the Troll will be required to at least respond in each jurisdiction. The goals of the Troll Blasting Strategy could be accomplished.

This strategy does start litigation, so it definitely has risk.  Though, in the case of Lodsys '078 the likelihood of winning the declaratory judgment action is definitely in the application developers favor.

Requirement for this strategy really to work is 1) funding to write the declaratory judgment action (ideally, I would love to see one of the application developers who has made a ton of money step up to fund this part); 2) a commitment from many other developers to file the action on the same day.

As with any strategy, businesses need to consult their own patent attorney to receive feedback and determine if this minimizes their risk. That risk needs to include what the app developer will do about the next troll that comes along if Lodsys is successful in getting some good money.

These are just my thoughts for discussion, I would love to here feedback.


(FYI - my definition of a troll is any party that intentionally misconstrues the claims of their patent to assert it against another.  They don't have to be NPEs, all that is required is an intentional misconstruing of the claims.  Lodsys has clearly done this.)

Monday, May 23, 2011

In light of Apple's letter...

(Note - The first draft of this post was done prior to Apple releasing their letter to Lodsys.  I have updated it based on that significant development.) 

I think some of the non-attorney advice givers should admit to their followers that they are not qualified to give legal advice when they do not fully understand the underlying legal issues.  I think the Apple letter to Lodsys this morning has undermined some of the more widely distributed non-attorney advisers and, in my opinion, shows that their advice might be wrong.

I am particularly referring to those who basically said "pay Lodsys what they want or go bankrupt".  At least one such commentator, who in my opinion has such a large ego that he believes his non-attorney legal advice is better than good patent attorneys, has also questioned the abilities of patent lawyers to provide real solutions to problems.  Sadly, this person seems somewhat mis-informed and not qualified to comment on legal matters.  A little knowledge is a dangerous thing...

Problems with the comments I have seen is that the authors clearly do not understand that all business decisions with legal risks have to be based on a close examination of the underlying legal risks.  Thus, BE WARY OF NON-LAWYERS GIVING LEGAL ADVICE.  Just because someone knows a little bit about business does not make them a qualified patent lawyer.

About the non-lawyer articles giving advice, they all seem to make major assumptions that are in many cases just plain wrong.  For example, some state that the risk to application developers by Lodsys is independent from how meritorious Lodsys's assertion is.  This is completely wrong; the amount of risk is completely dependent on the underlying claim by Lodsys, as was clearly shown in Apple's letter to Lodsys that was released this morning.

I've tried to explain to such commentators that understanding the underlying legal risk is necessary to gauging the risk to an application developer; thereby allowing the developer to be able to make a well-informed business decision.  They also claim that no application developer can afford to fight Lodsys; this is also wrong (though I agree it may not be the cheapest solution).  Other dubious claims are that signing the license will make everything okay and be the cheapest course of action; again, this is not necessarily true and I highly question whether anyone making such statements has ever done any actual licensing in a settlement negotiation setting.  There are a lot of variables that each business has to understand and evaluate to make the best decision for their business.  Advice based on generalizations can lead to very bad outcomes.

While I have tried to explain this theory of making informed business decisions to such commentators, they dismiss this so that they can send out their headline grabbing statements that basically say sign the license or DIE!  While such commentators may truly be attempting to help the application developers, they are actually doing the developers a disservice by pretending to give knowledgeable advice when it is really short-sighted and may discourage application developers from hiring an attorney to properly advise them of their legal risks. 

Every application developer that is threatened should hire a patent attorney experienced in litigation and licensing, at least to advise them of their options and risks.  A job of an attorney is to advise each client about the options and legal risks associated with taking different courses of action.  Attorneys do not make the decisions, they just try to minimize risk for the client.  The client makes the decisions, and the best decisions are based on a full understanding of the underlying LEGAL risks, not just someone's assumptions about business; in the Lodsys mess, the risks would include the legal analysis of infringement of the patent and costs associated with different actions.

In rebuttal to the SIGN OR DIE options put forth by non-attorneys, there are the other options available to the application developers, each with different inherent risks that need to be explained to the threatened application developers by their LAWYER:

1.  Do nothing.  Basically you would be calling Lodsys's bluff.  In light of Apple's letter, this might not be a bad strategy.  Though, nothing in the letter prevents Lodsys from suing or offers indemnity to the application developers.  As you are aware if you have read my other posts, their patent is shit.  Will Lodsys go all in by filing suit or not?

2.  Send Lodsys a letter telling them that you do not infringe and that any further threats by them may result in you filing a declaratory judgment action against them.  Maybe even threaten filing a suit based on patent misuse or violation of antitrust laws.

3.  File a reexamination.  This costs some money, but I will be posting more info on an invalidity analysis that could help defer such costs.

4.  File a declaratory judgment action.

5.  Enter into a joint defense arrangement with other application developers or Apple.

6.  Agree to License the patents from Lodsys.  Though, this is also not a guaranteed cheap option depending on the license terms and amount of negotiation needed.

7.  (added to differentiate from just taking the license they offered)  Negotiate a Settlement and License with Lodsys.  If an application developer has done their due diligence (some of which is provided on this site), they would have very good leverage to negotiate with Lodsys, considering that most application developers would not infringe their patent and their patent may be invalid.

Whichever option you go with, there will be different costs and risks, application developers should hire a patent attorney with licensing and litigation experience to advise them on each of these.  Please do not take your legal advise from non-attorney commentators that are not qualified patent attorneys.  A threatened party needs to do their due diligence to make an informed decision.


2 Major Issues with Apple's Letter: Analysis of Apple's letter to Lodsys

While the letter Apple sent to Lodsys, and released publicly, is very encouraging in that Apple is trying to assert some pressure on Lodsys, there are some glaring holes that Apple did not address.

1) Apple's letter does not prevent Lodsys from suing an application developer. (And to be clear, Apple likely can NOT prevent Lodsys from doing whatever Lodsys wants to.)  All Apple's letter does is basically argue that the actual infringement is done by Apple, and since Apple is already licensed, Lodsys should go away.  (The letter's analysis is basically the same as outlined in my divided infringement analysis earlier.)

2) Apple did not publicly tell all application developers that they would indemnify the developers. This is what everyone needs, not just a well-written letter.  Hopefully, Apple has made a private commitment to indemnify the threatened developers; although I personally have no knowledge of this.

Without the promise to fully indemnify application developers, the application developers still need to determine what might be their best course of action, as the threat of a lawsuit is still there.  While some support from Apple is nice to see, their letter does not completely negate the legal consequences and risks posed by Lodsys to application developers.  Hopefully, Lodsys chooses to take Apple's advice and tells the application developers that they are no longer threatened.

I have a detailed post about options and advice for developers in the works that I will be posting later today.


Saturday, May 21, 2011

Apple's Interests May Conflict with App Devs

As I was discussing my post about the Fundamental Flaws in the Lodsys Patent with a friend, I started thinking about what possible issues Apple may have that are different than the Application Developers.  Here are some hypotheticals and questions that I do not know the answers to, but I would like to see someone press Apple for an answer to these.

1) Does Apple have any contractual obligations due to their license with Lodsys (or Intellectual Vetnrues "IV" or whomever) not to interfere in the assertion of previously owned IV patents?  There are a lot of huge business issues here at stake if Apple were to help invalidate or defend against an IV owned patent.  If Apple were to step in and defend against an IV patent, what would be the business consequences?  As a contributing member/partner/licensee/whatever of IV, would that cause a conflict of interest with regards to IV? 

2)  Could Apple be sued for contributory patent infringement for being the "mastermind" behind any infringement?  From my analysis earlier, Apple may be the only entity that practices and controls all of the elements of the Claims of the '078 Patent.  It is possible their license to the Lodsys patents does not give them the right to cause contributory infringement.  Thus, if Apple steps in to help the App Developers, might they be identifying themselves as a defendant and possibly admitting that they are an infringer and not the App Developers?  (to be clear, I am not asserting that Apple infringes - I personally do not believe any applications likely infringe the '078 due to non-infringement and invalidity.)    [UPDATE:  Apple, in its letter to Lodsys, pretty much says that they would be the only direct infringer and, since they are licensed, their is no basis for claims against application developers.]

While from the viewpoint of the App Developers this is a straightforward issue of Apple needing to step up, this is likely a very difficult issue for Apple to deal with.  These are some of the issues I thought of that could prevent Apple from taking a position to help the Application Developers.  I do not have any internal information from Apple nor do I have any connection to Apple.  I hope Apple does help out, but I am just putting these questions out there for a realistic business discussion, rather than just demanding that Apple step up.

If anyone has any links or information that could answer any of these questions, let me know.


Fundamental Flaws in Lodsys Patent

In my opinion, there are fundamental flaws in Lodsys’s ‘078 Patent due to Divided Infringement, especially in a typical situation of an independent application developer.  

Divided Infringement means the limitations of a claim require actions by more than one party (company) to infringe the claim.  In a divided infringement claim, the owner of the patent would typically have to assert that the actions (or products) of all of the parties together constitute joint infringement.

However, when actions of more than one party are necessary to infringe a patent claim, U.S. patent law has very strict requirements for the patent owner to establish infringement of the divided claim.  I will start with an explanation of the three general types of patent infringement allowed by U.S. law – direct infringement, induced infringement, and contributory infringement.

Direct Infringement occurs when a single party makes, uses, offers to sell, sells, within the U.S. or imports into the U.S. any patented invention during the term of the patent, without the authority of the patent owner.  For a method claim, there must be a single party performing ALL of the steps of the method.

Induced Infringement occurs when a second party actively induces (encourages, teaches,) a first party to commit Direct Infringement.

Contributory Infringement occurs when the participation and combined action(s) of more than one person or entity cause a patent claim to be infringed.  The patent owner can establish infringement only if the other 
parties operated under the control or direction of the accused infringer (the mastermind).  See BMC Resources v. Paymentech, L.P.  The Court of Appeals for the Federal Circuit (CAFC) stated “This court acknowledges that the standard requiring control or direction for a finding of joint infringement may in some circumstances allow parties to enter into arms-length agreements to avoid infringement.”

Now, we look at the claims to see what party or parties might infringe the claims.  I will address the four independent claims because if those are not infringed, then there is no reason to evaluate any of the dependent claims because those will also not be infringed.  I am not yet diving into a discussion of what “user perception” means, because I think we can arrive at some initial thoughts on infringement without that.  However, igoeIP has some good analysis of some of those issues already posted.

US Patent 7,222,078
What might be used to do the claim element?
1.  A system comprising:
units of a commodity that can be used by respective users in different locations,
Computer or mobile device (which is a computer as discussed herein) Note – I believe the next element requires this to be hardware and not software, thought this assumption will not change my conclusions
a user interface, which is part of each of the units of the commodity, configured to provide a medium for two-way local interaction between one of the users and the corresponding unit of the commodity, and
Computer with a user interface
further configured to elicit, from a user, information about the user's perception of the commodity,
Software on the computer
a memory within each of the units of the commodity capable of storing results of the two-way local interaction, the results including elicited information about user perception of the commodity,
Computer hardware
a communication element associated with each of the units of the commodity capable of carrying results of the two-way local interaction from each of the units of the commodity to a central location, and
Computer hardware
a component capable of managing the interactions of the users in different locations and collecting the results of the interactions at the central location.
A server

Generally, Claim 1 requires a party to make, use, or sell the computer hardware listed in the claim.  To be clear, “use” requires use of the invention (i.e. a party performs all of the claim elements or steps in a method).
Therefore, for direct infringement of Claim 1, a party needs to make, use, or sell the computer, the software, AND the server.  A typical independent application developer does not make, use, or sell the computer and possibly does not even make or use the server. 

For contributory infringement of Claim 1, a party would need to control or direct the accused infringer.  In the recent situation of the application developers, they are the accused infringer but they do not control the device hardware or the servers.  Therefore, a contributory infringement claim against them for Claim 1 would likely be unsuccessful.

The only party with control might be a computer or mobile device manufacturer, such as Apple because they produce the hardware, likely control the app store servers, and seem to have controlled the use of the in-app purchase technology; however, from the reports out there and Lodsys’s own statements, Apple already has a license, so they probably cannot be an accused infringer.

Thus, I do not see how Lodsys could win an assertion that any independent application developer could infringe Claim 1.

As for Claim 54, a similar analysis applies, but the claim requires a direct infringer to make, use, or sell facsimile equipment.  For contributory infringement, a party would have to control or direct the vendor of the facsimile equipment in addition to the other elements.  I do not see how an independent application developer would infringe this claim either.

As for Claim 60, again a similar analysis applies, a party needs to make, use, or sell a computer, the software, and the server for direct infringement to occur.  For contributory infringement, a party would have to control or direct all of those elements.  Again, I do not see how an independent application developer would infringe this claim either.

Moving onto Claim 69.
Claim 69 is a little harder to determine.  However, with a method claim, the party executing the method would typically be the infringer.  Therefore, the method claim may be only assertable against an end-user of a computer if such user executes a method (software, process, etc.) that infringes the claims.  As stated above, “use” requires use of the invention (i.e. a party performs all of the claim elements or steps in a method).

US Patent 7,222,078
What party might do the claim element?
69. A method for gathering information from units of a commodity in different locations, each unit of the commodity being coupled to a remote database on a network, the method comprising:
N/A – for sake of argument, I am assuming the preamble may be non-limiting.
eliciting user perceptions of respective units of the commodity through interactions at a user-interface of the respective unit;
Software in a commodity with a user interface.
generating perception information based on inputs of the users at the respective user-interfaces;
The software of the commodity.
transmitting the perception information to the remote database;
Transmitter hardware or software of the commodity.
receiving the transmitted perception information from different units of the commodity; and
A server connected to a network.
collecting and storing the received information at the remote database.
The server and software at the server.

Even if an end-user executes software to elicit perceptions, etc., a party would also have to perform the steps at the server to infringe Claim 69.  If an independent application developer does not perform the server steps, then there cannot be direct infringement.  From my understanding, for at least the in-app upgrades and purchases, Apple’s servers for their app store manage that.  (someone please correct me if I am wrong about this.)   

For an assertion of contributory infringement, I doubt if any of the developers have control or direction over how Apple manages their app store servers.

If Lodsys tries to assert a theory of induced infringement for Claim 69, they will likely run into the problem of not having a single party that they can point to for direct infringement.  Especially considering the last step is probably completely done by and under the control of whomever owns the purchasing servers (Apple?) and not an application developer.

In conclusion, I believe Lodsys has a very weak patent - I haven’t even gotten to the “user perception” issues (see igoe IP for a start) or the invalidity arguments that could ALSO be made.  Further, I believe the ‘078 Patent is a badly drafted patent that will make it very difficult for Lodsys to assert and win a patent infringement claim against an independent application developer.  Although, even if my analysis is correct, there is no guarantee that Lodsys will not sue an application developer, but there is a good likelihood that anyone who fights Lodsys may win.

Patent Drafting Note -
I consider the divided infringement claims to be an error on the prosecuting patent attorney’s part.  I’ve been writing claims for my clients to address these issues since at least 2005 and I believe any patent attorney that does not take BMC into account while drafting claims is not doing a good job for their clients.  See Lemley for claim drafting suggestions, however the legal analysis cited there regarding joint infringement is not correct due to more recent case law.  If you have paid for a patent to be drafted, you should expect better work than this.

These are just my thoughts on the patent mess that is Lodsys.