The Patent Jungle

I’m in Atlanta this week to attend the Sixth Sakai Conference.

In a previous post I reported on a discussion of the “Blackboard patent.” This post is based on a session later that day.

The topic was “Patent Defense Mechanisms for Open Source Communities” with the announced speakers as Eben Mogen and Joseph Hardin.

Moglen is the well-known law professor featured in the previous post. Hardin, from the University of Michigan, is one of the key figures in the Sakai community.

I must confess that while I am an ardent fan of open-source, and find licensing issues fascinating, patents leave me cold. I never thought of trying to get one during my many years at IBM Research, even though I knew management desired patents and rewarded those who got them. I recall once a colleague mentioning that he had spent most of 1996 preparing what proved to be an unsuccessful patent filing, and saying to myself, “What a waste. Get a life.”

I was about to abandon the session when I noticed that only a few people were present. I then realized I had an opportunity to hear Moglen expound on patent issues for well over an hour, and so decided to sit in and take copious notes, as this seemed a great opportunity to observe his thinking and report on it to a wider audience.

The session was very informal. There was no formal presentation. Audience members just posed questions or made a statement to start a mini-discussion. Hardin spoke as a member of the audience, not as moderator or panelist. Eben was accompanied by his colleague, Richard Fontana, counsel to the Software Freedom Law Center.

I won’t try to distinguish them in my notes. I’ll just report the audience questions as “Q” and their replies as “A,” though Moglen did most of the talking.

It was an educational and inspiring session, taking almost 90 minutes.

Here, then, my notes.

Q: I find patents a distraction. They are getting in my way. There is much FUD, but I understand we have a responsibility to provide leadership in this area, so we must deal with patents.

Q: What are the kinds of things our community might do?

A: I divide patent holders into two classes.

First are the “trolls.” They use patents solely for revenue. They cannot be deterred by cross-licensing. Their interests are calculable but not deterrable.

Second are those who use patents to cross-license, or for leverage. They may be deterrable.

We need to distinguish trolls and “business.” Universities might be targets of trolls. While trolls usually go after large businesses, universtity pockets may be deep enough to attract their attention.

Stepping back, in terms of open-source what would a lawyer advise?

Trolls not deterrable. Patent re-examinations have emerged as a way to discourage trolls.

For deterrable parties, corporations try to build up their own patent portfolio.

This not a useful option for open-source communities. The way the patent system is set up doesn’t favor collaboration. Collaboration and sharing, the exchange of information, is publication.

The current patent system reflects a 19th century view of the “isolated genius” who comes up with an invention in the laboratory, working on their own.

Any invention “on sale” is not patentable.

Any open-source is “finished” when it is first distributed. It is considered “on sale” even though no monetary payment is required. Thus open-source is not patentable.

It is not practical, for example, for Sakai to see patents. It would be difficult.

It is also the case that coporations that develop patents have an attorney working hand-in-hand with the inventor to prepare the patent filing. But the current reality is that the legal representation available to the open-source community is too limited to provide the talent needed to write patent claims. It is the drafting of claims that is crucial to a successful patent application.

Q: So, as we go forward, we don’t know what claims are out there. But the FUD factor is a real concern.

A:You could detach an “army” to re-examine every patent that is filed. But this would take a large group of people.

In the trade there is a beliefe that you shouldn’t study the patent filings of others, since you might learn you are infringing. So it is risky to know, safer to not know.

However, the free and open-source community believes it is better to know. For example, the Free Software Foundation has looked into Samba, knowing that it is based on Microsoft file formats and conventions.

Moglen had discussions with Sakai and Mellon. He guesses they will figure out a way to study these issues and keep information “safe.”

The part of the open-source world that includes the largest corporations acts as a “tooth fairy.” Their provide contributions that add great value. They make these contributions to work around issues, but do so in silence and never advertise just what they are doing, but they want to make contributions that will make open-source safer so their customers won’t have to worry.

The big companies can do this. It is harder for open-source communities. Big companies will continue to contribute to ensure safety.

Moglen gave an example. Someone called him early one morning and gave him a seven-digit phone number. He realized it wasn’t a phone number but a patent number. It was their way of providing a gentle hint that he should investigate this patent, that in doing so he might learn something of value to his work.

Companies will help if they can.

Q: I’m responsible for architecture. Do I have to worry?

A: Linux once said he didn’t want to know. This was a mistake, may even have helped give SCO some ammunitIt is better if we do know.

It is a waste of time for individual developers to learn patents. You can’t sue individual developers; they have no money. If order to attack you have to sue projects or distributors.

Q: (from me) How about suing end users? For example, if you buy a Ford, then if there is a problem you expect that GM might sue Ford, but you don’t expect GM will sue you. But the situation seems to be different in the open-source world. Is this unique to open-source, or a concern shared by others?

I gave the example of a suit a few years ago about intermittent windshield wipers.

A: Software is easy to duplicate, hence vulnerable to attack, as to copy is to infringe. This is not the case for industrial items such as windshield wipers.

Suing your own customers is poison. For Microsoft to sue free software stack is to sue its customers.

There are ecological forces. But threats of patent enforcement are much more effective in the world of software. It is much easier to scare people, so for example, people may buy your company’s code just to reduce the threat of you suing them.

Patents on autos are very precise, but in software the situation is much more ambiguous. Software patents are based on vague claims.

Moglen: I’ve spent 37 years as a computer program (This is true. Moglen started his career as a systems programmer at IBM, then went on to law school. He knows what it is to code.) I expect that almost all software infringes one or more patents.

The real problem is threats, not lawsuits.

Threats more harmful than patent enforcement. Threats chill the environment.

Q: Blackboard always speaks with ambiguity. “Defanging the FUD” is the hardest part.

A: The current system has obscure boundaries. If you think in terms of real estate, it’s as if no one knows where one property ends and another begins.

The process of patent re-examination forces the holder to give its interpretation of its claims. The patent office (PO) will re-examine the claim. The first step is to reject all the claims. But the US PO is now very pro-applicant. The applicant gets a hard time at first, so the applicant files very broad claims, which are then narrowed at times.

Blackboard will have to make the argument explaining its claims. If Small (Blackboard’s counsel) wants to limit the patents to “role-based” then he will have to explain.

Those who file for a patent re-examination get to choose the time and the place.

Re-examination works as follows. We get to file, to make the first statement to the patent examiner. He then talks with the claimant. Though in theory the examiner is supposed to keep a record of all discussions with the claimant, in practice the record keeping is minimal, along the lines of “spoke with claimant.”

We have filed for re-examination of the Blackboard patent (recall that Moglen’s group is representing Sakai in this challenge). The PO has 90 days. BB could respond. If they do, we are entitled to respond.

We believe there will be a re-examination, since there is a prima facie case. The claims are vague, Blackboard will have to justify them.

The Blackboard patent has two independent claims.

D2L (Desire To Learn, the defendant in the suit filed by Blackboard) has also applied to the PO, under a new process, “inter partes.” This is more expensive, costing $8000.

Re-examination is one-time only. But in this new process D2L will have options to respond.

PO will have two different re-examination requests going on at the same time.

Q: Even if they (Blackboard) loose, they will have won, due to FUD factor.

A: I plan to leave BB in a bad condition. There is a price that must be paid, and we will require they pay a price. We can’t afford to leave BB in an unharmed state.

(This clarifies the forcefulness I noted in Moglen’s comments during the lunchtime debate. This is more than a debate to him — much more.)

Here began a new thread, with Moglen’s initial comment that “As a law professor, I find university counsels quite crappy. The are timid, frightened, and easily intimidated. Academic lawyers tend to defer. Universities are risk averse.”

He went on to give an example based on Columbia’s experience with Peoplesoft. He said that Columbia had tried to engage with Peoplesoft while the Oracle acquisition was in progress, and that he had argued that this made no sense. Harvard had spent several millions on Peoplesoft and then had to spend several millions more just to get out. He feared Columbia would do no better, and events proved him right.

(While I was in Indianapolis several weeks back another senior university person said his school had engaged with Peoplesoft, and just the look in his eye made me realize he thought this had been a very wrong move — it was probably one of the reasons his university had been drawn into open-source.)

Q: What is the time frame for re-examination. What happens if we lose?

A: PO has no interest in dragging its feet. So PO will move quickly.

You can have multiple re-examinations. So you hold your aces in your sleeve. You don’t use your best ammunition first. The claimant has to fire all its ammunition first. But if you lose, you will know their strategy, and you can then ask for another re-examination so long as it raises a new issue.

Moglen gave an example of the Microsoft patent on the FAT filesystem. In fact there were six patents. Microsoft went after the manufacturers of flash memory, the kind of memory used in digital cameras for example, asking 25 cents per device, up to $250,000 per manufacturer.

The Public Patent Founcation (Dan Ravicher’s group, which often works together with Moglen’s group) filed for a re-examination. All the claims were thrown out, but Microsoft, exercising its skills at lobbying and influence in Washington, managed to get the patent reinstated, but has yet to seek royalties.

Moglen has waited 18 months, and does plan to go back for re-examination if necessary.

So if Blackboard gets qualified success, Moglen will go back and file for new re-examination.

Blackboard can’t get injunction while the patent is under dispute.

Patent has to be de-monetized. Blackboard has one patent, but it is “locked in jail.”

Non-profits have been sued. To be a university is not to be safe from a suit.

I then posed the following question.

Q: I’ve been taking notes, and I plan to plan to publish them, as I think that others who were unable to attend this meeting would like to know what you said, but I undersand you are representing Sakai in this effort, and I wonder if anything you have said here today falls under attorney/client privilege, in which case, at your discretion, I won’t publish these notes.

Eben then spent several minutes in an animated — and to me very inspiring — discussion. It was worth the trip to Atlanta just to hear this part.

He said that this was a public forum, and nothing said in it was privileged. When he had to do so, he informed all parties in a meeting or on a call that the discussion was privileged. He also said that he always tried to protect his work product.

However, he and Fontana were here as “lawyers on behalf of the community.” This was Public Interest Law.

He worked many years ago for Thurgood Marshall. He learned from Marshall, by example, that one person could indeed make a difference. It was Marshall who, almost single-handedly, created the notion of Public Interest Law as we know it today. For example, when Marshall went into a town seeking redress for his black clients, all the work he did was in full public view. He had nothing to hide. All knew what he was there for.

Eben has written about Marshall; see A Vigil For Thurgood Marshall.

Returning to the Blackboard discussion, Moglen said that the patent examiners were aware of free software in that it constitutes “prior art” that is “on sale.”

He then said that it was in the best interest of the community to keep records, including design documents, manuals and “tar balls” (the informal name for the format in which free software is commonly distributed). It was especially important to record dates.

He said we developers should be building libraries of free software artifacts, but that he understood that careful documentation of the development process is not rewarded in the open-source community.

As he put it, “Hackers don’t like to preserve dates.”

He said we need to preserve the history of our projects, the best we can, keeping documents and preserving dates.

As the talk was drawing to a close, I did not record all the comments for the next few minutes. They were mostly about details that were consistent with the prior views, and I was getting a bit tired.

Moglen said in conclusion that this was “a moment to celebrate, not mourn. If we stand together we will beat this thing.”

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