Minnows and Giants

Giants and Minnows

I was flicking through the BBC news site a couple of days ago and found this article. I was curious to find out what this was all about and so decided to find US patent 7,222,078 and have a look for myself.

This is certainly not a short patent, with 39 pages of drawings and a further 50 pages of description. The abstract isn't exactly a model of clarity and brevity either. So lets turn to the claims. As I posted a while ago on this blog, the claims are the most important part of a patent because they define what the patent is preventing you from doing.

Claim 1.

A system comprising: units of a commodity that can be used by respective users in different locations, 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 further configured to elicit, from a user, information about the user's perception of the commodity, 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, 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 a component capable of managing the interactions of the users in different locations and collecting the results of the interactions at the central location.

Claims 2-53 (yes seriously) all claim various extra bits and pieces added on to the core invention claimed in claim 1. Claim 54 reads:

A system comprising: units of a facsimile equipment that can be used by respective users in different locations, a user interface which is part of each of the units and is configured to trigger a two-way interaction to occur on-line between the unit of the facsimile equipment and a vendor of the facsimile equipment, the user interface being configured to generate information about use of the unit by the user, a communication element associated with each of the units capable of carrying results of the two-way local interaction from each of the units to a central location, and a component capable of managing the interactions of the users in different locations and collecting the results of the interactions at the central location.

OK this is interesting in that it claims a specific kind of system, namely a fax machine, that uses a similar system to that claimed in claim 1.

Claims 60 claims another variation on the general theme of claims 1 and 54 and claim 69 claims a method of using a similar system to that claimed in claims 1, 54 and 60.

I'm not going to pretend to do a full analysis of all 74 claims here but I can try and dissect the first claim. My first thoughts were that this has been done before and that it sounds very much like the kind of help system of the kind that's built into Microsoft Office software – Word 2003 for example. So lets break down claim 1 into its separate parts and see how well that fits.

Units of a commodity that can be used by respective users in different locations,

A software package would fit that definition and I would argue that 'units of a commodity' is general enough to include parts of that software package too.

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. 

The Word 2003 help system provides for two way interaction between a user and the software package. To be honest I'm struggling to think of a user interface that doesn't allow for this – isn't that the point of a user interface?

and further configured to elicit, from a user, information about the user's perception of the commodity, 

Well the Word help system certainly does this – a given help page usually has a 'was this useful' option at the bottom.

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, 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,

If I remember correctly, the Word 2003 help system does indeed report any response to the 'was this useful' dialog back to Microsoft aka a central location. It's debatable whether 'a memory' and a 'communication element' are limited to actual hardware or whether they would also include software equivalents. Given that the owners of this patent are trying to enforce it against a smartphone app developer, they clearly think that software equivalents are fair game, so lets go with that.

and a component capable of managing the interactions of the users in different locations and collecting the results of the interactions at the central location.

This is where my analysis gets a little more speculative, although (as we'll see later) there's a much bigger elephant in the room anyway. The Word 2003 system isn't all stored on the end user's computer – some of the help files are stored remotely and delivered over the Web. I would guess that the web based help files are also updated in response to received feedback via the 'was this useful' dialog. I would therefore argue that this web based system is a component 'capable of managing the interactions of the users in different locations'. We've already seen that the system is capable of collecting interaction results at a central location.

Therefore, at first glance, it does look like the Word 2003 help system meets all the requirements of the patent claim. This is useful for giving a picture of the kind of things covered by the patent but isn't very helpful otherwise because I'm basing the analysis on a software package released in November 2003. However, the patent we're discussing (US 7,222,078) has a priority date of August 1992. What is a priority date and why is it important?

Under certain circumstances it is possible to file a patent application that claims priority from an earlier application. That means that the new application is treated as having the same filing date as the earlier application. For example in the UK, it is possible to file a first patent application and then, within the next 12 months, to file a second application based on the first that claims priority from it. This is useful because it allows inventors to file an early patent application for an invention that may not be fully worked out, or may need substantial development funding before it will be commercially viable. They then have 12 months to carry out further development work, raise venture capital and generally decide exactly what they want to do with their invention before having to spend more money on their patent application.

However you only get one go at this. It isn't possible to chain applications together, for example by waiting another year and then filing a third application based on the second that also claims priority from the first.

The US system is somewhat more involved and as I understand it, under certain circumstances it is quite possible to chain applications together in this way. This is exactly what we see with US 7,222, 078. Although the patent itself was filed in December 2003, it claims priority from another application filed in September 1997, which in turn claims priority from another application filed in May 1994. The May '94 patent claims priority from a still earlier patent but was filed under slightly different rules (a continuation-in-part rather than a continuation). I'm not going to go into the details of the rules here but the upshot is that only part of the invention described in the May '94 patent will be entitled to that earlier priority.

In summary, US 7,222, 078 will have a priority date of at least May 1994. This is important because only publically available information from before that date can be used as prior art, ie. material that can be used to argue that the patent shouldn't have been granted. Therefore, although US 7,222, 078 was filed in December 2003, Word 2003 (which was released before that date) cannot be used as prior art because US 7,222, 078 is treated as though it were filed in May 1994 (and possibly even earlier).

So if we want to demonstrate that US 7,222, 078 shouldn't have been granted, we will ideally need to find evidence of a system that was in use before 1992 that includes all the features set out in claim 1. The good news is that since US 7,222, 078 was filed after June 1995, it only lasts for 20 years from its priority date. So at worst, it will automatically expire in 2014 and may even expire next August.

Back in 1992, the invention described in US 7,222, 078 may well have been cutting edge fax machine technology and quite deserving of a patent. It's unfortunate that the patent was drafted widely enough that 20 years on it is being enforced against inventors working in rather different areas of technology. In fact this case rather reminds me of the the BT hyperlink patent, where an old, broadly drafted patent was optimistically asserted to cover much newer technology.

The BT patent was found not to be infringed by the World Wide Web and the issue of prior art didn't need to be addressed, although some was found. It is unclear what will happen with the Lodsys patent.