Software patents part 2

Picking up where we left off yesterday. Only two more patents to go.




US 6,339,780. Granted patent published 15 January 2002. Filed 6 May 1997.

Claim 37 (Claims 1-36 presumably deleted during examination)

1. A hypermedia browser embodied on a computer-readable medium for execution on an information processing device having a limited display area, wherein the hypermedia browser has a content viewing area for viewing content and is configured to display a temporary graphic element over the content viewing area during times when the browser is loading content, wherein the temporary graphic element is positioned over the content viewing area to obstruct only part of the content in the content viewing area, wherein the temporary graphic element is not content and wherein content comprises data for presentation which is from a source external to the browser.

Another potted summary of the patent, although in this case the actual patent is fairly short. Web browsers at that time often included a little animated icon to indicate that a web page was being downloaded. On a small screen, this is a waste of screen space. Solution, draw animated icon over the main viewing area of the browser while the page is loading, then get rid of it once the page has loaded.

My thoughts on this are remarkably similar to my thoughts on US 5,778,372 aka the 'prioritise important stuff' first patent.

US 6,891,551. Granted patent published 25 July 2002. Earliest filing date 10 November 2000

Claim 1.

1. A method for selecting portions of electronic data on a display device, comprising the steps of:

generating a selection area identifying a first portion of said electronic data, wherein said selection area includes one or more selection handles;

receiving an input from a user associated with said one or more selection handles; and

resizing said selection area responsive to said user input.

OK, this is quite an interesting one and looks rather similar to the method used for selecting text in recent versions of iOS. Indeed the rationale behind this invention was very similar. Clicking and dragging to select text on a computer screen isn't particularly accurate, so lets add resizing handles so that the user can tweak an existing selection box, rather than starting over from scratch if the wrong text has been selected.

Without knowing much about the state of the art back in 2000, I'm not really sure how novel this is. Certainly, the only similar example of a similar system, I can think of is in the far more recent iOS. With regard to inventiveness, my first thought was 'well if you want to resize a selection box, how else would you do it.' Then after a couple more minutes thought, it was clear that there were a number of other ways. For example you could use keyboard cursor keys to manipulate selection box instead of using the resizing handles, or use alternative mouse controls, e.g shift-clicking, to move the boundaries of the selection box.

As I commented in my previous post on the Apple slide-to-unlock patent, the presence of alternatives doesn't necessarily mean that your chosen option isn't obvious but it does make it harder to argue that it is obvious without some kind of steer from the prior art. Also, like the slide-to-unlock patent, I find it difficult to get too worked up about this one. The patent describes a useful invention (arguably more so than slide-to-unlock), which is narrowly claimed and fairly straightforward for competitors to invent around.


So where does that leave us. One patent that I don't honestly feel I can offer an opinion on and two which are - not exactly poster children for software patents as a driver of innovation. One more which I'd quibble about but which I'm prepared to concede does disclose a useful invention. Finally one which looks like it should be lumped in with the 'poster children' at first glance but which doesn't look too bad when considered in a bit more detail.


All in all, not a particularly inspiring bunch but one which collectively doesnt quite deserve the scorn heaped upon it by assorted internet commentators.

Unlocking Innovation

As reported by the IPKat, Apple have been awarded US patent 8,046,721 for 'unlocking a device by performing a gesture on an unlock image'. This is a continuation of US 7,657,849 which was recently rejected by the Dutch courts for being obvious. A key piece of evidence used by the Dutch courts was the Neonode N1m phone which, as shown in this video, can be unlocked by swiping a finger from left to right across the touch screen.

I thought that this was an interesting case for a number of reasons. Firstly, it's almost a textbook example of a 'patent likely to generate ridicule by the general public.' Is this justified? Secondly, if US 7,657,849 was rejected, is US 8,046,721 likely to fare any better? Last but not least, regardless of the merit of the patent it is an extremely narrow patent for a very specific invention. With that said, does it actually matter to anybody other than Apple that this patent was granted?

By way of a quick recap, in order to be granted, a patent has to be (amongst other criteria) both novel and inventive. In other words, the invention disclosed in the patent can't have been previously made available to the public but neither should it be merely a trivial variation on a previously disclosed invention.

Novelty is reasonably straightforward to decide. Check the patent claim, pull out all the features recited in that claim and compare with the previous disclosure (referred to as prior art). If the prior art contains all the features of the claim then that claim lacks novelty. In practice, its a little more complicated than that (and you'd struggle to find a piece of case law that deals with novelty in quite that way) but I think that captures the essence of it.

Inventive step or obviousness on the other hand is rather different and can be extremely difficult to decide. If the patent claim includes features that are not described in the prior art, then the claim will be novel. The question then is whether those extra features add anything to the claim, or whether they're relatively minor things that any reasonably skilled person would come up with as a matter of course after reading or being shown the prior art. Similarly, if there is no prior art at all, then the claim is certainly novel but is not necessarily inventive – it may just be a collection of trivial features that nobody has bothered to try and patent before. However, it will probably be a lot harder to argue that an invention is obvious, if nothing even vaguely like it has been made available to the public before.

The tricky thing about inventive step, is that most things are obvious in hindsight. To properly decide whether something is obvious or not compared one or more pieces of prior art, you need to consider what would be obvious to somebody reading that prior art at the time at the time the patent was filed. This isn't easy to do because it's a necessarily artificial point of view to have to take. Equally tricky, from the point of view of invalidating a patent, can be constructing a reasonable argument that will stand up in court. Arguing that something is obvious because 'look at it - it just is' rarely works. There has to be a valid reason why.

For the Apple 'slide to unlock' patent, in my opinion (for whatever that's worth), the Dutch court got US 7,657,849 right. Claim 1 of this patent reads as follows:

1. A method of controlling an electronic device with a touch-sensitive display, comprising: detecting contact with the touch-sensitive display while the device is in a user-interface lock state; moving an unlock image along a predefined displayed path on the touch-sensitive display in accordance with the contact, wherein the unlock image is a graphical, interactive user-interface object with which a user interacts in order to unlock the device; transitioning the device to a user-interface unlock state if the detected contact corresponds to a predefined gesture; and maintaining the device in the user-interface lock state if the detected contact does not correspond to the predefined gesture.

I strongly suspect that the same Dutch court would also reject US 8,046,721. Claim 1 of this patent reads as follows:

1. A method of unlocking a hand-held electronic device, the device including a touch-sensitive display, the method comprising: detecting a contact with the touch-sensitive display at a first predefined location corresponding to an unlock image; continuously moving the unlock image on the touch-sensitive display in accordance with movement of the contact while continuous contact with the touch screen is maintained, wherein the unlock image is a graphical, interactive user-interface object with which a user interacts in order to unlock the device; and unlocking the hand-held electronic device if the moving the unlock image on the touch-sensitive display results in movement of the unlock image from the first predefined location to a predefined unlock region on the touch-sensitive display.

This is a little bit more specific than the previous claim (and corresponds more directly to the actual iPhone unlock screen) , in that the user has to maintain continuous contact with the screen during the unlock gesture and has to explicitly touch the unlock image to interact with it.

However, in both cases, the only significant difference between the claim and the 'swipe to unlock' gesture used on the Neonode N1m, is the addition of a user interface widget to provide a visual clue to the user that a particular gesture will unlock the phone. Adding such a visual clue certainly makes the phone easier to use but I don't think that adding such a clue is inventive. Arguably, that is a major point of any graphical user interface – to provide visual clues that interacting with the interface in a particular way will have a desired effect on the device running that interface.

On the other hand, without the Neonode prior art it is a lot harder to see how you would set about arguing that either claim is obvious. The same argument about providing a visual clue would still apply but why have that particular gesture to unlock the phone? For that matter, why use the touchscreen at all? Why not just have a physical unlock button? If having a minimal number of physical buttons is important to your phone design, why not press the physical button once to activate the touchscreen and then again to unlock the phone? Or hold down the physical button and perform a gesture with the whole handset, e.g. a flick or a shake (assuming your phone includes an accelerometer). For that matter, if you have your heart set on using the touchscreen to unlock, why not simply designate a number of points on the screen that have to be touched simultaneously to unlock the phone? Both the slide-to-unlock patents specify a moving unlock image, so using a non-moving unlock image avoids both patents.

Having a number of alternative options isn't necessarily enough to make any one of those options non-obvious. However, by the same token, if even a non-skilled person can think up four alternative options for unlocking a phone, then I think it also becomes more difficult to argue that a different option, absent any clue from the prior art, is obvious.

For the same reason, for the hypothetical case, where there wasn't any prior art for unlocking a phone with a touchscreen gesture, I personally wouldn't have any problems with either of these slide to unlock patents. They're far from earth shaking but they do solve a problem in a distinctive and eye catching way, so I can understand why a company would want to try and protect that particular solution to the problem. Yes, they do prevent competing companies from using that solution but neither is it particularly difficult to find alternative solutions that avoid the patents altogether. Slide-to-unlock is very much a nice to have feature than one that would be a serious detriment (or indeed any kind of detriment) to competitors if they couldn't use it. In which case, I would find it hard to really get too indignant about the patents.

America Invents - Part 1

A number of news sites have reported that H.R. 1249, otherwise known as the Leahy-Smith America Invents Act was passed by the US Senate last Thursday (8th September) and has been sent to President Obama to be signed into law.

The America Invents Act included various provisions intended to streamline the US patent system and harmonise it with patent systems operated by most other countries around the world. Probably the most controversial part of the Act, was the move from a 'first-to-invent' to a 'first-to-file' system

Under a first-to-file system, if Alice is the first person to file a patent for an invention she will have the right to that patent. If Bob was working on the same invention before Alice but files his patent after she does, then he will be out of luck – Alice will still have the right to the patent. Under a first-to-invent system it is possible, in principle, for Bob to be awarded the right to be awarded the right to the patent, even though he filed it after Alice. Wikipedia has a helpful summary of both systems.

Moving away from first-to-invent has been widely criticised as giving too much power to large corporations to the detriment of the small inventor. Much internet commentary has focused on the supposed ease with which those corporations will be able simply steal inventions from those small inventors and then, with their greater resources, quickly file a patent, leaving the hapless small inventor with no way to challenge the theft of their inventions.

Put like that, first-to-file does seem terribly unfair. However, in my mind, this 'lone inventor vs the big bad corporation' argument does miss a couple of points.

1. First-to-invent is great in theory but not so great in practice. Any small inventor claiming the rights to a patent will need to instigate interference proceedings against the patent owner. These are basically a court case to decide the issue – and they're not cheap. I read one article (in an extremely reputable IP blog), stating that interference proceedings could cost up to $500,000. Lets assume that figure is wildly exaggerated and is out by an order of magnitude - $50,000 is still an awful lot of money for the small inventor. To me, first-to-invent seems like more of a hypothetical security blanket than a practical deterrent against that big bad corporation.

2. First to file cuts both ways. If a small inventor beats a large corporation to the patent office and files a patent for a new invention first, he/she doesn't have to worry against interference proceedings being launched against him/her, despite the fact that the large corporation would presumably be much more likely to have $50,000 lying around to do just that. And wouldn't that large corporation make a tempting target to approach for a licensing deal?

3. At the end of the day, litigation is expensive. Regardless of whether a patent is granted under first-to-file or first-to-invent, it is far easier for a large corporation to enforce their own patents against a small inventor, to challenge any patents owned by the small inventor in court or, in the worst case scenario, simply to infringe the small inventor patent, knowing that the hapless small inventor will likely not have the money to sue for infringement.

No patent system is perfect and I believe that first-to-file vs first-to-invent actually makes very little practical difference. That being the case, why not have a US patent system that is more in line with systems operated throughout the rest of the world? Having a broadly equivalent set of rules throughout the world is surely a good thing making patents easier to use for everyone, regardless of where they file.

Patent claims - when less is definitely more.

Claims are the most important part of a patent. Normally, most of a patent will be taken up with describing what the invention does and how it works. The claims on the other hand set out the legal boundaries on that invention and define what the owner of the patent can or cannot prevent a competitor from copying or otherwise using.

There is an inherent contradiction in any patent claim. On the one hand, they do need to clearly define the invention so that anyone reading the patent can understand what it is that the patent owner is trying to prevent them from doing. On the other hand, they are normally as general and all encompassing as possible. I think Vroomfondel the philosopher (with apologies to Douglas Adams) summed it up best when he demanded "rigidly defined areas of doubt and uncertainty."

With that in mind, it isn't really surprising that the language used to write patent claims can get a bit contrived. To use a slightly facetious example, imagine two claims for a chair. (If you're a patent attorney, please also gloss over the less than rigorous drafting. Thanks.)

a)   A wooden chair consisting of an upholstered seat, four supporting legs fixed to the underside of the seat and a back support extending generally upwardly from the seat.

or

b)  An article of furniture comprising a seat and at least one supporting leg attached thereto.

Claim a) is pretty restrictive or narrow. With a bit of imagination, it is describing a fairly conventional style of chair. The image that comes to my mind is a kitchen or dining room chair but with a bit of effort (and a generous definition of 'supporting leg'), I can just about stretch that image to include an armchair. However, claim a) will only prevent rival chair makers from making or selling a limited range of chairs. Any competitor that sells a four legged stool (no back support) won't be particularly concerned by this patent . Similarly, competitors selling plastic or metal chairs (not made of wood) have nothing to fear.

Claim b) on the other hand is very general or broad claim. Almost any chair, and many other bits of furniture, will include a seat and one (probably more) legs . Metal, wood, plastic, cardboard - it doesn't matter. The claim doesn't specify a particular material so all materials are covered by the claim. Similarly the claim doesn't specify an exact number of legs. Competitors making three legged milking stools, one legged shooting sticks, or 22-legged designer chairs will all be blocked by the patent.

 Less is more.

- Richard.

What are patents for?

I've seen many answers to this question on various discussion forums. Generally it is answered by asserting that patents are supposed to promote innovation, protect inventors and/or their companies or "promote the Progress of Science and useful Arts." as per Section 8 of the US Constitution.

I would argue that all those answers are correct but that the underlying reason that explains why they're all correct is often missed.

Although not stated explicitly in the legislation, the core concept behind any patent system is a bargain between the inventor and the State. This can be paraphrased as 'you agree to tell the public all about your invention and in return we give you a temporary monopoly on that invention within our borders'. In practice, the requirement to tell the public all about the invention is met by publishing the patent application describing the invention and ensuring that a patent application must disclose enough information that the skilled person can recreate the invention.

This bargain has a number of knock-on effects. By offering an incentive to disclose the details of an invention, patents help to disseminate the knowledge underlying that invention and so 'promote the progress of Science and useful Arts.' Allowing a temporary monopoly on an idea encourages other inventors to 'invent around' the monopoly in the happy knowledge that if they can do so, they too will obtain a monopoly on their new way of doing the same thing. This encourages innovation. Finally, the establishment of a temporary monopoly is of course a powerful aid for the inventor seeking to capitalise on his invention, whether by starting his own company or selling his invention to another company. In that sense, patents can protect the small inventor or company.

On the whole, patent legislation says a great deal about what can and can't be patented, who can apply for them and how one sets about making an application. However, they don't say very much at all about why the legislation has been enacted in the first place, or what it is intended to achieve. For example, the preamble to the UK Patents Act merely states that what you are about to read is intended to establish a new law of patents. Similarly, the preamble to the European Patent Convention simply refers to a desire to "strengthen co-operation between the States of Europe in respect of the protection of inventions", without saying anything about why this protection is necessary.

This is probably because current patent systems have evolved from earlier legislation, so that the rationale behind the system no longer needs to be spelt out. Wikipedia has an interesting article on the history of patent law (http://en.wikipedia.org/wiki/Patent) and provides a good place for the interested reader to start.

- Richard