If you’ve ever set your email account to send out an I’m on vacation and you’re not auto-response, you might have just dodged a bullet. The U.S. patent office granted IBM a patent on an “out-of-office electronic mail messaging system” that is indistinguishable from the vacation auto-responder that’s been baked into every email platform on the planet for the past 20 years.
Asked about EFF’s criticisms of the patent, an IBM spokesperson said that “IBM has decided to dedicate the patent to the public.” The company notified USPTO today that it will forego its rights to the patent.
In an EFF blog post, Daniel Nazer gives a run down of the ways that the patent office screwed up while reviewing the patent application. First, patents are not supposed to be issued for obvious uses of existing technology or, particularly, for so-called innovations that are actually commonplace practices for which no one had bothered to file an application. That’s simply a major fail on the part of the patent office employees responsible for the bogus decision.
Second, granting the patent directly contradicts a U.S. supreme court ruling – the Alice decision – that says that abstract ideas that can be implemented on any generic computer aren’t eligible for patents. The patent examiner on the case was aware of that, but, as Nazer writes…
At one point, the examiner did reject some of the application’s claims under Section 101 of the Patent Act (which is the statute the Alice decision applies). But IBM overcame the rejection simply by arguing that the patent’s method was implemented in computer hardware. In January 2013, IBM noted that “it was agreed [between IBM and the patent examiner] that the rejection … under 35 U.S.C. § 101 could be overcome by reciting that a hardware storage device stores computer readable instructions or program code”.
This fiasco ended well because IBM is a big company with a reputation that’s worth far, far more than a undefendable patent. But if, instead, patent office employees had granted it to a typical patent troll – companies that exist only to extort settlements from small businesses that can’t afford to defend themselves – the effect could have been devastating.
The Air Force can now defend Earth without fear of trolls.
Doing the job that the patent office should have done in the first place, the U.S. supreme court stepped up to the plate and swatted down a long line of patent trolls. In an unanimous opinion issued today and written by justice Clarence Thomas, the court said that an Australian company, Alice Corporation, can’t take a common, centuries (millennia?) old financial practice – using a middleman to keep both parties honest – and claim a patent on it just because it’s being done on a computer…
There is no dispute that a computer is a tangible system…or that many computer-implemented claims are formally addressed to patent-eligible subject matter. But if that were the end of [it, a patent] applicant could claim any principle of the physical or social sciences by reciting a computer system configured to implement the relevant concept. Such a result would make the determination of patent eligibility “depend simply on the draftsman’s art,”… thereby eviscerating the rule that “‘[l]aws of nature, natural phenomena, and abstract ideas are not patentable’ ”.
Alice sued a foreign exchange company, CLS Corporation, because it had the obviously insane idea of doing its work on a computer without asking permission.
That’s the essence of what the worst patent trolls do: take a common idea or process, and use a computer to implement it. Then, they either find an existing patent that sorta talks about something similar or they submit an impressive looking but more or less impenetrable patent application and wait for the federal patent office to rubber stamp it. At that point, it’s a hunting license to prey on companies or, even, consumers who will pay a substantial but affordable sum upfront, fearing the expense of defending a law suit or the risk of losing.
The court declined to open a vast new frontier for patent troll claims. Akamai, of course, isn’t a troll – it uses its patented technology to good effect – but it was trying to make the case that a partial (and thus, under law, allowable) duplication of a method it developed was actually an infringement because Limelight told customers how to complete the missing steps themselves. That was no different, Akamai said, than if it had been copied whole in the first place.
A method patent claims a number of steps; under this Court’s case law, the patent is not infringed unless all the steps are carried out…(a “patent covers only the totality of the elements in the claim and … no element, separately viewed, is within the grant”). This principle follows ineluctably from what a patent is: the conferral of rights in a particular claimed set of elements.
Had Akamai’s position been upheld, then the predatory bar could have gone wild and brought lawsuits against any two or more companies or consumers that were doing things that, taken together, looked anything like a patent – dubious or not – held by a troll.
There was no dissent or alternate views offered: the nine justices – left wing to right wing – spoke as one.