Posts Tagged ‘software’

Pizza and Patents – Throw in a Beer, and it’s a Party

Monday, 22 August, 2011 09:38 Written by Mark Malek 1 Comment

By: Mark R. Malek

Ameranth Wireless has filed a patent infringement lawsuit against several large pizza chains claiming that the online and mobile ordering infringes two patents (source). The patents in questions are U.S. Patent Nos.  6,384,850 and 6,871,325.

I have not read the complaint, but I can only imagine that many of these large pizza chains use similar software for their online ordering and/or mobile ordering system.  You wouldn’t think that online ordering software for pizza is that complicated.  Do you want a specialty pizza?  No?  Then what size pizza do you want, and what do you want on it?  Seems as thought it must be a bit more complicated than that in order for these systems to read on the above referenced patents.

I took a look at Claim 1 of the ‘850 patent.  This claim is directed to a system that generates and transmits menus.  The system includes a first menu that has menu categories, a modifier menu, a sub-modifier menu, and software for generating a second menu from the first menu and transmitting the second menu to a webpage.  I guess that means that the first menu, the modifier menu and the sub-modifier menu are things that the pizza chain employee manipulate to generate a second menu that is visible on the website. Claim1 of the ‘325 patent is extraordinarily similar to Claim 1 of the ‘850 patent, but has a few extra limitations.

I’ve never personally ordered pizza on-line.  I do it the old fashion way.  Call the pizza delivery guy on my way home so that the pizza is delivered right as I’m walking in the door.  My suspicion is that if all of these pizza chains are named in the same suit for infringing the claims of the same two patents, then they all use similar software.  I would suspect that the software licensing agreement that is in place includes an indemnification clause that indemnifies the end user from an infringement claim.  That does not mean that the end user is not technically liable for infringement.  It only (usually) means that, in this case, the software company that wrote the software will defend the company using the software, and will be liable for any damages that might arise as a result of an infringement claim.

I could be completely wrong here.  Each of these pizza chains may have written their own software.  Maybe the only way to display a pizza menu on a website or a mobile device is to manipulate a series of menus to generate another menu.   All I know is that I like to eat pizza.  I suspect that this case will either settle quickly, or that a software company will be dragged into the case.

 

Angry Birds Developer Latest Invitee to the Lodsys Patent Infringement Party

Wednesday, 27 July, 2011 09:34 Written by Mark Malek 0 Comments

By: Mark R. Malek

This story hits a little close to home because of my love for the Angry Birds game.  I don’t think it is the game that gets me so much as it is the noises that the birds make as they are rocketed from a sling shot to perform all manner of acrobats while destroying a structure in hopes of making a green blob explode.  It doesn’t hurt that the games are generally free through the Android Marketplace or the App Store.

We are so confused by this Patent Troll

Going past the free levels, however, is where the problem allegedly lies.  Although many of the levels are free, there are some additional levels that are available for purchase by users.  According to this story on Benzinga, which sites another story on The Telegraph, the Lodsys patent allegedly includes claims that cover a method for allowing players to purchase new levels inside its mobile application.  (See also this story on CBR)

Of course, the common theme that I have been seeing in many of these stories is that there is a problem with allowing patents on software – let the comments begin.  I, of course, do not see any problem with patents on software.  Many software developers disagree, but I do not believe that they are applying U.S. patent law when making their arguments.  In short, a U.S. patent, and patents in general, are meant to provide protection on the functionality of an invention.  So what is wrong with protecting the functionality of a piece of software?  The software field is so crowded, that any allowable software patent application is generally focused on a very specific function, and the manner in which that function is carried out.  We got a bit (a very little bit) of direction from the United States Supreme Court in their Bilski decision a little over a year ago (see my story on Bilski here), and with that, we were presented with the “machine or transformation” test, but were also told that this test was not the only test out there.  I guess we will have to wait and see what other tests there are, but we know that “machine or transformation” does not stand alone.

I was pleased to read the article regarding this matter by my good friend Gene Quinn, founder of IPWatchDog.com, and one of the teachers of the patent bar review course presented by PLI.  Gene points out what I believe is the bigger issue – the patent troll.  Gene notes that a patent troll generally gets the process started by finding an attorney willing to take a patent infringement case on contingency, and filing a complaint riddled with broad allegations.  That is part of the reason why the story’s regarding this Angry Birds infringement matter are a bit vague.  We are not too sure what aspect of the Angry Birds game is allegedly infringing.

We will have to wait and see how this, and the other Lodsys suits, turns out.  It will be interesting to see if Apple keeps out of this somehow.

USPTO Issues Press Release to Propose Three Patent Processing Tracks

Friday, 04 February, 2011 08:42 Written by Mark Malek 7 Comments

By: Mark R. Malek

In a press release, the USPTO has announced that it is seeking public comments on a proposed new patent examination initiative that provides Applicants greater control over the speed with which their patent applications are examined.  The three patent processing tracks include:

Track I – Prioritized Examination;

Track II – Traditional Examination under current procedures; and

Track III – An Applicant controlled delay for up to 30 months prior to docketing for examination for non-continuing applications first filed in the US.

Under Track I, the Applicant is required to pay a fee to prioritize examination of their application.  The USPTO noted that the fee is to relate to the cost to the agency to maintain the pendency of other applications so that the Track I applications can be prioritized.  Comment is sought from the public on the technologies where prioritization would most likely be useful so that he USPTO can determine an appropriate amount of the fee. The goal for Track I cases is to provide a first Office Action on the merits within four months, and final disposition of the case within 12 months.  All I have to say about that is WOW!  This is kind of one of those “I’ll believe it when I see it” kind of deals.  First Office Action in four months?  I highly doubt that will be the case.  I have had cases where I do not even receive a filing receipt in the mail for four months.  Does someone at the USPTO actually want me to believe that an application can possibly clear the Office of Initial Patent Application Examination, get assigned to an Examiner, a search and examination be conducted, and an Office Action transmitted….all within four months?  Here’s the bigger questions – what happens if the Applicant does not receive their first Office Action for, let’s say, eight months?  Is there a refund?  This has continuously been my problem with many of these types of programs.  Where is the accountability?

With respect to Track III applications, the hope seems to be that Applicants who have filed their applications, but who still question the value of their technology, may just decide to abandon their applications prior to examination.  That’s a win-win for the USPTO.  They get to collect a filing fee, and do not have to perform an examination in return.  I am actually not too disturbed by the Track III plan.  It will probably aid in eventually reducing the backlog.  I would like a bit more details though.  The real bulk of the cost for the Applicant is not the filing fee.  Instead, and I am the first one to admit this, the significant cost is the legal fees associated with drafting the application.  Maybe Track III applications could be a bit more like a provisional patent application, i.e., does not need as much detail as a utility patent application, thereby making it somewhat more inexpensive for the Applicant.

With respect to Track II cases, it seems as though nothing changes there.  I do wonder whether Track II cases will be affected by an influx of people wanting to file Track I cases.  My crystal ball tells me, however, that there may be a good number of folks that file both Track I and Track III cases, thereby freeing up Examiner time to review Track II cases.  My concern, however, is the time when the Track III cases come up for examination, i.e., 30 months from when this program goes into effect.  Will the examining corps be ready for the surge of cases that is sure to land on their desks at that time?

I hate that I sound so critical of the USPTO when they are coming out with new programs.  I want to be very clear that I am very impressed with how proactive Director Kappos has been in trying to solve this problem.  Just the fact that he took this job knowing and acknowledging the backlog problem speaks volumes of the man.  It is so refreshing and I am so encouraged that the USPTO management team is finally onboard with trying to fix this problem.

Regional Patent Offices by Technology – Why Not?

Wednesday, 12 January, 2011 14:58 Written by Mark Malek 2 Comments

By: Mark R. Malek

After an in depth TacticalIP.com investigation, we broke the news to you that the United States Patent and Trademark Office planned to open its first satellite office in Detroit in 2011.  The article sparked a conversation between myself, our friends at http://www.generalpatent.com/ and our friend Patrick Anderson at http://www.gametimeip.com/.  During the conversation, which can be found in the comments of our article, I suggested that it might be interesting if the PTO would consider opening satellite offices based on various technologies.  I just want to take the opportunity to expand on that thought, and maybe set out four different locations that the PTO could start off with – I hope Director Kappos will consider my idea.

1.       Detroit – automotive related patent applications.

As you know, Detroit will be the location of the first satellite patent office.  As noted in our previous article, Detroit is an area of the country that has been hit rather hard by the recession.  The move to open a satellite office in Detroit will surely bring several needed jobs to the area in fields that engineers can consider an alternate, but still related, career path.  My thought would be to limit the Detroit satellite office to automotive based patent applications.

2.     Silicon Valley – software related patent applications.

We all know that the birthplace of a great deal of software based technology is in Silicon Valley, CA.  Of all the various industries that were hit hard by the recession, software, and other internet related technologies was not hit as hard as others.  With the great success of Google and Facebook, there are several software developers that are still employed.  But for every Google and Facebook, there are about 1000 other startup companies (probably a very conservative number) that fail.  These companies are full of very smart and very creative software engineers that would make a great addition to the patent examining corps.

3.     Brevard County, Florida – aerospace related patent applications

No need to call me out on this one.  Yes, I have a particular bias here.  This is exactly where the main office of Zies Widerman & Malek is.  It is no secret, however, that Cape Canaveral is the home of the space shuttle, and that, for reasons that I still cannot comprehend, the shuttle program has been shut down with no other plan to replace it with other manned space flight.  Say what you want about the shuttle program, but you cannot deny that the technology that has come out of research conducted in space has advanced our world.  With no manned space flight in the immediate future, the loss of the shuttle program has resulted in a cut of about 7,000 jobs.  This could not have come at a worse time for Brevard County, Florida.  The loss of jobs, combined with the crash of the real estate market (which hit Brevard County particularly hard) has really hit this local economy.  A good number of these people that have lost their jobs in the aerospace industry due to the dismantling of the space program would be very well qualified to examine aerospace related patent applications.

4.     Texas – oil and petroleum related patent applications

Similar to Silicon Valley and the software industry in general, the petroleum industry has not been hit nearly as hard as other industries during the recession.  With that in mind, however, there is a high concentration of highly skilled petroleum professionals in the area.  There have, undoubtedly, been layoffs in the industry as many companies have taken the recession as a time to tighten their belts.  Therefore, I suggest that a regional patent office in Houston, Texas would be well suited to examine the bulk of patent applications in the petroleum field.

This is a pie in the sky idea and, admittedly, I have not really thought it through.  I have not done a cost analysis and, to tell you the truth, the same criticisms that I had regarding the opening of the satellite patent office in Detroit would likely apply to my ridiculous idea.  All I wanted to do by posting this was to provide Director Kappos with some input as to how satellite offices, in my humble opinion, can be very effective.

USPTO Announces Opening of Detroit Satellite Office – Could This Really Help With The Patent Backlog?

Sunday, 19 December, 2010 12:36 Written by Mark Malek 10 Comments

By: Mark R. Malek

In a press release dated December 16, 2010, USPTO Director David Kappos announced plans to open the first satellite office in Detroit Michigan in 2011.  The new office will create 100 new jobs in its first year.

The press release indicates that the opening of the satellite office will help reduce the backlog of patent applications which stands, right now, at about 700,000 applications.  That’s right – not a typo.  There are currently 700,000 pending U.S. Patent Applications.  This is usually all I need to say when my clients call me upset that, in some cases, their applications had been pending for about three years and there still has not been a first office action.  I wish that I could figure out some sort of rhyme or reason behind patent application pendency rates.  Broadly speaking, software applications take a long time, and some mechanical technology applications breeze right through.  Just last year, I had a utility patent application directed to a simple mechanical technology issue in four months.  That’s a record for me, but I had nothing to do with it.  I received a notice in the mail and was shocked that it was a notice of allowance.

I have been trying to work on some strategies to move things along at the PTO, but, as you can imagine, it takes while to see if these strategies work.  One thing that has been working for us to advance prosecution of patent applications is to conduct Examiner interviews.  This is a great technique to get to the heart of the Examiner’s thinking.  Examiners and Attorneys simply swapping office actions and amendments without ever talking is not generally productive.  Sometimes, these interviews can be conducted on the phone, but as the manager of DC Area Office of Zies Widerman & Malek, Gene Quinn, writes in person interviews can generally be even more effective.

Back to the PTO Office in Detroit, I wonder if this strategy will be effective in reducing the backlog.  It seems to me as though the money could be even better spent simply hiring more examiners to serve in DC.  Better yet, why not spend some of the money on more advance search systems to provide the examiners with better tools to more efficiently examine patent applications?   On a positive note, however, this move will give a boost to a geographical region that so desperately needs it.  I suspect that many new examiners will be hired from the automotive industry and, as we all know, more examiners means more applications being processed.  I expect this move to be positive, but I just think that we can make even more headway by spending that type of money elsewhere.

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