Could it take a patent dispute over how prison walls are constructed to provoke an overhaul of the U.S. patent system?
It could if three groups – the Electronic Frontier Foundation, Public Knowledge, and Consumer Reports publisher Consumers Union – have their way. The three filed an amicus curae brief to a federal appeals court, arguing that ambiguous patent claims should be invalidated, with claim terms interpreted “as narrowly as possible by the courts to protect the public,” as the EFF put it announcing the brief September 20.
“This Court historically required claims to have a distinctive meaning that provides the public with readily determined notice and that precludes judges from imposing a meaning in litigation,” the brief argued, saying further on that making patent applicants state exactly what they mean is efficient, fair, and has been the law since at least the Patent Act of 1870.
The case involves a suit against AWH Corporation by Edward H. Phillips for patent infringement and trade secrets theft over $5 million, a case involving the design and manufacture of prefabricated wall modules for prison cells. A federal court in Colorado threw out the claims against AWH and an original three-judge appellate panel upheld the ruling, but the appeals court has agreed to rehear the case.
In language that evoked arguments made in comparable cases, such as that of the adult Internet’s challenge to Acacia Research Corp.’s streaming media patent group known as Digital Media Transmission, the amicus brief said strict enforcement of “the stringent definiteness standard” by the courts and by the U.S. Patent Office would not invalidate all existing patents or reject all future patent claims.
“Language is routinely understood to have a discernible meaning when addressed to particular audiences, such as skilled artisans… [m]oreover, whether claims have a discernible meaning to persons of ordinary skill in the art circularly depends on (or at least is affected by) the ‘correct principles’ for claim construction that are adopted by the courts,” the brief said. “By clarifying the correct principles, this Court will minimize ambiguities of meaning to skilled artisans and thus will better assure that specific claims will have a discernible meaning without resort to litigation.”
"Aggressive patent holders are using vague patent language to cause havoc in the software and Internet fields," said EFF staff attorney Jason Schultz, who organized the group’s Patent Busting Project taking aim at what it deems frivolous patents. "We're asking the court to rein in these claims by limiting their scope to only those things clearly laid out in the patent itself."
“I couldn’t agree with it more,” said New Destiny/Homegrown Video chief Spike Goldberg – who co-leads an adult Internet challenge to Acacia’s DMT patents with VS Media chief Greg Clayman – about the EFF/Public Knowledge/Consumers Union filing. “It’s definitely a step in the right direction in terms of the kinds of patents companies like Acacia are looking to enforce.”
Indeed, the EFF said announcing the amicus brief that Acacia “in a recent example” sent universities and colleges around the U.S. over 4,000 “patent demand letters… claiming its vaguely worded patents cover all known methods of streaming pre-recorded educational lectures over the Internet.
“Were the appeals court to rule that such vague patent claims are invalid or must be interpreted narrowly,” the EFF continued, “the threatened universities and colleges could defend or dismiss these lawsuits with far greater ease.”
Acacia executive vice president Robert Berman was unavailable for comment before this story went to press.
Clayman said the amicus addressed “the exact loophole that the patent system has. I’m glad to see there are people stepping in to put a stop to it. Most interesting is that the groups are based on fighting fraud against the consumer.”
The amicus brief was filed on behalf of EFF, Public Knowledge, and Consumers Union by students and faculty members of Washington College of Law’s Glushko-Samuelson Intellectual Property Law Clinic. Assistant director Joshua Sarnoff said in a statement that the case in question might be the most important patent case ever decided.
“Claim meaning is the name of the game in patent law,” Sarnoff said, “and the [appeals court] has the chance to lay down clear rules to determine claim meaning that will benefit society.”
Goldberg said that, when all is said and done, instances such as the EFF/Public Knowledge/Consumers Union filing make things look “bleaker and bleaker” for parties like Acacia. “The art that they practice is coming to an end,” he said. “More and more people are getting sick and tired of being extorted. It’s not a matter of how but really a matter of when people like Acacia will be stopped.”
Or, people like a tiny, little-known Texas outfit throwing baseball a patent infringement brushback pitch – a lawsuit filed earlier in September over the technology by which Net-savvy baseball fans enjoy live computer simulations of major league baseball games, condensed video presentations in which games are edited to the key plays, and searchable video with which a baseball fan can retrieve clips of specific plays from specific games.
“[We] had no other option remaining to protect its intellectual property,” said Dr. David Barstow, founder and president of DDB Technologies, which is suing MLB Advanced Media, the operator of baseball’s popular MLB.com Website. “While we tried to reach a negotiated resolution, it just has not happened. Litigation was the option of last resort, but we still hope MLB will do the right thing. The infringing technology is central to the way they operate. I cannot understand why they would not want to ensure their ability to continue to use the technology.”
DDB accuses baseball of rebuffing a DDB licensing term offer in March 2002, charging also that MLB Advanced Media began offering different text, graphics, and video services online using the DDB technology without DDB permission anyway.
