brentashley

My friend and mentor Greg Vincent (no link yet) sent me a link today to this article that explains how an upcoming Supreme Court case could make it extemely difficult in the future to invalidate patents due to obviousness.

The gist is that the test would be interpreted to require prior publication of discussion of the obvious feature to prove obviousness.

But opposing a patent on those grounds can be harder than it sounds. According to the U.S. Circuit Court of Appeals, the U.S. Patent Office or the challenger of a patent must produce written documentation that someone suggested the substance of the patent before it was filed. That test “forces litigants to search through reams of technical papers for a document in which someone, somewhere, bother to state the obvious”…

The quagmire thickens…

A link from Techdirt to my recent post about the Script Tag Remote Scripting patent has got a lot of comments, mostly variations of the theme “I’ve just patented the definite article ‘the’ – you all owe me a squillion bucks!”.

In case you’re unclear on it, as some commenters seem to be, the point is that this is not just an application, this patent has been *granted*. The patent holders if they so choose can now start wielding injunctive power over those who use this technique.

Of course it’s not quite as simple as that. One commenter with more than a smattering of working knowledge of the patent process points out a couple of useful observations:

Without commenting on the actual validity of the patent, two observations: First, the issued patent claimed priority to a provisional “placeholder” application filed on Dec. 1, 2000 – this means that the patent examiner at the PTO evaluated the merits of the patent application based on what was available before that date. If the examiner did not find evidence that anyone was “doing” what the patent applicants claimed as of Nov. 30, 2000 or earlier, he or she would have come to the conclusion that it was novel. This seems to be shored up since Brent said, “Numerous people have ‘discovered’ and exploited the value in using the script tag to get code and data on the fly since that time.” (emphasis added)

Second, Brent wrote, “It’s an obvious logical use of the functionality for which it was designed.” Apparently, this is where the obviousness assault should have been levied by the examiner. It could be that this is where any successful invalidity challenge in court would occur. Brent correctly notes that the patentee “has the upper hand;” an issued patent is presumed valid and can be found invalid in the face of clear and convincing evidence that it was not novel or it was obvious. This is a tough standard to meet, but note that more than one patent litigation has terminated very early if there is clear evidence of prior art which renders a patent invalid.

So, it could well be that this particular patent will not survive if challenged.

I responded with a comment of my own:

I think the obviousness argument in this case comes down to this:

If the patent process is working properly, the general public’s first understanding of this technique should come from reading the patent itself, since it is the expression of a unique unobvious patentable idea.

The fact that this particular technique is in wide use and has been for 5 years means that either:

a) everyone’s knowledge of the technique has come from the revelations contained in the patent

or

b) it was obvious enough than many other people arrived at the same technique without having been exposed to the patent.

If b), then the patent should be found to be invalid by reason of non-obviousness.

As a person who has taken great interest in this field since 1998, I contend that b) is how it played out.

I had absolutely no knowledge of this patent application until late October 2006, however I had working knowledge of the technique since as far back as 2002, and many people claim to have independently arrived at this technique during that time. I haven’t polled all of them but of the ones I have spoken to, none claim any foreknowledge of this patent.

Let me iterate that I’m not aware of any instances of this patent being enforced against anyone using the script tag transport technique. Again, I’d be happy to hear from anyone who is aware of any such efforts, and anyone who can come up with prior art to go along with the obviousness argument should anyone decide to try to enforce this patent. As Peter Bromberg points out, we wouldn’t want to see this turn out to be yet another patent parking fiasco.

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Update: the patent attorney who commented as quoted above (Gary Gex from MorganLewis) points out that the patent holders don’t hold injunctive power without a court granting injunction through litigation at which time the patent would be subected to the scrutiny we desire.

After seeing the NTP vs RIM case, where despite the patents being provisionally tossed out by the court, RIM was forced to pay 613 Million, I’m firmly of the opinion that the simple threat of injunction is too often enough to enjoin many a small company from continuing to practice a technique covered by even a phenominally poor but nevertheless granted patent.

Douglas Crockford points out at the top of his blog that a patent was applied for in 2001 and awarded late last year covering using the <script> tag as a remote scripting transport.

Numerous people have “discovered” and exploited the value in using the script tag to get code and data on the fly since that time. It’s an obvious logical use of the functionality for which it was designed.

Of course, once a patent is granted, arguments about obviousness or originality can fall on deaf ears – the patent owner has the upper hand and it could cost you a lot to prove your case in court.

Beyond the obviousness, inspection of both the client and server side code for the patent reveals that most of it is copied directly from my JSRS library, published a year earlier, not only without attribution, but claiming it as their own “NetGratus Remote Scripting”. Of course, my license is very liberal, allowing reuse for pretty well anything, however it does say:

The only thing you can’t do is to restrict anyone else from using it however they see fit. You may not copyright it yourself or change the rules I have set on how it can be used.

So, if you’ve been asked to license this patented technology, I’d be happy to have a look at the particular code being offered for licensing and see whether it violates my copyright by restricting you from using it without a license.

Also, as Danne Lundqvist, veteran script tag advocate points out to the latest person who has independently had the script tag revelation, there are many reasons that the script tag is an inferior transport layer, not the least of which are the security implications as I pointed out just this week

The upshot is this: the script tag hack’s days are numbered. If you can change to XMLHttpRequest while waiting for JSONRequest, by all means do.

It’s rather ironic that the appearance of this patent will have had exactly the opposite effect that a patent should: Rather than the patent informing the world about a hitherto unknown invention, explaining its workings and contributing to the furtherance of knowledge, the patent in this case informs the masses of people who came up with the same obvious idea that they had better stop using this technique in order to reduce their liability regarding the injunctive power of the patent holder.