Patents Michael I. Shamos, Ph.D., J.D. Institute for Software Research

Patents Michael I. Shamos, Ph.D., J.D. Institute for Software Research
School of Computer Science Carnegie Mellon University LAW OF COMPUTER TECHNOLOGY FALL © 2018 MICHAEL I. SHAMOS

WARF v. Apple (Fed. Cir. Sept. 28, 2018)
WARF (Univ. of Wisconsin) sued Apple in 2014 for patent infringement At trial in 2015, the jury found Apple liable for $234 million, increased to $506 million with royalties The judge found the patent valid The judge awarded WARF $841,000 in costs Apple appealed In 2018, the Federal Circuit upheld the finding of validity but REVERSED the jury verdict of infringement “because no reasonable juror could have found infringement based on the evidence presented during the liability phase of trial.” LAW OF COMPUTER TECHNOLOGY FALL © 2018 MICHAEL I. SHAMOS

Nature of Patents Based on the “intellectual property” clause (“authors and inventors” “writings and discoveries”) Unlike copyrights, patents do protect implemented ideas (not pure ideas), underlying processes and methods of operation – things copyrights expressly do NOT protect Patent term is shorter (20 years), but patents are much more difficult (and expensive) to obtain and retain than copyrights Independent creation is a defense to copyright infringement (copying is required), but not to patent infringement (copying is not required) LAW OF COMPUTER TECHNOLOGY FALL © 2018 MICHAEL I. SHAMOS

Purpose of Patents Encourage technological innovation by rewarding inventors Allow society to benefit (build structural capital, a repository of technical knowledge) Natural justice theory: “Justice gives every man a title to the product of his honest industry.” John Locke, Two Treatises on Civil Government (1690) LAW OF COMPUTER TECHNOLOGY FALL © 2018 MICHAEL I. SHAMOS

Rewarding Inventors Pay them Buy out invention Pay royalties (Soviet Union) Allow them freedom to exploit the invention In the U.S., confer a monopoly for 20 years The contract or “compact” theory: You tell us all about your invention We protect your ability to make money LAW OF COMPUTER TECHNOLOGY FALL © 2018 MICHAEL I. SHAMOS

Patent History Patents date back to the Industrial Revolution Pennsylvania issued patents before the U.S. was formed U.S. Patent Office founded: 1790 Patents issued through October 30, 2018: 10,117,370 Total patents issued per week, 2018: ~6000 Internet-related patents issued per week, 2018: ~1600 Software patents issued so far: >700,000 LAW OF COMPUTER TECHNOLOGY FALL © 2018 MICHAEL I. SHAMOS

Parts of a Patent Specification Must tell how to make and use the invention Usually background (prior art) + need for the invention Claims One or more statements defining what the inventor regards as his invention(s) Written in highly stylized language (which we can call “patentese”) that looks similar to English Each claim is its own “mini-patent.” Infringing any one claim infringes the patent LAW OF COMPUTER TECHNOLOGY FALL © 2018 MICHAEL I. SHAMOS

Automatic Mattress Selection System
U.S. Patent 6,741,950 ISSUED MAY 25, 2004 LAW OF COMPUTER TECHNOLOGY FALL © 2018 MICHAEL I. SHAMOS

ADMINISTRATIVE DATA

After issuance, IBM was embarrassed into withdrawing this patent
LAW OF COMPUTER TECHNOLOGY FALL © 2018 MICHAEL I. SHAMOS

What is Patentable? “Whoever invents or discovers any new and useful 1. process, 2. machine, 3. manufacture, or 4. composition of matter, or 5. any new and useful improvement thereof, may obtain a patent therefor …” 35 U.S.C. §101 If none of these 5, it’s not patentable. LAW OF COMPUTER TECHNOLOGY FALL © 2018 MICHAEL I. SHAMOS

What is Not Patentable? Unimplemented ideas, e.g., “an anti-gravity machine” Laws of nature: E = mc2 Natural phenomena, substances Printed matter Mathematical formulas: Purely mental steps FORMERLY, “methods of doing business” LAW OF COMPUTER TECHNOLOGY FALL © 2018 MICHAEL I. SHAMOS

Extra Requirement of Non-Obviousness
“A patent may not be obtained … if the ... subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.” 35 U.S.C. §103 LAW OF COMPUTER TECHNOLOGY FALL © 2018 MICHAEL I. SHAMOS

What’s Obvious? Conventional transformations and operations on objects: “Negative rules of invention” changing size substituting a new material making an apparatus portable omitting parts, moving parts around Combining references Need either “suggestion to combine” or combination of well-known techniques to produce an expected result LAW OF COMPUTER TECHNOLOGY FALL © 2018 MICHAEL I. SHAMOS

Obviousness Obviousness is not a subjective standard The examiner cannot reject a claim because he thinks it is obvious or that it seems elementary A reference to the prior art MUST be furnished Documents are required, such as patents, journal articles, textbooks, etc. LAW OF COMPUTER TECHNOLOGY FALL © 2018 MICHAEL I. SHAMOS

Inventions and Prior Art
PATENTABLE VALID PATENT INVALID (ANTICIPATION) INVALID (OBVIOUSNESS) OBVIOUS BASED ON PRIOR ART UNPATENTABLE PRIOR ART LAW OF COMPUTER TECHNOLOGY FALL © 2018 MICHAEL I. SHAMOS

The Patent Process Search, e.g. U.S. Patent and Trademark Office Application Specification Claims Examination Comparison with “prior art” Amendments are allowed But no “new matter” Issuance (term = 20 years from filing date) Maintenance fees during life of patent Enforcement (patents can be found invalid in litigation) LAW OF COMPUTER TECHNOLOGY FALL © 2018 MICHAEL I. SHAMOS

Patent Applications Pursuing a patent application is called “prosecution” Only people admitted to the Patent Office Bar can prosecute patents for others Application is assigned to an examiner Examiner performs a “prior art” search Prosecution is a negotiation between PTO and applicant clarity of specification, arguments over obviousness, wording of claims Usually takes 9 months to 2 years, often much longer Application can be amended, but no “new matter” can be added LAW OF COMPUTER TECHNOLOGY FALL © 2018 MICHAEL I. SHAMOS

What is a Patent? “Every patent shall contain … a grant to the patentee … of the right to exclude others from • making, • using, • offering for sale, or selling the invention throughout the United States or • importing the invention into the United States.” 35 U.S.C. §154 (Term: 20 years from application date) LAW OF COMPUTER TECHNOLOGY FALL © 2018 MICHAEL I. SHAMOS

PATENT TRIAL AND APPEAL BOARD
U.S. Patent System U.S. SUPREME COURT (Judicial Branch) PATENT SYSTEM IS FEDERAL ONLY APPEAL BY PETITION Can declare issued patents invalid COURT OF APPEALS FOR THE FEDERAL CIRCUIT APPEAL AS OF RIGHT U.S. DISTRICT COURTS (91) U.S. PATENT AND TRADEMARK OFFICE (Federal Executive Branch) PATENT TRIAL AND APPEAL BOARD PATENT INFRINGEMENT CASES PATENT APPLICATIONS PATENT EXAMINERS (2000)

Who Owns a Patent? Only humans can be inventors For a corporation to own a patent, it must get it from a human being, often by written agreement Employer Non-inventive employee Employer may have a “shop right” Specifically inventive Employer owns specific invention Generally inventive Employer owns all inventions pertinent to his business LAW OF COMPUTER TECHNOLOGY FALL © 2018 MICHAEL I. SHAMOS

2017 Top 10 U.S. Patentees 2016 Stats 1. IBM (9043) (1, 8090)
2. Samsung (5837) (2, 5521) 3. Canon (3285) (3, 3665) 4. Intel (3023) (6, 2793) 5. LG Electronics (2701) (7, 2430) 6. Qualcomm (2628) (4, 2925) 7. Google LLC (2457) (5, 2842) 8. Microsoft (2441) (10, 2410) 9. Taiwan Semiconductor (2425) (9, 2288) 10. Samsung Display Co. (2273) (12, 2273) RED indicates a U.S. company Other rankings: Apple (11), Amazon(13), Toyota (14), Ford (15), Oracle (43), Facebook (50 – 660 patents) SOURCE: IFICLAIMS.COM LAW OF COMPUTER TECHNOLOGY FALL © 2018 MICHAEL I. SHAMOS

Impression Products, Inc. v. Lexmark (Sp. Ct. May 30, 2017)
Lexmark sells printers and toner cartridges In the Lexmark “prebate” program, users received discount on cartridges if they return them to Lexmark after use Lexmark also sells cartridges outside the U.S. Lexmark owns patents on its cartridges Impression Products refills Lexmark cartridges and re-sells them Lexmark says: (1) prebate cartridges were sold illegally to Impression; and (2) importing cartridges sold outside the U.S. is a patent infringement LAW OF COMPUTER TECHNOLOGY FALL © 2018 MICHAEL I. SHAMOS

Impression Products, Inc. v. Lexmark
The District Court found that Impression sold and imported products infringing numerous Lexmark patents Impression relied on the “patent exhaustion” doctrine (which is similar to the copyright “first sale” doctrine): a sale of a patented product “exhausts” the patent owners rights and the purchaser may resell (or import) the product freely Impression appealed to the Federal Circuit, which upheld the District Court, amicus briefs filed. It found: Restrictions on resale are enforceable Sale abroad does not grant permission to import LAW OF COMPUTER TECHNOLOGY FALL © 2018 MICHAEL I. SHAMOS

Impression Products, Inc. v. Lexmark
Impression appealed to the Supreme Court, which reversed the Federal Circuit on May 30, 2017, 8-0 “A purchaser buys an item, not patent rights. And exhaustion is triggered by the patentee’s decision to give that item up and receive whatever fee it decides is appropriate ‘for the article and the invention which it embodies’.” “[T]he right to exclude just ensures that the patentee receives one reward—of whatever amount the patentee deems to be ‘satisfactory compensation’.” Courts are unfriendly to restrictions on resale, which interfere with commerce LAW OF COMPUTER TECHNOLOGY FALL © 2018 MICHAEL I. SHAMOS

Major Ideas To be patentable, an invention must be new, useful and non-obvious A patent application must teach those skilled in the art how to make and use the invention (the specification) Every patent must contains one or more claims defining the invention Each claim is its own mini-patent and can be infringed separately from every other claim of the patent Infringement is determined by reading a claim “on” an accused device or process If any claim is infringed, the patent is infringed Infringement is making, using or selling the invention or method Patent term: 20 years from the date of application

Patents Michael I. Shamos, Ph.D., J.D. Institute for Software Research

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Patents Michael I. Shamos, Ph.D., J.D. Institute for Software Research

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