Cautiously Optimistic

Last month, we were hit with two new patent troll cases. With each, there was no warning, no offer to license - just a lawsuit. And, who are these "aggrieved" plaintiffs? In the first case, the litigant is a company called "Exponential Systems". Exponential alleges that our Sun Grid Compute Utility infringes their patents. So who is Exponential? Are they creators of competing technology? Do they invest in R&D? Do they create products and jobs that add value to society? Hard to tell, but I doubt it. All we know is that the original patents were owned by a company called "Hemisphere II Investments", which then transferred the patents to Exponential for the grand sum of $5.

Seriously. We are being dragged into expensive litigation and this is all we know about the other party. Even more frustrating is that one of the primary goals of our Sun Grid is to drive down the cost of computing. I've written previously about this tax on innovation. This is a real example.

And, as to the second case, let me ask - what do Sun, Google, Metacafe, Sony and 15 other companies (including several in the internet "adult entertainment" business) have in common? If you answered that all were recently sued by a patent holding company called "Antor Media" you would be correct. And what do we know about this plaintiff? Little except they have a history of suing everybody. In this specific case, no Sun products are even identified in the complaint. Yet, we now need to hire outside counsel and plan a visit to the Eastern District of Texas where this case has been filed.

You may believe that these are isolated examples. However, during the same time Sun was sued in these two cases, eight mobile phone companies, four major internet retailers and three computer companies were all sued for infringement by patent holding companies.

If this sounds like a waste of time, money and resources – it is. But, there have been some recent changes, both legislative and judicial, that make me feel at least a slight bit optimistic for a change.

On April 18th of this year, a bipartisan and bicameral bill was introduced in Congress entitled the "Patent Reform Act of 2007". This legislation builds upon legislative proposals introduced last year. Included in this proposed legislation is:

-A limitation on patent venue (commonly referred to as “forum shopping”).

-The creation of a post-grant proceeding to cancel a patent after issuance. This is in recognition that the current methods for challenge - PTO reexamination or litigation - are not effective nor efficient.

-Changes that will make it more difficult to demonstrate willful infringement, a finding of which is subject to treble damages. It also limits damages to a reasonable royalty for the invention itself instead of the value of the product into which an invention may be incorporated. (This one would go a long way toward making these litigations less attractive.)

-Creation of a first to file system. Interestingly, the U.S. is currently one of the only countries that grants patents to the first to invent instead of the first to invent and file.

Recently, the U.S. Supreme Court also announced two important decisions that provide more immediate relief. In Microsoft v. AT&T Corp. the court ruled 7-1 that "golden masters" shipped by Microsoft for installation on computers made and sold abroad are not "components" pursuant to 35 U.S.C. Sec. 271(f). Under U.S. patent law, no infringement occurs when a product that is the subject of a U.S. patent is made or sold in another country. It may be an infringement of a foreign patent, but U.S. patent laws do not apply. The exception is Section 271(f) which was enacted in 1984 in response to a case involving (of all things) shrimp deveining equipment. The defendant in that case conceded that it was prohibited from making or selling the infringing equipment in the U.S., but successfully argued that there was nothing in the law that prevented it from making the components for the equipment in the US and then having the assembled abroad.

In the current case, Microsoft conceded that it infringed AT&T patents related to digital speech compression. But, they objected to AT&T's claim that a golden master should be considered a component under 271(f) and Microsoft, accordingly, liable for foreign damages.

In siding with Microsoft's position, the court has brought some rationality into the world of software patents. Indeed, many in the software industry have been watching this case closely and considering whether (assuming the original decision was unchanged) it would be a reason for moving development efforts offshore.

The other decision - KSR v. Teleflex - was important because the court made it easier for the PTO and defendants to challenge questionable patents consisting of combinations of elements on the basis of "obviousness". It is a basic tenet of patent law that things that are "obvious" are not subject to patent protection. As the court noted in an earlier case, allowing an obvious combination of components "withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men." But what is obvious is not always clear, especially in the case of a claimed invention consisting of a combination of elements. In KSR, the dispute was whether it was obvious that electronically adjustable automobile pedals would replace mechanical ones. The Federal Circuit applied what is known as the TSM ("Teaching, Suggestion, Motivation") test to determine whether the electronically adjustable pedal configuration was obvious. Under this test, the court seeks written evidence - for example, scholarly works or something published – to support a finding of obviousness.

In overturning the lower court decision, the Supreme Court unanimously recognized that the TSM analysis was too limiting: "In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends."

The result of this decision, is that there will be increased scrutiny as to what truly constitutes innovation. And, indeed, just last week, in a case involving competing manufacturers of electronic toys, the Court of Appeals of the Federal Circuit relied on KSR to find that the underlying patent was invalid as obvious.

Some commentators are suggesting that the KSR case will hurt hardware and software companies that combine and change components to create new products. Sun is just such a company. Our R&D investment has lead to innovation in hardware, software, storage, servers and microprocessors. We leverage the best of all of these as components when engineering new systems. So, yes, the commentators might be right, but only to the extent that we were focused on creating revenue from litigation of questionable patents - instead of satisfying customers.


Hello Mike, Thanks a lot for your plain English discussion of the important Patent reform Act and also the pair of patent cases' real world implications. Great stuff to see these through your eyes. Cheers, Kempton

Posted by Kempton on May 14, 2007 at 11:04 PM PDT #

A 'first to file' system scares me because it seems to chip away at prior art. Suppose I invent a patentable programming idea, and choose to convey the idea to the world in code under some open source type license. Further since I am a hobbiest and I have neither the time nor interest nor expertise nor awareness to file a patent. Now along comes someone else and sees what I did and they patent it. Under the 'first to file system' they get the patent, right? and then can control what I do with what I created. As for prior art can't they just claim independent invention and that they filed first even though that may be after my publication? What am I missing? How is 'first to file' a good thing? How 'first to file' avoid injuring those that do not patent what they invent?

Posted by Todd Olson on May 15, 2007 at 02:53 AM PDT #

I agree with Todd Olson. First to file is not where we want to go. We do need reform in our patent system, but first to file should not be part of it.

It is good to hear Sun is doing the right thing in order to turn around its business. Hopefully, Microsoft will follow suit. The SCO Group is a lost cause and will put themselves out of business because of their litigation strategy. Lawsuits are not the answer, and neither are patents.

For that matter, be aware the the US Supreme Court has not sanctioned software patents. And if you read the ruling on AT&T vs. Microsoft you will see that they seem to be asking for a case to rule on them, and likely say that software patents are not valid.

Posted by TemporalBeing on May 15, 2007 at 06:11 AM PDT #


No, if you have published your invention, that invalidates a patent filed at a later date, even under the 'first to file' system. Your publication still counts as prior art. Someone else inventing it but not publishing it is never prior art, neither under 'first to file' nor under 'first to invent'.

'First to file' only means that if several people apply for a patent on the same invention, and the invention is not un-patentable for other reasons, then the first to file is the one granted the patent.

One of the motivations for having a patent system, is to get inventions \*published\*. Inventing something and keeping it secret does not benefit the public. And when you patent something, that becomes published and available to others for studying, and for using when the patent expires. 'First to file' is a way to force people to actually apply for a patent as soon as possible, instead of keeping their invention secret and applying late.

I believe that 'first to file' would actually make it easier for prior art to invalidate patents. If invent something on February 1, publish it on March 1, and someone applies for a patent on the same invention May 1, it doesn't help them if they claim that they actually invented it on January 1. Your publishing on March 1 is prior to their application on May 1. Under 'first to invent', their claim of inventing it on January 1 would invalidate your prior art (at least if they can back up their claim with evidence).

Posted by Thomas Bellman on May 15, 2007 at 07:31 AM PDT #

TemporalBeing: Usually you are recommended by your corporate lawyer never to study any patents because of the risk of getting sued. Thus patents don't serve the 'public'. (Who is this 'public' you refer to by the way?) Then, does patents serve the inventor? In case the inventor is one person or a small group, I think that they will earn more money if they are good at keeping secrets. Of course, when you keep secrets you will have difficulties talking to anybody else, because they might be a spy. Thus you are less likely to make good discoveries. So, to become a successful inventor you need to act honestly against a larger community. But when you share your thoughts openly to solve a problem, it is pretty reasonably to assume that at least one other person made the same discoveries as you did. How should own the patent and why? Are there really any proofs that the 'public', or the inventors actually benefit from a patent system at all?

Posted by Kristofer Pettersson on May 25, 2007 at 04:01 AM PDT #

"First to file" doesn't mean what Todd Olson and others above think it means. Under "First to file", if you thought of the concept yourself before the filing date, and you have proof of that, you are safe (in the versions I'm aware of) - especially so if you have published. What it does protect against is the fact that in the US system when someone files a patent they can claim to have invented it up to twelve months prior to filing - and have the patent run from then. There have been a couple of cases where it's been widely suspected that someone saw someone else's idea, rushed to patent it, and lied about the invention date in order to get the patent.

Posted by Matthew Brown on June 03, 2007 at 06:53 PM PDT #

Nice article, educational too. By the way, it is always good to be cautiously optimistic.

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