One relatively new feature of the American intellectual property system is the “covered business method review” procedure run by the USPTO. Pretty much everything that happens in front of the U.S. Patent Trial and Appeals Board (PTAB) is public and available from ptabtrials.uspto.gov. A case in which I became involved as an expert witness in April 2014 was recently decided. I thought that readers might be interested to learn about the process. If you type in Case No. “CBM2014-00125” (or 126, 127, 128 to see the dockets for the related patents) at the ptabtrials site you can find everything (about 140 documents per case, many duplicated and/or with duplicated sections).
The dispute began in December 2013 when Paid, Inc. sued eBay for infringing four patents on calculating shipping costs (example patent; amended complaint). In parallel with defending the lawsuit in federal court, eBay in May 2014 filed four petitions for covered business method review (example; each CBM review has its own parallel set of paperwork). Each included a declaration from me (example). Paid, Inc. responded in August 2014 (example). In September 2014 the PTAB decided to institute review of the four patents (example). Paid, Inc. responded to that in January 2015 (example) with a single declaration from its own expert (link) and one from an inventor (link). eBay’s attorneys deposed the expert (transcript) and inventor (transcript) and filed a reply in April 2015, with a supplemental declaration from me. An oral hearing at which attorneys argued was held in June 2015 (transcript). A final decision was issued in September 2015.
Note that this is not necessarily the end of the legal road. Decisions of the PTAB that are adverse to patent owners can be appealed to a Federal Circuit Court.
[Sidenote/Opportunities Missed Department: In 1995 I was working for a large publisher and had the following conversation with management:
- Me: “You guys own newspapers all around the country with classified ad sections. How about giving classified ad buyers a free web listing and having a server aggregating classified ads from all around the nation?”
- Them: “How would that work?”
- Me: “Classified ads are pretty much free to display on the Web so you might want to look at the readers as giving us valuable content alongside which we can sell display ads. Once the ad is on the web we can let people offer the item at a fixed price or let the server run an auction for them. Because people won’t always be buying locally we can have a system that lets buyers and sellers report on or review each other.”
- Them: “That doesn’t sound very interesting.”
- Me: “I actually already built a working prototype. Do you want to see a demo?”
- Them: “Sure.”
- *** Demo ensued ***
- Them: “Still not something we’re interested in doing.”
- Me: “Do you mind if I take the code and run it on my photo.net site?”
- Them: “We don’t care. You can do whatever you want with it.”
Thus was born the photo.net classifieds, described in this chapter of Database-backed Web Sites. (You might ask why I built a complete functional system before getting the green light from management. This was before the era of CSS and JavaScript and thus I was able to build the whole system in three days.)]
The whole idea of “business method” patents is ridiculous. I don’t know why most of them don’t fail for obviousness. Who could ever think of such a brilliant idea as calculating shipping costs based upon your zip code? Only a Leonardo or an Edison could come up with such an astounding breakthrough! This surely ranks with quantum mechanics and special relativity as one of the great intellectual achievements of the past two centuries. A 20 year government monopoly for the first genius to think of this is small reward. If Mickey Mouse deserves copyright protection for 120 years, then surely such a “Mickey Mouse” method deserves equal patent protection for at least that long.
This legal wrangling over immaterial(?) rights to commercial procedures (recipes?) is way above my head, but the very description makes me regurgitate & wonder ?how? could anybody stand the inventors=keepers infantility of it. Rather than fan the flames with your expertise, Philip, you should have appeared in the courtroom in typical Burning Man-garb, with fake tats ‘n all, sat up a sign THE DOCTOR IS IN, and offered the participants FREE SPANKING on site, if the Court allows it. Case closed, everybody A-OK.
Upton Sinclair’s assertion was “It is difficult to get a man to understand something, when his salary depends upon his not understanding it!”
We might paraphrase that for Dr. Weaver as “It is difficult to get a man to understand something is obvious, when his salary depends upon his not understanding it!”
So, as per your “Sidenote/ Opportunities Missed Department,” in 1995 you single-handedly defined (if not invented) [proto-]
• Craigslist—online classified ads, later the death of newspaper Classifieds
• eBay—buy now for a set price, or bid for a lower one online auction model
• sidebar display ads tied to main Classified ads (or any tagged) content—Google’s first business model
• basic computer-aided review/ reputation/ customer satisfaction feedback model
(I might have missed an invention or two). So, you have a prior-art case, aren’t you going to call your lawyer to have her call Craigslist’s, eBay’s & Google’s lawyers? Somebody has to teach’em a lesson.
BTW. was it any surprize, that your large publisher employer felt overwhelmed by that veritable smørgasbord of newspaper ops refinement/ development options? I would.
But I absolve you. Having been exposed to a telex machine when young, I could not get out of my mind the advantages of perforated tape (Baudot-code) text entry-, -reentry, and, YES! mechanically-readable data storage capabilities. Then cassette tapes came along & I thought, why not put telex tape inside, make it easier to handle. Only took me additional 5? years to realize that it didn’t need to be perforated, analog “Morse code equivalent” would do even nicer. Then another couple of years until digital data tapes appeared, by which time I already discovered computers, and better storage methods ;-))
@ianf All those ‘inventions’ were at least fifty years old 1995.
All the ideas in twenty-first century business method patenting were already obvious when As We May Think was published in The Atlantic by Vannevar Bush in 1945.
They were obvious or well known in tech circles long before that.
I think it is a complete injustice that the Paid patents were all invalidated. How can the same office that issued all 5 of the patents decide that now they are all invalid? Not to mention, there are NO qualified patent examiners for making any decisions/reviews for applying either the Alice case and/or the additional guidelines from July. It is a complete manipulation by big companies, and I hope that in the end the inventors prevail. It is a very sad day for the US when patent protection in China is better than here. Sad and disappointing to say the very least.