

Supreme Court rules against Microsoft in major patent case - cwan
http://www.techflash.com/seattle/2011/06/supreme-court-rules-against-microsoft.html

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haberman
To me, the scariest part was:

 _U.S. solicitor general, which represents the federal government, filed a
brief in support of i4i, saying that the U.S. Patent and Trademark Office
should not be second-guessed by a jury._

The Patent and Trademark Office absolutely should be second-guessed by a jury.
Judges and juries are the only sanity-check the whole system has at this
point!

~~~
hamner
Agree completely, had just copied the quote and was about to paste it to say
the same thing. When we consider all the BS patents that have been rubber-
stamped by the PTO, this is a very scary proposal.

~~~
steve-howard
You had the quote on the clipboard but you checked for prior art before
posting? A rarity on the internet indeed.

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reader5000
It's so ridiculous theyre essentially patenting generic syntaxes for
representing documents that anybody "skilled in the art" would come up with in
5 minutes. It would have been much better for small developers if Microsoft
won this. It's funny how this is treated as a win for the little guys, who
can't afford massive patent portfolios nor litigation battles like Microsoft.

~~~
petegrif
"It's so ridiculous theyre essentially patenting generic syntaxes for
representing documents that anybody "skilled in the art" would come up with in
5 minutes." now - sure but then? - apparently not as extensive litigation
demonstrated. And that 'non-obvious' nature back then - that's kinda the
point, hindsight effect is a powerful thing

~~~
kmfrk
There is however the argument of prior art, so it still takes a little brain-
racking to do.

Patents are more about digging some holes in the forest and covering them up,
after which you go home and cross your fingers that someone steps into one of
them in the future.

~~~
petegrif
I honestly don't understand the point you are making. Would you mind
elaborating? Thanks.

~~~
btilly
There is a well-known patent strategy where you patent a technology, wait for
other people to start using it, and then proceed to sue them for large amounts
of money.

From the point of view of other companies these are hidden traps that could be
anywhere. You're just doing business as usual, solving problems, and bam,
you're told that you weren't allowed to think of obvious idea X because
someone has a patent, pay up $10 million dollars. (Actual dollar amount varies
widely.)

The really evil ones patent stuff, get their patented ideas into standards,
wait until everyone is following the standard, then start filing lawsuits.
Past bad experiences with this are why standards organizations usually require
that participants license any relevant patents that are needed to implement
the standards.

~~~
sireat
Also known as: <http://en.wikipedia.org/wiki/Submarine_patent>

Supposedly harder to pull off these days, but still happens.

Any examples of the evil strategy, as in patented stuff getting into
standards?

~~~
btilly
<http://en.wikipedia.org/wiki/Rambus#Lawsuits> is the first that comes to
mind.

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dctoedt
A few silver linings for accused infringers:

1\. It could have been worse -- as correctly pointed out by carussell, the
Supreme Court decision merely validates the the way courts have been deciding
cases for the past 25-plus years;

2\. The Supreme Court's opinion [1] urges judges to give specific instructions
to the jury that it is allowed to take into account the fact that prior art
introduced at trial was not considered by the patent examiner. _That_ will be
useful for defense counsel -- you can never know whether a given judge will
agree to give such an instruction, so it'll be quite helpful to be able to
refer the judge to a Supreme Court "suggestion" on that point;

3\. The concurring opinion of Breyer, joined by Scalia and Alito, emphasizes
that the clear-and-convincing standard applies only to proof of _facts_ and
has nothing to do with the ultimate legal question of validity. That, too,
will be useful in trying to get the trial judge to give the jury a specific
instruction on that point.

[1] <http://www.supremecourt.gov/opinions/10pdf/10-290.pdf>

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contextfree
This article, and much of the reporting on this case, is very confused as to
what it's actually about.

The case actually has to do with a feature called "custom XML" which was
introduced in Office 2003 (I think?) and basically allows databinding between
Office docs and XML files with some custom schema. You have some data
represented in XML, and it shows up in a Word doc presented in a certain way.
Then you can edit the Word doc through the Word interface, and the data in the
XML will match your changes. So the idea is to let you use Office as an editor
for structured data. I dunno how well it worked in practice.

The actual patent claim was over some detail of how the databinding
relationship was represented in the file format. This has nothing to do with
the XML formats introduced in Office 2007 (.docx etc.)

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kenjackson
That is a scary ruling. It basically strengthens software patents (and all
patents for that matter). But in particular solidifies that once you have a
patent, you aren't likely to get them overturned in court.

If you can invest in a patent troll -- now is a good time.

~~~
aroberge
If you look at the details of the case, you will see that this was NOT a
patent troll. i4i had started work to integrate their product with MS Office
and started negotiations with Microsoft for licensing; then Microsoft in
effect said "no thank you" and proceeded to implement the same (patented)
technology on their own. While I am opposed to software patents, and despise
patent trolls, I believe that this case should definitely not be
misrepresented and linked to patent trolls.

~~~
petegrif
@aroberge - that is absolutely correct. Part of the reason that MS were hit so
hard is precisely because they knowingly and willfully infringed.

~~~
rwmj
Except that the big idea -- transform the XML and present it in Word -- is
obvious.

~~~
petegrif
@rwmj - the question is not whether it is obvious now but rather was their
invention obvious then. Do you have any reason to believe it was obvious then?
Remember that this very question has been litigated with MS doing everything
in their power to demonstrate it was indeed obvious then, that there was prior
art, and they failed! So it is easy to allege something like this now but I
suspect that you are suffering from the hindsight effect and don't actually
have any evidence supporting your claim of obviousness. I don't doubt your
sincerity and I don't mean to be rude, I just don't think you are likely to
have done the research (as MS and their attorneys did!) to prove it was
obvious THEN.

~~~
kenjackson
The obviousness test is basically off the table after the patent has been
granted. This is one of the things that is problematic with the system. Patent
examiners tend to be too lenient, but the end result is you now hold a patent
that is very difficult to overturn.

~~~
petegrif
IMHO you are missing an absolutely critical point and are therefore falling
prey to the hindsight effect. Let's imagine that you have a brilliant idea
right now, one that NOW is not at all obvious. What does that mean? It means
that NOW (a) there is no prior art (b) there may well be teaching away from
the art, in other words, even though the field is a familiar one and you would
think it obvious once pointed out, nonetheless there is no evidence that
anyone has thought of it before (c) there is no public domain publication or
record of a talk etc .... Such evidence is taken as evidence that it is not
obvious. Now let's assume that you take your idea further and turn it from an
idea - an insight if you will - into an invention. That may involve a great
deal of time and money. In some cases it certainly does. Now let us assume
that you release a product and it achieves great success. The very success of
your product means that it will become a part of popular culture and there
have been several studies that show that within a remarkably short period of
time people take what was your innovation for granted and consider it obvious.
Bear in mind however that it wasn't obvious when you thought of it and when
its obviousness was considered, for example, by the patent office. Failure to
recognize this and the associated hindsight effect leads to people making
statements about how obvious something is when that is completely irrelevant.
The question is not how obvious it is but how obvious it was. If a patent is
granted it can always be challenged and invalidated if someone is able to
demonstrate that there was indeed prior art. The patent is assumed to have
validity but that does not mean that evidence of prior art will just be
disregarded, it just means that the evidence has to be clear.

------
RomP
This is an abomination. This patent clearly fails the obviousness test (that
is, if somebody is capable of reading the patent all the way through without
being disgusted and embarrassed for the "inventors"). Unfortunately, most of
the software patents are like this: the Patent Office is clearly failing us.
Math formulas are not patentable, and software is just that: math.

Seems like our only hope is if somebody powerful and famous, with a big
software patent portfolio, can sacrifice it for the good of the industry and
advocate for banning software patents. Steve Jobs and his position against DRM
in music comes to mind as a similar move. Wouldn't it be great if leaders of
the industry get together and petition/lobby for this change? One can only
dream...

~~~
petegrif
@romp please see my post above about 'the obviousness test' IMHO this
relationship between patents and what is obvious is the source of a huge
amount of misunderstanding about and opposition to patents. I have no problem
with serious discussions about patent reform, but surely such a serious
discussion should be based on a substantive understanding of reality not
popular misconceptions? Let's all get clear on what is meant by 'obvious' in
the context of patents and that will help us move things along.

~~~
runningdogx
So non-obvious (by the PTO's standards, or even by some wise person's
standards) mathematics should be patentable?

~~~
petegrif
No. Because the law is perfectly clear on this point. Algorithms cannot be
patented.

~~~
bandushrew
computer code is 'just' an algorithm. that is simply true. if algorithms
cannot be patented then neither can computer code.

~~~
petegrif
data structures?

~~~
bandushrew
huh? they contain data. unless you are claiming that the presence of this:

struct twiggle { int t; }

somehow makes patenting the code that uses it a sensible idea?

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chargrilled
I think i'd feel a little more sorry for Microsoft if it weren't using
software patents to fight Android.

[http://online.wsj.com/article/SB1000142405274870346610457552...](http://online.wsj.com/article/SB10001424052748703466104575529861668829040.html)
(search for "patent fee")

~~~
latch
I sooo agree with this. Microsoft seems bipolar in its attitude towards
patents. I understand why they are happy to sue into markets they aren't
dominate, and then be upset at being sued in markets where they are. But they
are so enthusiastic at both ends..

I am extremely satisfied with the ruling in this respect. Companies that use
silly patents deserve to have silly patents used against them.

I agree it could have consequences. But that's a different (and possibly more
important) discussion.

~~~
danssig
That's a lawyers job. Londo Milari from Babylon 5. The perfect lawyer.

~~~
latch
Peter Jurasik did a great job with that fun character. He and Andreas Katsulas
had such amazing chemistry.

G'Kar is, by far, my favorite TV sci-fi character and the fact that Mollari
was able to stand his own in such a huge shadow is a testament to Mr Jurasik.

~~~
danssig
Yea, he was amazing. Too bad he doesn't get more big roles.

------
iqster
Scary and sad. The only good that can possibly come from this is that the
industry giants start pushing in earnest for patent reform. If all the big
software companies seriously want a change, I think it can happen.

------
mvalle
I like this bit from the article:

"Smaller companies that held patents worried that if Microsoft prevailed, it
could lower the standard of proof for invalidating a patent, crippling small
companies that depend on patent protection, legal experts say."

Other than patent trolls, which small (software) company benefits from
(software) patents?

~~~
petegrif
i4i is exactly such a small company.

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esoteriq
I don't think the article does the case justice.

If you look at the holding, the Court just says that all invalidity defenses
must be established by "clear and convincing evidence" (higher than
preponderance of evidence but lower than beyond a reasonable doubt.)

It has been well-established that patent validity is a basic assumption. So, a
plaintiff must prove patent invalidity by clear and convincing evidence. The
issue here is once the plaintiff establishes patent invalidity, how much
evidence does the defendant need to give to rebut the assumption of
invalidity. The Court said that the higher standard of proof, not the lower
standard of proof.

Maybe I'm being thickheaded here, but I don't see how that's terrible at all.
In fact, it makes things equal. Once the plaintiff shows patent invalidity, it
shouldn't be that easy for a defendant to rebut the assumption of invalidity.

~~~
kenjackson
Except for the fact that the PTO isn't an adversarial system. It would be
different if prior to you getting a patent you had to go to court against
companies who think you shouldn't have it.

And now that you have a patent and sue somebody, this other person may be able
to put together some evidence that shows the patent is invalid, but they must
climb a very high bar now.

In this case MS had prior art in a past i4i product that appeared to have the
functionality that i4i had patented. i4i says it was different, but the source
code had been destroyed. Had this challenge been brought up during the
original patent examination, they could have pressed i4i to prove that this
didn't infringe. But once i4i has the patent now MS must prove that it does,
w/o the source code.

~~~
esoteriq
The plaintiffs trying to invalidate the patents have always had to climb a
steep hill. My point is that this case doesn't change that. If you look at the
statute and precedent, the plaintiffs always had to establish invalidity by
clear and convincing evidence. (The appropiateness of that is a question for
Congress, not the Court because the statute is clear on this point.)

So, this case just makes things equal between the plaintiffs and defendants.
Once the plaintiffs do overcome the admittedly-high obstacle of proving
invalidity, the defendant can't just put up a weak defense and get away with
it. That's good!

Your problem with the patent system is completely valid, but the Supreme Court
can't change law (or is not supposed to). Congress is the one who is
responsible for this quagmire, not the Court.

The whole patent system is broken, and this case improves things by a nanogram
(is that a word?)./

~~~
kenjackson
I don't disagree. And after reading the SCOTUS opinions, I think their
reasoning was sound. Still disappointing in some sense, but it does read like
the right decision.

Time to petition congress. It does feel like we're near an inflection point.

~~~
esoteriq
Sigh. I know...

I just think that Congress needs to be reeducated about the different needs of
today's technology industry versus the old-days of steel mills. It won't be
easy, but I'm confident it will happen someday.

The question is whether I'll be alive then (heh).

------
brlewis
The article talks about "taking the case all the way to the Supreme Court",
but is that accurate?

Reading the Court opinion, it seems like they aren't examining the whole case,
but only one particular question of law raised by the case. There's nothing
written in the opinion examining whether the patent itself is statutory,
novel, and nonobvious; only Microsoft's objection to its validity is
mentioned.

Can any law gurus explain how this certiorari thing works?

~~~
esoteriq
Well, I don't know about law guru, but I did go to law school. Take that for
what its worth.

I'm not an issues and appeals lawyer, but here's what I know about appeals.
Appeals are only for questions of law, never for questions of facts. And the
question of law must be unsettled (otherwise, why would SCOTUS take the case?)
SCOTUS probably took this case to clarify the defendant's burden of proof
regarding invalidity defenses.

Now, this particular case was about the standard of proof for invalidity
defenses (and jury instructions). The trial court told the jury that MS had to
defend against invalidity claim by clear and convincing evidence. Microsoft
thought that was the wrong standard. SCOTUS said that the lower court was
right.

So, since the lower courts applied the right standard, this is the end of the
line. The verdict against MS will stand.

tl;dr: appeals (cetorari_ to SCOTUS) focuses on unsolved or ambiguous
questions of law, not factual issues. (Mixed questions of fact and law is a
whole 'nother story...you don't want to know).

~~~
brlewis
Is SCOTUS restricted to just the questions raised to them, or can they make
their holding on another question that wasn't raised? For example, could they
have said in this case, yes, the lower court applied the right standard for
evidence, but the patent itself is nonstatutory following the Flook precedent?

P.S. Law school qualifies as guru for any questions I'm likely to ask.

~~~
esoteriq
SCOTUS is indeed limited to the question raised during the appeals process.
Even if SCOTUS thought "geez this patent sucks," they can't do anything.

Why not? Well, for better or worse, the American judicial system puts a lot of
weight on trial courts and juries' ability to assess facts. The appeals system
was set up in such a way to prevent higher courts from actually deciding the
case. If SCTOUS had found that the lower courts applied the wrong rule of
evidence (burden of proof here), then the case would have gone back to trial
and retried (isn't that crazy?).

And trust me, law school doesn't quality everyone as a guru. I have some
experience with appeals, but I'm far from an issue & appeals lawyer (they're
pros at this). So, take my words with a grain of salt.

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joelthelion
Isn't great news? It's a great incentive for large companies like Microsoft to
start lobbying for a reform of patent law.

------
tluyben2
Bah.

