Tag Archives: patent

SAFE Corporation Awarded Seventh Patent for CodeSuite® Software Forensics Tool

SourceDetective searches the Internet to defend against charges of copying

CUPERTINO, CA (June 3, 2015) – Software Analysis & Forensic Engineering Corporation, the leading provider of forensic tools for software copyright and trade secret analysis, recently earned a seventh patent covering its CodeSuite® tool for comparing software code to help detect copyright infringement.

US patent 9,043,375, “Searching the Internet for Common Elements in a Document in Order to Detect Plagiarism,” covers CodeSuite’s innovative SourceDetective® functionality. While other “software plagiarism detection” tools perform a comparison of code and provide an indication of copying, SourceDetective takes the analysis further by searching the Internet to determine whether code in two different programs – including open source code – might be third-party code.

CodeSuite is the only commercially successful tool for comparing computer source code and object code to find infringement. It has been used successfully in more than 70 intellectual property litigations worldwide, and is recognized by the United States Patent and Trademark Office (USPTO) as a unique invention.

“I developed CodeSuite to overcome the inaccuracies common to other tools that can result in false positives and false negatives,” says Bob Zeidman, president of SAFE Corporation and inventor of CodeSuite. “Too much is at stake for the people and companies involved in IP litigation to rely on false results of any kind.”

CodeSuite 4.7 is available now and can be purchased on a term license or project basis. Project pricing is based on the size of code analyzed and the specific function used for the analysis. More information, and free trial licenses, can be requested by contacting sales@SAFE-corp.biz.

Be a Pioneer in the Field of Software Forensics

I hope you’re all aware of my book The Software IP Detective’s Handbook: Measurement, Comparison, and Infringement Detection. It’s the first book on Software Forensics, a field that I pioneered at Software Analysis and Forensic Engineering and Zeidman Consulting. Whereas Digital Forensics deals with bits and files, without any detailed knowledge of the meaning of the data, Software Forensics deals with analysis of software using detailed knowledge of its syntax and functionality to perform analysis to find stolen code and stolen trade secrets. The algorithms described in the book have been used in many court cases. The book also describes algorithms for measuring software evolution, particularly as it relates to IP changes.

If you are a teacher, this is a great time to incorporate the materials in the book into your courses on software development, intellectual property law, business management, and computer science. There’s something for everyone in the various chapters of the book. Your students and you will be at the forefront of an important and very new field of study.

If you’re interested, please contact me.

Ways to Infringe a Patent

A patent can be infringed in two basic ways: directly and indirectly. These different ways of infringing are important to understand by anyone wanting to enforce patents and by anyone wanting to avoid infringing a patent.

Direct Infringement

A patent claim is directly infringed by some product when that product practices each “limitation” of the claim when the claim is a method claim, or includes a structure equivalent to each “limitation” of the claim when the claim is an apparatus claim, or does both in the case of a means-plus-function claim. The term “limitation” is used by lawyers and those in the know to mean the step or steps spelled out in the patent claim.

There is another way of directly infringing known as the doctrine of equivalents. If a product doesn’t perfectly meet the limitations of a claim, it may still infringe on the patent if it does something that a person of ordinary skill in the art (“POSITA” or “OOSITA”) would know was equivalent. While this may seem like a loophole, it’s actually quite fair. Suppose someone patents a “glass bulb containing a filament that produces light when an electric current is sent through it.” The inventor may not realize that a bulb made of specially treated plastic would also work. The key to the invention isn’t the material from which the bulb is made. Thus a plastic bulb could infringe on the patent because of the doctrine of equivalents.

Indirect Infringement

If a product doesn’t directly infringe a patent, it may also indirectly infringe. There are two types of indirect infringement: induced infringement and contributory infringement. Encouraging others to infringe a patent is called “induced infringement.” When two products working together infringe on a patent, that’s called “contributory infringement.”

Induced infringement

Induced infringement occurs when some party purposefully causes or encourages another party to infringe a patent. The key work here is “purposely.” Induced infringement must meet these criteria:

  • The infringer actively encouraged or instructed another party on how to use a product or perform a process in a way that infringes the patent claims.
  • The infringer knew of the patent.
  • The infringer knew or should have known that the encouragement or instructions would induce infringement of the patent.
  • The other party actually infringed the patent.

So induced infringement requires that the infringer purposely got another party to infringe a patent. Let’s say you have a software company that produces word processing software, and your competitor has a patent on checking the spelling of words in a document and putting a squiggly red line under misspelled words. You need a spell checker, but you don’t want to infringe, so your product outputs misspelled words to a separate file and you recommend that your customers buy third-party software that reads in that separate file and puts squiggly red lines in the documents. You may be inducing infringement by encouraging your customers to perform the patented method. And don’t try to use an orange line or a chartreuse line, because you’ll probably still be infringing under the doctrine of equivalents.

Contributory Infringement

Contributory infringement occurs when one party who knows about the patent supplies a component to another party to use in an infringing product. Contributory infringement occurs if the party who received the component directly infringes the patent and if the component has the following characteristics:

  • The component is a significant part of the invention.
  • The component is especially made for use in a way that infringes the patent.
  • The supplier knows that the component was especially made for that use.
  • The component doesn’t have any substantial non-infringing use.

So contributory infringement requires that the infringer knowingly supplied another party with a product that was incorporated into a second product, causing the combination to infringe a patent.

Let’s take the example again of your word processing company. Suppose your word processing company decides to buy the third-party squiggle generator software to incorporate into your word processor. You meet with the head of the squiggler company and tell her that your word processor doesn’t infringe on your competitor’s product and the squiggler doesn’t infringe. You want to embed the squiggler into the word processor. At that point you’ve just lost the game, because the squiggler company knows that the combination infringes and so they can be found to be contributory infringers. Because it’s your product, you can be liable for direct infringement in this scenario.

However, if the squiggler can be used to underline important words, hyperlinks, and naughty words in addition to misspelled words, then the squiggler company may be OK because the component has significant uses that are non-infringing.

Do Non-Practicing Entities Impede Progress?

On April 12 an op-ed was published in the Wall Street Journal  entitled Patent Trolls vs. Progress by Andy Kessler, a former hedge-fund manager. I would like to correct some inaccuracies. Mr. Kessler attributes Microsoft’s recent purchase of AOL’s patents and Google’s purchase of Motorola Mobility (presumably for its patents) as protection against non-practicing entities (“NPEs”) also disparagingly known as “patent trolls.” First, no portfolio of patents will ever protect against an NPE. This is because an NPE, by definition, does not produce a product. In a patent litigation between two companies, the typical scenario is that company A owns a patent and attempts to license that patent to company B that it believes is infringing. Company B can pay a fee to company A or it can refuse to pay. Or company A may attempt to get an injunction against company B to prevent it from selling its product that incorporates the invention described by the patent. If company A wants an injunction or requests a fee that company B refuses to pay, then company A will almost
certainly take company B to court. At that point, company B takes some combination of three possible countermeasures. Company B can attempt to show that the patent is invalid. Company B can attempt to show that its product does not infringe the patent. Company B can countersue company A for infringement of some patent of its own. Typically after months of threats, legal maneuvers, and negotiations, the companies will settle on some payment from one company to the other. The cases rarely go to court. Now suppose that company A is an NPE. Company B’s third option of countersuing is not an option because company A produces no product and thus cannot infringe on any patent. Thus buying patents provides zero defense against an NPE, contrary to what Mr. Kessler asserts.

Mr. Kessler reaches back seven years to 2005 for the case of NTP v. Research-In-Motion, the famous case against the Blackberry manufacturer, for his justification and concern about NPEs, but in recent years it is the major players in high tech have been suing each other over patents. The companies in the news for patent sales, patent purchases, and patent lawsuits are not NPEs but the high tech goliaths including Google, Apple, Microsoft, Motorola, Oracle, Facebook, AOL, and Yahoo among others. Purchasing patent portfolios can be used defensively against other companies and just as easily these patent purchases can be used, and are being used, as offensive weapons against competitors. Patent trolls are simply the bogeymen used by large companies to convince politicians to “reform” patent laws.

Mr. Kessler argues that the extension of the patent term to 20 years, enacted in 1995 to make U.S. patent law consistent with the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), is a problem because “in technology things move a lot faster.” I do not understand the reasoning behind this complaint. If technology moves so fast, then a patent becomes worthless long before the term is over. What does it matter if a patent is valid for five years or 50 years if the patent is worthless after five years?

Mr. Kessler states the “we have to stop allowing juries to establish the value of patents… the market… [should] determine value. ” In fact, the market does determine value. The majority of patent lawsuits are settled before reaching court, and both parties determine a fair value based on free market principles. A negotiation between two parties is a great example of such free market principles where each party determines the value of the patent with respect to its own interests, free from other considerations. For cases that reach a jury, the jurists are provided information by economists and accountants who determine the value of a patent based on the market value of the products that embody the patented inventions. Of course we can argue about whether their models and calculations are correct, but our entire justice system is based on juries determining values and awarding damages and so if Mr. Kessler believes that juries are incapable of determining value, then he is implying that our entire legal system-at least the civil system-is flawed. If that is true, then it is the legal system as a whole that needs to be revised.

Perhaps the most disturbing recommendation is to require patent holders to manufacture or sell products. This requirement would fundamentally damage the patent system. Patents allow small, cash-strapped inventors to create something new and protect that invention from large corporations that have the money and resources to kill it or steal it before the inventor can get funding or market share. I know this from experience. Years ago I created a software tool that I sold to a large company that enabled that company to sell their expensive hardware to customers in the communications industry. Each software package, that sold for about $25,000, enabled this company to sell their multimillion dollar equipment to communications companies that otherwise would never have been customers. The arrangement seemed good to me, but the large company made it clear that they did not like being beholden to me, so after several years of buying my software, they created their own. My sales immediately went to zero-in other words I became a non-practicing entity. Fortunately I had patented my invention and so I had more leverage than the large company expected. Had Mr. Kessler’s recommendation been in effect, I would have had no recourse against that large company.

According to Kessler, James Madison was the man behind Article 1, Section 8, Clause 8 of the U.S. Constitution, giving Congress the power “to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Historical documents suggest that Thomas Jefferson and Charles Pinckney also lobbied for this clause. In any case, this section of the Constitution has been the justification for our patent system for over 200 years. Mr. Kessler believes that Mr. Madison did not understand what he was doing or, at best, did not foresee the expense that patent litigation would involve in the 21st century. In fact, the founding fathers knew exactly what they were doing when writing the intellectual property clause into the U.S. Constitution. They were protecting the individual from the overwhelming power of large entities. They were enacting the very principles of American society for which we fought the Revolutionary War. Since 1790 the U.S. patent system has contributed to America becoming the most innovative society in the history of the world. Fundamentally changing the system in the ways suggested by Mr. Kessler would stifle that innovation.

Parts of a Patent

A patent can de divided into the following sections:

  1. Abstract. This is a one-paragraph description of the invention that’s being patented.
  2. Drawings. These are carefully labeled figures that are used to illustrate important concepts of the invention and that are described in the detailed description. It is important that at least one diagram shows a block diagram of the invention if the patent includes apparatus claims. For a physical device, a diagram should show the physical parts and their relationships. For software, the diagram should show the architecture of the software. For a patent that includes method claims, at least one diagram should have a flow chart that illustrates the method.
  3. Background of the invention. This section describes the field of the invention, other inventions, or publications that predate this invention (“prior art”), and other inventions related to this invention. This section typically explains the inventions usefulness—what’s so great about the invention and why people will want it.
  4. Summary of the invention. This is typically one paragraph to one page in length that describes the invention. Though this section isn’t legally required by law, it’s a part of almost every patent.
  5. Brief description of the drawings. For each drawing in the patent, there should be one or two sentences to briefly describe it.
  6. Detailed description. This section explains the invention as completely as possible, referencing the drawings. This section describes what is called the “embodiment” of the invention that differentiates it from existing inventions. The description must explain the best way the inventor knows of implementing the invention, and it must be detailed enough to allow “one of ordinary skill in the art” to produce it. Remember that the patent must be novel, nonobvious, and useful.
  7. Claims. This is the essence of the invention. Each claim is a single sentence, though it’s usually a very long sentence broken into multiple parts, that describes the invention in as precise wording as possible.

There is often debate among patent attorneys, inventors, and patent litigators about the definition of “one of ordinary skill in the art.” The Manual of Patent Examining Procedure (MPEP) section 2141.03 defines one this way:

The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. Factors that may be considered in determining the level of ordinary skill in the art may include:

(1) type of problems encountered in the art;

(2) prior art solutions to those problems;

(3) rapidity with which innovations are made;

(4) sophistication of the technology; and

(5) educational level of active workers in the field. In a given case, every factor may not be present, and one or more factors may predominate.

Note that the definition of one of ordinary skill in the art will vary depending on many factors and cannot be defined generally, but must be defined for each particular patent.

Claims are the most important part of any patent. Patents typically contain anywhere from 5 to 30 claims. Each claim is a single sentence, and each describes an important aspect of the invention. Whether another product infringes on a patent ultimately comes down to these claims.

One last piece of advice: never file a patent that you’ve written yourself without having a qualified patent attorney or patent agent review the claims. I’ve seen patents for ingenious devices that were worthless because of one misplaced word in a patent claim. Other patents had no value because the claims were so narrow that no one infringed, or avoiding infringement required some insignificant change to the invention.

Patent reform: the big guys won, the little guys lost

On June 23, 2011 the US House of Representatives passed H.R. 1249, The Leahy-Smith America Invents Act,  to reform the US patent system. On September 8, 2011, the US Senate approved S.  23, The America Invents Act of 2011. On September 16, 2011, President Obama signed patent reform into law.

One of the key, and most controversial changes, is a shift in the patent priority rules from the “first-to-invent” system that has been in effect in the US since the beginning of patent law to the “first-to-file” system that is used in every other patent system in the world. A first-to-invent system means that the first person to invent something gets the patent. This seems fair. A first-to-file system grants a patent to the first person, or company, to pay the fees and file the patent. This, to me, seems un-American in that it rewards paperwork over innovation.

To those who believe there is no such thing as American exceptionalism—those who believe that there is no more innovation in the US than anywhere else—this change “harmonizes” our patent system with the rest of the world, making patent law fairly consistent from country to country.

If you’ve read my blog you know that I believe that there is more innovation in the United States than anywhere else on earth. Do we really need proof of this? But let’s take another look at this issue. Proponents claim that this change will have an insignificant effect, if any. Yet has anyone rigorously studied how this change will affect individual inventors and entrepreneurs in America? Until recently, the answer was no. But professors of law at the University of Pennsylvania, David S. Abrams and R . Polk Wagner, recently performed a detailed study.

You might wonder how they could perform such a study when the act does not require the “first-to-file” system to go into effect until March 2013? These professors already had a model. Canada switched from first-to-invent to first-to-file in 1985, giving them a significant amount of historical data. The results are interesting, and unfortunately not hopeful.

The chart below illustrates one of many interesting statistics in their study. The number of patents per year before the system changed was fairly constant at around 1,700 per month. A significant drop of over 40% occurred around the time that the system changed, to less than 1,000 per month and remained low.

Perhaps even more disconcerting is that Abrams and Wagner find that the fraction of patents going to individual inventors also decreased at the time of this change in Canadian patent law. So the number of patents decreased and the percentage of patents issued to individual inventors also decreased.

Abrams and Wagner summarize their findings in very blunt terms:

In the end, how much do individual inventors matter? That,
we think, is the critical question suggested by our study. To
date, most observers seem to have assumed that a shift to the
first-to-file rule, though a substantial change in US patent
law practice, would have little impact on who seeks and receives
patents. This is wrong. A change to the first-to-file rule in
the US should be expected to result in the reduction of individual
inventors’ share of patents. Thus, the cost savings yielded
by the change away from first-to-invent will not, we suggest,
be free.

Like any law, this patent reform act can be undone. However, it seems that many members of both parties support this change, probably because they do not fully understand the implications and because of pressure from large corporations that stand to gain from it. Perhaps a grass roots movement can rise up to pressure Congress to un-reform US patent law. Grass roots movements seem to be all the rage these days. So I still hold out some hope.

Inventions must be novel and nonobvious, not complex

In August I debated the impact of software patents at the Computer History Museum (you can watch the debate here). I asked members of the audience how many were programmers or had  written software. A large number of hands went up. I then asked  those people to put their hands down if they thought what they did wasn’t creative and that anyone could do it. I was really surprised when a large percentage of hands went down.

I’ve been thinking about that, and I’ve come to three conclusions.  First, many programmers just aren’t very good at what they do. Many  of them have simply learned to copy others’ code (see  Is Googling Replacing Programming?) or maintain someone else’s code. Second, many programmers underestimate their abilities. Programmers tend to be introverted and not ones to brag about their skills. Of course there are exceptions, but programming is generally a solitary endeavor.

Third, many programmers believe that to be patentable, something must be very complicated. But that’s not true. Section 102 of the U.S. Patent Act states that an invention must be novel, and Section 103 states that it must be nonobvious. There is no requirement that it be complex.

Many inventions are very useful and yet also very simple. Searching Google, I found almost 4,000 patents involving paper clips. I found 27,000 patents with the word “needle” in the title and over 9,000 patents for kinds of spoons. There are nearly 600 patents involving rubber bands. Some recent patents include a water sprinkler for dogs (USPTO # 7,997,229) and a waterproof cover for a camera (USPTO # 7,991,274). My point is that some inventions are simple and some are complex, but they all are novel and no one else thought of them. If you tend to dismiss software patents, remember that what makes an invention patentable is not whether you could have done that, but whether you actually did.

Grocery trolls and civil liberties

People have been asking me lately what I think about those organizations that buy up patents and license them or sue infringers. Kindly known as non-practicing entities (NPEs), patent licensors, or patent aggregators, they are disparagingly called “patent trolls.” However, there is a much more troubling entity out there that I want to bring to your attention-the grocery trolls.

Grocery trolls produce no fruits, vegetables, or produce of any kind. They do not own farm land, they do not raise livestock. They do not harvest grains. Instead, they buy up the food items produced by small, independent farmers, and sometime large farm corporations, and force hungry consumers to buy them at higher prices. These greedy grocery trolls, going by benign names like Safeway, Lucky’s, Rainbow Grocery Cooperative, and Trader Joe’s have no farming skills whatsoever. And the consequences of not buying food from them? Starvation!

Patent licensors perform the same kind of service by buying up inventions from inventors and offering them for sale. The strength of their size, their sales force, their marketing budget, and their distribution channels ensures that they will be able to buy from small entities and sell to large and small entities and make a profit by charging for their services. Groceries buy from small farmers who could not otherwise reach large markets. Patent licensors buy from small inventors who cannot afford to license their inventions to other companies.

The analogy isn’t perfect, but it’s pretty darned good. Free commerce in a free society means that you or I can sell anything we like to anyone we please; there are no restrictions on having created the good in the first place. If that were the case, most transactions would be illegal. You wouldn’t be able to sell your house or buy a used car. You wouldn’t be able to trade baseball cards or collect antiques. The list is very long. That’s why restrictions on the sale of patents must never be allowed in any free market economy. Restricting the sale of any goods would be a curtailing of civil rights-an extremely dangerous precedent-and anyone who believes in civil liberties should be absolutely against such restrictions.

The Software IP Detective’s Handbook

My book on software intellectual property, a labor of love (and hate) for the last two years, has just been published by Prentice-Hall. The book is intended for several different audiences including computer scientists, computer programmers, business managers, lawyers, engineering consultants, expert witnesses, and high-tech entrepreneurs. Some chapters give easy-to-understand explanations of intellectual property concepts including copyrights, patents, and trade secrets. Other chapters are highly mathematical treatments describing quantitative ways of comparing and measuring software and software IP. The first chapter of the book outlines which chapters are most important for the different audiences.

Overall the book covers the following topics:

  • Key concepts of software intellectual property
  • Comparing and correlating source code for signs of theft or infringement
  • Uncovering signs of copying in object code when source code is inaccessible
  • Tracking malware and third-party code in applications
  • Using software clean rooms to avoid IP infringement
  • Understanding IP issues associated with patents, open source, and DMCA

You can purchase your copy from Amazon.com here.