Stupid Patent of the Month
For years, the Eastern District of Texas (EDTX) has been a magnet for lawsuits filed by patent trolls—companies who make money with patent threats, rather than selling products or services. Technology companies large and small were sued in EDTX every week. We’ve written about how that district’s unfair and irregular procedures made it a haven for patent trolls.
In 2017, the Supreme Court put limits on this venue abuse with its TC Heartland decision. The court ruled that companies can only be sued in a particular venue if they are incorporated there, or have a “regular and established” place of business.
That was great for tech companies that had no connection to EDTX, but it left brick-and-mortar retailers exposed. In February, Apple, a company that has been sued hundreds of times in EDTX, closed its only two stores that were in the district, located in Richardson and Plano. With no stores located in EDTX, Apple will be able to ask for a transfer in any future patent cases.
In the last few days those stores were open, Apple was sued for patent infringement four times, as patent trolls took what is likely their last chance to sue Apple in EDTX.
This month, as part of our Stupid Patent of the Month series, we’re taking a closer look at one of these last-minute lawsuits against Apple. On April 12, the last day the store was open, Apple was sued by LBS Innovations, LLC, a patent-licensing company owned by two New York patent lawyers, Daniel Mitry and Timothy Salmon. Since it was formed in 2011, LBS has sued more than 60 companies, all in the Eastern District of Texas. Those defendants include some companies that make their own technology, like Yahoo, Waze, and Microsoft, but they’re mostly retailers that use software made by others. LBS has sued tire stores, pizza shops, pet-food stores, and many others, all for using internet-based maps and “store location” features. LBS has sued retailers that use software made by Microsoft, others that use Mapquest, some that use Google, as well as those that use the open-source provider OpenStreetMaps.
Early Internet Maps
LBS’ lawsuits accuse retailers of infringing one or more claims of U.S. Patent No. 6,091,956, titled “Situation Information System.” The most relevant claim, which is specifically cited in many lawsuits, is claim 11, which describes a method of showing “transmittable mappable hypertext items” to a user. The claim language describes “buildings, roads, vehicles, and signs” as possible examples of those items. It also describes providing “timely situation information” on the hypertext map.
There’s a big problem with the ’956 patent, and its owners’ broad claim to have invented Internet mapping. The patent application was filed on June 12, 1997—but electronic maps, and specifically Internet-based maps, were well-known by then. Not only that, but the maps were already were adding what one would think of as “timely situation information,” such as weather and traffic updates.
Mapquest, the first commercial internet mapping service, is one example. Mapquest launched in 1996—before this patent’s 1997 priority date—and by July of that year, it was offering not just driving directions but personalized maps of cities that included favorite destinations.
And Mapquest wasn’t the first. Xerox Parc’s free interactive map was online as far back as 1993. By January 1997, it was getting more than 80,000 mapping requests per day. Michigan State University was getting 159,000 daily requests [PDF] for its weather map, which was updated regularly, in March 1997. Some cities, such as Houston, had online traffic maps available in that time period, which also got timely updates.
In 1997, any Internet user, let alone anyone actually developing online maps, would have been aware of these very public examples.
As technology advanced, and Internet use became widespread, the information available on the electronic maps we all use became richer and more frequently updated. This was no surprise. What’s described in the ‘956 patent added nothing to this clear and well-known path.
The Trouble With Prior Art
How has the LBS Innovations patent hold up in court? Despite the fact that these examples of earlier Internet maps can be found online fairly easily, that doesn’t mean it’s easy to get rid of a patent like the ‘956 patent in court. The process of invalidating patents using prior art—patent law’s term for relevant knowledge about earlier inventions—is difficult and expensive. It requires the hiring of high-priced experts, the filing of long reports, and months or years of litigation. And it often requires the substantial risk of a jury trial, since it’s difficult to get an early ruling on prior art defenses.
Because of that drawn-out process, LBS has been able to extract settlements from dozens of defendants. It’s also reached settlements with companies like Microsoft and Google, which intervened after users of their respective mapping software were sued. In one case where LBS got near trial, after having settled with several other defendants, it simply dropped its lawsuit against the final company that was willing to fight, avoiding an invalidity judgment against its patent.
LBS never should have been issued this patent in the first place. But patent examiners are given less than 20 hours, on average, to examine an application. Faced with far-reaching claims by an ambitious applicant, but little time to scrutinize them, examiners don’t have many options—especially since applicants can return again and again. That means the only way for examiners can get applications off their desk for good is by approving them. Given that incentive, it’s no surprise judges and juries often find issued patents invalid.
For software, it can be extremely difficult to find prior art that can invalidate the patent. Software was generally not patentable until the mid-1990s, when a Federal Circuit decision called State Street Bank opened the door. That means patents aren’t good prior art for the vast majority of 20th century advances in computer science. Also, software is often protected by copyright or trade secret, and therefore not published or otherwise made public.
Often, published information may not precisely match the limitations of each patent claim. Did the earlier maps search “unique mappable information code sequences,” where each code sequence represented the mapped items, “copied from the memory of said computer”? They may well have done so—but published papers on internet mapping wouldn’t bother specifying inane steps that just recite basic computer technology.
The success of a litigation campaign like the one pushed by LBS Innovations shows why we can’t rely on the parts of the Patent Act that cover prior art to weed out bad patents. Section 101 allows courts to find patents ineligible on their face and early in a case. That saves defendants the staggering costs of litigation or an unnecessary settlement. Since the Alice v. CLS Bank decision, Section 101 has been used to dispose of hundreds of abstract software patents before trial.
Right now, key U.S. Senators are crafting a bill that would weaken Section 101. That will greatly increase the leverage of patent trolls like LBS Innovations, and their claims to own widespread Internet technology.
Proponents of the Tillis-Coons patent bill argue that there’s little need to worry about bad patents slipping through Section 101, because other sections of the patent law—the sections which allow for patents to be invalidated because of earlier inventions—will ensure that wrongly granted patents don’t win in court. But patent trolls simply aren’t afraid of those sections of law, because their effects are so limited. For many defendants, the costs of attempting to prove a patent invalid under these sections makes them unusable. Faced with legal bills of hundreds of thousands of dollars, if not millions, many defendants will have little choice but to settle.
We all lose when small businesses and independent programmers lose their most powerful means of fighting against bad patents. That’s why we’re asking EFF supporters to contact their representatives in Congress, and ask them to reject the Tillis-Coons patent proposal.
Tuesday 11th June 2019 7:11 pm