The Pizzo Files

by Stephen Pizzo

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Late last year, when the patent office granted a patent on its "One Click" online purchase system, it hit home: Software patents, especially patents on Internet software, are likely to have a profound effect on the future of the Internet, the software industry in general, and the Open Source community in particular. In this interview you will hear Patent Office Director Q. Todd Dickinson equate Internet/software patents with any other telecommunications industry issue, while O'Reilly Associates CEO Tim O'Reilly doesn't agree with him, with the legislation, or with the very idea that programmers can prove patentability.

Dickinson and O'Reilly disagree on nearly everything, in fact, from the degree of unique ownership of most Internet innovations to the possibilities of establishing "prior art" to resolve software-patent disputes. Read on or listen to the interview, as Stephen Pizzo tries to moderate between government lawyer/administrator Dickinson and Open Source advocate/writer/programmer O'Reilly.

Pizzo: Mr. Director, thank you very much for taking time to join us today. We have Tim O'Reilly on the other line, who's also going to engage in this conversation with us about Internet patents. It's an issue that hasn't gotten as much attention, but I would think that in the last few months you've felt a bit like Janet Reno during the Elian Gonzalez case, where nothing you say or do seems to be able to please either side.

Director Dickinson: (chuckles) You might think that. I couldn't possibly comment, as they say on television.

   Q. Todd Dickinson
Patents Officer Director
Q. Todd Dickinson
Tim O'Reilly
CEO, O'Reilly & Associates
Tim O'Reilly

Pizzo: Then, let me get the ball rolling here with just sort of a general question. Critics of Internet patents and software patents say, "Look, the Internet is as popular and as robust an environment today, only because it was really developed out in the open, with its various parts and pieces effectively in the public domain." And there's concern that as we drill down into that technology and start creating ownership pieces for particular people, we threaten to kill that golden goose. What's your response to that?

Dickinson: Well, I think several things. First of all, I think that the premise is not necessarily correct. There are pieces of the Internet which have been patented right along. Motorola's got some very important patents, for example, on a piece of it. Secondly, we will -- Our experience with the Internet has been very short, and as it exploded in the way that's exploded, I don't think it's unusual for people with any new technology like this to begin to innovate on it. People are inventing now on the Internet, and the first thing they do is sort of say, "Eureka, I've discovered a new way of doing something." And their second thought usually is, "Well, how can I keep myself from getting ripped off by others? How can I protect myself and allow this to be nurtured?"

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listen Software patents
listen Who is the customer?
listen To patent or not patent?
listen Moratorium
listen Prior user rights
listen Who are the winners & losers?
listen More thoughts from Tim

Tim O'Reilly: My question, though, is whether the people who are actually filing the patents are actually inventing anything. In many cases, the scorn that I hear from my customers, the working developers out there in the industry, is that people are patenting trivial pieces that are well-known, that are sort of obvious to anybody of ordinary skill, and they are routine applications of Internet technology to fields that are well-known. Simply by adding "Internet" to it, you sort of say, "Oh, this is novel," when in fact it isn't. You know, if you ask any twenty developers to do this thing, eighteen of them will just kind of pull it out of their back pocket.

Dickinson: Well, if they can do that, then they ought to send it on in because we have a number of processes, as you know, Tim, to deal with this question of obviousness, both before and after the patent issues. Our goal here is to make sure we have the best access to the prior art that we've got to make sure that these patents aren't any broader than they need to be. We specifically don't have --

Tim: Can you explain to us a little bit how that works?

Dickinson: Ordinarily, the patent applicant prepares their own patent application. We have a system where the applicant basically drafts their own patent. They're also required, under a very stringent rule called "Rule 56," to supply to the office all the prior art of which they're aware that's material to the examination of that application. If they don't do that, they risk the patent being invalid.

Tim: My experience when I've talked to a number of people out there in the field is that Rule 56 says that they have to disclose prior art of which they're aware, and I literally talked to engineers who say, "Our lawyers don't want us to look for prior art, because if we don't know it we don't have to disclose it."

Dickinson: Well, that's why we're looking to try to tighten those rules up. The organized bar, as you can imagine, tells us that everything is just fine because they're worried about these same engineers coming back later in court and saying that their lawyers missed something or disclosed something they shouldn't have. The engineers should step up to the plate. They should disclose the art of which they're aware and they should tell their lawyers to --

Tim: But it's not a matter of they are aware. It's just a matter of searching. You don't actually require people to look for it.

Dickinson: I think there's a disconnect there, Tim. You just told me that all these folks, they have eight out of ten of these in their back pocket. If they've got them in their back pocket, they don't even need to do a search. If they're aware of invalidating prior art, send it on in.

Pizzo: Okay, I don't want to be Jerry Springer here, so let's move on to the next subject. The whole concept of "Who is your customer?" has also come up several times, and you've gotten slapped around good on it. I mean you took quite a beating in the New York Times magazine saying basically that your customer is whoever applies for a patent. Now, you say that's not true.

Dickinson: No, I didn't say it wasn't true. The reporter on that read a poster that's framed outside my office that was intended to remind the people that work here that they should provide good customer service, courteous customer service, and responsive customer service. He took that and took it out of context and tried to claim that it meant that we didn't care about the public. Nothing could be further from the truth. We have an important fiduciary responsibility to the public at large as well.

Pizzo: So why don't you expand just a little bit on how you balance your responsibility to the individuals that come in looking for a patent under all current laws and the public trust. I mean at times those are going to come -- are those going to come into conflict?

Dickinson: What we try to do is do the best job we can in examining our patents -- searching and examining patent applications, and making sure they're of appropriate breadth under the statute, and to do that we need to make sure we have access to the best prior art. We continue -- we have good access, we have very good access now, and we're going to try to get even better access. We're out reaching to a number of entities to help us with that. We just signed an agreement, for example, with the Information Technology Association of America, who's going to come and help us work with our examiners to get access to additional databases and additional prior art. And we also rely very heavily again on Rule 56. We have a re-examination system, which if -- I make this challenge all the time. I've made it to Mr. O'Reilly, too. If you're aware of prior art out there that invalidates a patent that is existing, file a re-examination. We'll be happy to take a look at it. I've done a couple of these. Mr. O'Reilly hasn't filed any. I've actually filed two myself in the last six months.

Tim: My understanding -- I have two real issues here. One is that you're diverting resources from actual development to doing battle with the system. You know, I see a lot of people are sitting there, "Do we file a patent, or do we do real research or real development?" So that's one issue. I mean, people shouldn't have to fight over the tools of their trade, in my opinion. But let me just ask the other question. In terms of filing for a re-examination, my understanding is that once you ask for a re-examination, the patent holder gets to comment to the private ruling, and then that prior art can no longer be used in any court cases, so it seems weighted very heavily in favor of the applicant.

Dickinson: Absolutely, Mr. O'Reilly. One thing we were lacking was your very cogent voice last year as this legislation was pending on Capitol Hill. We very strongly supported expanding that re-examination, and it only passed in November, and I didn't hear you or Mr. Bezos raise your voices once to try to keep that kind of loophole from being included in the legislation.

Tim: Well, you know, this is the kind of thing that I think is part of the problem, too. There's a set of people who care about this rule, working the patent system to their advantage, and meanwhile there's this great field of people outside who are doing very creative work who don't know about the system, who don't know that people are working behind the scenes to steal their livelihood.

Dickinson: What's very intriguing to me is that -- do you know the community, the constituency that was most worried about expanding re-exam, who succeeded in actually getting -- I know you've called for having pre-grant opposition, pre-issuance opposition -- this same constituency was able to get into the legislation over our opposition statutory language that strictly forbids pre-grant opposition. That was the independent inventor community, the small inventors, the little entrepreneurs who were so scared about the IBMs of the world beating them up with these systems that they made sure in their world that these kind of restrictions are in there. That's why it's so ironic to hear you now say, "What we need is expanded re-exam, and we need pre-grant opposition." Less than six months ago, the small entrepreneurs of the world were saying we didn't. I'm confused.

Tim: Well, let me ask this question. When I hear "the small entrepreneurs of the world," I understand that there is a group. I don't know who makes up that group, you know, what lobbyist they've hired or any of that stuff. I just know there's a huge group of people who are my constituents, if you like, that --

Dickinson: They weren't heard last year. They weren't heard in November when this bill passed the Congress, that's for sure.

Pizzo: Maybe we need a Million Software Engineer's March.

Dickinson: The kinds of things that kept us from having expanded third-party re-exam -- and you heard them, you heard Beverly Selby, one of their key lobbyists, directly attack Mr. Bezos in print about this matter. This is the small entrepreneur, the independent inventor, who's deathly afraid of these kind of processes. I think they're wrong, but they're the ones that influenced this legislation. They're the ones that organize the Internet. They're the ones that sent thousands of e-mail messages to members of the Congress just less than six months ago.

Tim: Part of this, I kind of wish this had gotten on our radar earlier. Let me ask you another question, just about software patents in general.

Dickinson: Sure.

Tim: Are you a lawyer by training?

Dickinson: Yes, I am.

Tim: How would you feel if a lawyer was able to patent an argument?

Dickinson: If it was new and non-obvious, I wouldn't have a problem with it at all.

Tim: And the ability to basically extract a royalty from other lawyers for using that same legal argument?

Dickinson: As I say, if it's new, and if it met the statutory standards for patentability (and that's the key question here), and it was incorporated into software in some form, that wouldn't be a problem.

Tim: No, not in software. Just in actual, in court.

Dickinson: Well, I don't want to deal in hypotheticals. The courts haven't dealt with that question.

Tim: Well, how about a basketball player invents a new move. Should that be patentable?

Dickinson: Moves aren't patentable subject matter.

Tim: Why is that?

Dickinson: They may be copyrightable subject matter, as dance is, but they're not patentable subject matter.

Tim: So I guess what I sort of see from the perspective of somebody who's a writer -- and I've written software as well -- software and writing are actually very, very similar arts. You know, in one case you're writing, for example, a set of instructions for a human being, and in the other case, you're writing a set of instructions for a computer. I think it's appropriate for a copyright to cover software.

Dickinson: That's a tricky business because the copyright lasts for a hell of a lot longer than a patent lasts. The copyright will last fifty years past your lifetime, whereas the patent only lasts for twenty years from the date you file your application.

Tim: Yeah, but the problem is the patent has --

Dickinson: The accessibility of that software is going to be able to be gotten a lot sooner if you patent it rather than copyright it.

Tim: That's not true because in fact, you know, a patent sort of makes a much more far-reaching claim, and effectively, the way people are filing patents these days, they're effectively laying claims to the fundamental idea and not to a particular expression of that idea.

Dickinson: I think that's a bromide. I don't think it's true. I mean it's sort of a cliché at this point, but I think if you look at -- as I often say, you have to read the claims of patents. They're much narrower than the press releases of these companies would have you believe. You've got to read the -- and the hype of these is too far reaching. You've got to read the claim. If you read the one-click claims, for example, of, you'd come to the same conclusion the judge did, that this is a very, very narrow case. Barnes & Noble has introduced two-click technology, and they're not infringing on it.

Tim: No, actually when I read the claims as a layperson, you know, not a lawyer, they look extremely broad to me. Now maybe in court they were narrowed, but in fact just reading the claims as somebody who doesn't know the system --

Dickinson: Well, that's why you need a good lawyer. I wouldn't suggest that you do surgery on yourself either. You need to consult a lawyer on what is probably one of the most arcane areas of --

Pizzo: Mr. Director, Congress has recognized the Internet as a unique phenomenon and has manifested that recognition in certain moratoriums, particularly the moratorium on sales taxes. Do you think maybe, would you support a moratorium on Internet patents? Listening to you and Tim here, it's very, very clear to me that the divisions are very deep. Very new subjects are being raised here that need to be explored.

Dickinson: Nah. This is a telecommunications technology that is completely analogous to the telegraph in the 1830s, telephone in the 1870s, and the television in the 1920s and 30s. These are extremely analogous technologies. We had these fights when all those technologies were new, and we're having the same fight. "It's déjà vu all over again," as Yogi Berra said.

Tim: Yeah, I'm not sure that I would agree with that, and the reason -- I would say that the Internet, for sure, is a communications technology --

Dickinson: Well, would Mr. O'Reilly have denied Alexander Graham Bell a patent on the telephone?

Tim: No, I wouldn't have.

Dickinson: You want to control that mechanism of communication effectively by having that patent. It's the most valuable patent ever. It's the only patent ever to have a full volume of the Supreme Court Reporter when it was litigated. He defended nine hundred lawsuits.

Tim: I understand, and I personally am not talking about the fundamental Internet technologies. I'm talking about the ability of somebody to write a piece of software to implement sort of what seems to the developer an obvious function. I mean basically --

Dickinson: Obvious functions are not patentable. We don't patent obvious inventions. We just don't. And if you believe that it's obvious, and you've got prior art to show that it is obvious, send it on in, as I've said many times.

Tim: All right, well, one of the things that I do hope to see happen is certainly that we can build a vehicle that will, if you like, heap coals on the heads of the people who are bringing in what look to me like fairly spurious ...

Dickinson: And I applaud you for doing that. I think it's very important to make sure -- I'm very much a supporter of making sure that we have as broad an access to prior art as we can possibly get. So I am eager for you to develop that. I am eager for Mr. Bezos to get moving and fund the comprehensive software database he said he was going to fund, because we need that kind of prior art, we need those kinds of databases to help us do our work better.

Tim: I'm not sure that it's a database solution. Jeff and I have talked about this as well. I think in some ways people need -- you know, you need to go out and reach out to the community of experts on the Internet, rather than looking just at documents. I can give you a couple of examples. You know, I was actually the first person to ever do any kind of Internet advertising.

Dickinson: Well, bring your lab notebooks on in and we'll take a look at them.

Tim: Yeah, I understand, but I'm just telling you how hard it would be --

Dickinson: I have to deal with prior art that's tangible. I can't deal with it when it's only in your head. We're not equipped to judge the veracity of what an individual person would say. We have to use documents and other hard evidence in order to prove the case.

Tim: Obviously we didn't file any patents, this was in the era before people were trying to do these Internet land grabs, but it came up, for example, just in some historical documents. Hot Wired, for example, is claiming that they were the first people to do Internet advertising in 1995, and I said, "No, we were doing it in 1993." But it took us a fair amount of time to find our own documents, and there's no way that any kind of patent office search of databases would turn that up. But if for example --

Dickinson: If you've got those documents now, and you believe a patent is issued that those documents in any way implicates or invalidates -- as I say, we've got several mechanisms for sending it on in. Send it on by re-exam, you can even just put it in the file if you want. We have a process for putting it in an individual file so that if anybody goes to enforce that patent, then they would have a major problem. You could send it to the patent owner and say, "I would warn you not to try to enforce this because you run a risk of --"

Tim: In fact we have been involved in some of those cases. We're -- a lot of our early Web work, we've actually put up an archive of software which was the first Web browser.

Dickinson: Absolutely, I think that's a great idea. I would encourage you to continue to try to develop any mechanism including the Web sites that would bring additional prior art that's good and valid prior art to the surface, so we can make sure the quality of these patents is as high as we can make them, and I applaud you for doing that.

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•  Part Two of this
A Few More Thoughts
   on the Patents Issue by
   Tim O'Reilly
Tim: Yeah, I think that that's a good approach. However, I do really feel that you're putting the burden of proof on the defendant.

Dickinson: That's the way the law is written, I can't help that -- then, if you want to change the burden, then you need to go to Congress on that, too. But again, I don't think they're in a mood to deal with new patent reforms this year. They just got through with them last year. It should have been raised last year.

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