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Court Decisions

22

May
2014

In Court Decisions

By Andrew McAleavey

“They Patented WHAT??”

On 22, May 2014 | In Court Decisions | By Andrew McAleavey

Two people have forwarded me U.S. Patent 8,676,045, issued recently to Amazon.com. I’m a professional. I believe in broad applicability of the patent laws. I believe in not prejudging the business value of any particular invention. I believe in the USPTO. However, just every so often, I see something that makes me say, “Seriously?? They patented WHAT??”

Yeah, this is one of those times. The ‘045 patent appears to cover a photographic studio arrangement and methods of taking photographs against a white background. Since this is the kind of technology that seems like it’s as old as the hills, like it shouldn’t be patentable, it’s fair to ask: what does the patent actually cover? How do patents like this get issued?

At first glance, Amazon’s attorneys probably got the patent through the patent office because the patent claims, which define the scope of the patent, have some very specific limitations about the intensity ratio of the rear light sources as compared with the front light sources, specific limitations as to where front and rear lights are placed, and specific ISO and f-stop limitations for the camera that’s used to capture the image. The point, the patent explains, is to create a near-perfect white background that does not require post-processing.

In order to obtain a patent, the invention must be novel and non-obvious. However, in order to reject a patent application for lack of novelty or obviousness, the patent examiner must produce evidence that the invention was previously invented, or that the invention would have been obvious to someone of “ordinary skill” in the field. Therein lies the problem.

Patent examiners are trained to search for patents, and most of the evidence used to reject patent applications is in the form of other patents and patent applications. Patent examiners are also supposed to search technical journals, Google, and other resources, and more often than not, that actually does happen. However, sometimes, the evidence that something is not patentable is not found in those usual sources. Sometimes, something has been common knowledge in the field for a long time, but it’s not documented in a way that a patent examiner can find or cite. (Patent applicants are required to come forward with any relevant information that might affect patentability, and they do, but they are not required to make a search or scour the earth for information.) It can be particularly tough to make a proper rejection when the claims contain very specific numerical limitations, like the light intensity ratios in the ‘045 patent claims. If the examiner can’t find the evidence, he or she is forced to allow the applicant his or her patent. To do it any other way would be unjust.

In short, the ‘045 patent was granted because the patent examiner could not find evidence that the claimed invention was not patentable. The law presumes that an issued patent is valid, and so I’ll give the ‘045 patent the benefit of the doubt.

Lack of available evidence of what’s been done in a field is a recurring problem for the USPTO. For example, in the 1990s, after the Court of Appeals for the Federal Circuit decided that software was patentable in the State Street Bank case, the USPTO was flooded with software patent applications. However, there wasn’t much of an existing body of software patents to use as evidence of what had been done before and what hadn’t, and many programming tricks and techniques were simply unwritten common knowledge in the field. (Or, alternatively, they were well-documented in places patent examiners wouldn’t necessarily have searched.) In my opinion, a number of very broad, and probably questionable, patents were issued as a result.

What can be done about this? Well, the law provides a number of options for re-examining an issued patent within the USPTO, including a full-on trial-style multiparty review of an issued patent. These are expensive and time-consuming, but potentially helpful. At times, the USPTO has also considered ways of applying crowd sourcing and peer review to patent examination. However, the fact remains that patent examination is a very human process, performed by overworked examiners operating under tight time constraints with an enormous backlog of unexamined patent applications. Against that (not-so-white) background, a patent that makes the rest of us shake our heads will occasionally issue.

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