Review of Developments in Intellectual Property Law
Summer 2010 Volume 8, Issue 3
Inside this issue:
1
A Survey of the Peer to
Patent Pilot Project
1
Free, But Not Without Risk:
Open Source Licensing in
the Wake of
Jacobsen v.
Katzer
12
The Federal Circuit
Decides to Reconsider
Inequitable Conduct
15
Citation by IDS:
So What if I Didn’t?
21
MBHB is...
continued on p. 9
continued on p. 2
A Survey of the Peer to Patent Pilot Project
Free, But Not Without Risk: Open Source Licensing in
the Wake of
Jacobsen v. Katzer
With the Peer to Patent project set to begin a third
pilot period in October and to expand in scope,1
the time is right to review the status of this pro-
gram and to introduce our clients and readers
to the Peer to Patent process, its history and
its future, and its advantages, and to encourage
others to get involved with this promising project.
During our research for this article, we interviewed
many of the people that were involved in getting
the project off the ground in mid-2007,2 and many
of the people that guided the project through its
second pilot period from 2008-2009.3 Included
within this elite set of patent professionals is
Manny Schecter, Chief Patent Counsel at IBM,4
Curt Rose, Director of Patents at Hewlett-Pack-
ard,5 Scott Asmus, Patent Counsel at General
Electric,6 Matt Rainey, Vice President and Patent
Counsel at Intellectual Ventures,7 Adam Avrunin,
Chief Patent Counsel at Red Hat,8 and Mark Web-
bink, ex-Senior Vice President and Deputy General
Counsel at Red Hat and now Executive Director at
the Center for Patent Innovations at New York Law
School (NYLS).9 We hope you find this information
useful and enlightening, and hope it convinces at
least some to get involved with the project, and,
as Thomas Jefferson put it, help “contribute[e] to
a public good.”10
Background and Current Status
of the Peer to Patent Project
There has been an enormous amount of debate
over the last several years about a perceived
decrease in the quality of patents issuing from
the U.S. Patent & Trademark Office (USPTO),
and consequently whether or not the agency is
Introduction
Sam is the chief technology officer of a small
software vendor. At the request of his custom-
ers, he kicks off a new project to redesign and
upgrade his company’s flagship product. During
the design phase, one of his engineers suggests
that several person-years of effort can be saved
by incorporating a large software module from a
popular “open source” program. After crunching
numbers and finding that the savings add up to
nearly half a million dollars, Sam green-lights
use of the module. What Sam does not realize,
however, is that although his decision saves time
and improves his bottom line, it may also put his
company at risk of a lawsuit for copyright infringe-
ment or breach of contract.
Closed and Open Source Software
Computers execute programs that are compila-
tions of instructions and data in binary format.1 In
the early days of computing, software developers
would write programs either directly in binary for-
mat or in assembly language, which can then be
converted into binary format. However, due to its
intricate nature, developing software in assembly
language or binary format is time consuming and
error prone. Over time, software developers found
it more efficient to write programs in high-level
languages, and then translate, or compile, their
high-level language programs to binary format.
High-level languages express programs in source
code that, in some cases, resembles English,
though in a rigid and logical fashion. Thus, a
high-level language is typically easier to write and
read than assembly language or binary format,
and nearly all modern computer programming is
carried out in high-level languages.
2 Volume 8, Issue 3, Summer 2010
continued from p. 1
A Survey of the Peer to Patent Pilot Project
fulfilling its mandate under the Constitution
of promoting the progress of science and
the useful arts.11 Currently, the USPTO is
struggling to deal with an overwhelming
backlog of over 1.2 million pending patent
applications.12 For the patents the USPTO
does issue, there is a perceived decrease in
quality caused, at least in part, by the num-
ber of undeservedly broad claims and by the
number of findings of invalidity during patent
reexamination and litigation. In patent cases
that went to trial in 2009, nearly half of the
challenges to patent validity, approximately
43%, were successful13 and over half of the
validity challenges based on obviousness
grounds were successful.14 The expense
of litigating suspect patents, according to
IBM’s Manny Schecter, “drains our economy
of at least hundreds of millions of dollars per
year.”15 USPTO Director David Kappos has
also recently commented on how the grow-
ing patent backlog stifles job growth and the
development of new businesses and prod-
ucts.16 Any effort to examine more applica-
tions and trim the backlog, however, needs
to be balanced with initiatives to ensure the
issuance of higher-quality patents.
The Peer to Patent program was devel-
oped to address both of these seemingly
countervailing problems, by improving both
the quality and efficiency of patent exami-
nation by sourcing the shared knowledge
of the global technical community,17 or
“crowdsourcing.”18 Specifically, the Peer
to Patent program’s aim is to involve third
party experts residing outside of the USPTO
in the search for, and submission of, prior
art references.
Examiners at the USPTO typically have
around 20 hours to examine patent appli-
cations.19 In this limited time the examiners
must digest the new material in the applica-
tion, research the prior art, and draft an
office action on the merits of the application.
This short time frame makes it difficult to
perform a thorough search for relevant prior
art. Examiners are further constrained in that
their research, for reasons outside the scope
of this paper, is generally limited to internal
databases that focus primarily on patents
and patent applications, at the expense of
non-patent literature (NPL). Furthermore,
and as noted by Mark Webbink, even NPL
literature that examiners do somehow find
and cite is not indexed, subjected to optical
character recognition (OCR’d), or tagged in
any meaningful way so as to allow future
searchers or other examiners to find the
previously-located NPL art.20 Additionally,
for new technologies, such as software and
business methods, there is not a significant
amount of patent prior ar t in the internal
databases, and as a result, the resources
that the examiner can rely upon to reject an
improperly broad claim are sparse, even if
the claim is drawn to something well-known
in the industry.
The Peer to Patent project was set up to
address this lack of prior art resources by
using the Internet and social networking
tools to provide those in the relevant techni-
cal community an opportunity to examine the
application and offer not only what they think
is relevant prior art, but also their commen-
tary on how the relevant art could be applied
to the claims, what elements of the claims
are known in the art, and what elements of
the claims are potentially new, all before the
USPTO examiner even begins reviewing the
application.21 This allows the public to rec-
ommend NPL such as ar ticles, conference
presentations, web pages, products sold in
the marketplace, newsgroup (e.g. Usenet)
postings, or even publicly available or open
source software code that the examiner
would likely be unable to find in his or her
own limited search.22
Although many solely attribute Beth Noveck
of New York Law School with developing the
Peer to Patent project, the project actually
originated as a close collaboration between
Noveck, IBM, and the USPTO, directed
to improving the quality of examination of
software patents filed with the USPTO.23
Schecter24 drove the corporate involvement
and sponsorship for the project. Corporate
involvement was critical in the early stages
of the Peer to Patent project as the project
was entirely funded by corporate sponsor-
ship and foundation grants during the first
two pilot periods from 2007-2009.25 Noveck
provided leadership for the project and also
provided law students to help in their spare
time,26 and USPTO Technology Center Direc-
tor Jack Harvey offered up his technology
center (2100 - Computer Architecture, Soft-
ware, & Information Security) and his time
for the project.27 Schecter stated that one
reason Technology Center 2100 was chosen
was because the open source software com-
munity is more skeptical about patents than
are inventors in other technology areas, and
thus the Peer to Patent project provided the
open source community with an opportunity
to get involved and do something about
the perceived lack of patent quality in the
software arts.28 Additionally, Schecter stated
that the open source community was already
quite familiar with using collaborative online
tools, and thus were a natural starting point
for a project that relied heavily on collabora-
tive tools.29
At the time of that initial collaboration be-
tween Noveck, IBM, and the USPTO, and
Any effort to examine more
applications and trim the
backlog, however, needs to be
balanced with initiatives to
ensure the issuance of higher-
quality patents.
continued on p. 3
