Barnes & Noble pummels Microsoft patents with prior art

http://www.itworld.com/mobile-wireless/225615/barnes-noble-pummels-microsoft-patents-prior-art

by abennett • 15 years ago

143 36 15 years ago

jfruh• 15 years ago

It's kind of amazing that the company that is finally standing up against insane, stupid patents is ... a bookstore. But perhaps it's because B&N doesn't have any mobile patents of its own to defend?

marquis• 15 years ago

and a lot to gain, given their interest in getting a stronger position in the market.

jbigelow76• 15 years ago

I was thinking the same thing, but I think it might have more to do with the fact that B&N would have no other relationship with Microsoft as an OEM in other markets.

Samsung, HTC, Dell, etc... all have other cross cutting businesses that could influence whether they play ball with MS on issues like mobile patents, B&N has no such constraints.

EDIT: In addition the Nook is probably the lone shining star in the B&N business, they can't surrender a single point of margin if they don't have to. If the Nook becomes untenable as a business B&N could become untenable as a business and sooner or later they'll go the way of Borders Books.

jvanenk• 15 years ago

This is along the lines of what I was thinking. B&N is at the point where they have to make a last stand.

They really have little to lose by pursuing this case which really frees up their legal team politically.

atourgates• 15 years ago

I keep hearing the idea that the Nook is B&N's last great hope, but I don't buy it.

Every time I go in to a B&N physical store, it's packed. They're one of the few stores I'll go to just for the experience of going in there. They're relaxing. They're pleasant places to be.

Certainly, book sales face stiff online competition, but I find it hard to believe that a company with 705 physical locations that people want to be in, (plus 636 college book stores), can't find a way to make a profit even if the Nook should fail.

saturdaysaint• 15 years ago

I suspect that this stand is at least partly the result of vicious competition from Amazon - adding a $20 license fee to the BOM just might make B & N's devices completely uncompetitive. And if they don't have a credible electronic device on the market, it's hard to see them existing in 3 years.

mhw2• 15 years ago

From the linked article:

> What's interesting to me, as a clear layman observer, is why Microsoft didn't know that it would be so easy to find so much evidence of prior art against these five asserted patents.

Obvious answer, based on experience of large organisations: Legal and engineering are in different silos and don't talk to each other, except through senior management with limited bandwidth and legal/engineering understanding.

netrus• 15 years ago

Legal people decide what to patent?

mhw2• 15 years ago

Actually, they probably do have a significant hand in it. I suspect there have been more than a few patents submitted more because the legal team thought they could manage it than because the engineers thought there was something significant to protect.

But the point I was getting at is that I suspect that in this kind of case the selection of patents to put in the legal case against B&N was down to the lawyers picking from a long list, and the chances of them asking the engineers whether they'd stand up in court were reduced due to the organisational structure.

naner• 15 years ago

I think it's more likely Microsoft knew and didn't care. These "obvious" patents have been profitable for quite some time and once you are awarded the patent the burden of proof (and legal costs) falls to the alleged infringer.

Also, take this with a grain of salt, but I vaguely recall reading somewhere that using prior art in court to invalidate a patent is much more difficult than we assume.

WalterGR• 15 years ago

I think it's more likely Microsoft knew and didn't care.

The parent to your comment - by mhw - is pretty darned close. At Microsoft, legal and engineering are in different silos and don't talk to each other, except through senior management with limited bandwidth and legal/engineering understanding and also - in my experience, and to some extent - program managers.

Developers (at least) are told not to look at patents or patent applications. I'd be surprised if PMs were told differently.

Does MS Legal have engineers on staff to determine if something is worthy of a patent and to look for prior art? That's a possibility. But your "more likely" (granted - it's your opinion) doesn't seem incredibly likely (in my opinion.)

rhizome2• 15 years ago

It's common practice for engineering to be discouraged from looking for prior art. This leaves the lawyers alone to determine what needs to be revealed on the patent app.

http://m.paidcontent.org/article/419-why-tech-companies-want...

ejames• 15 years ago

It is common practice for engineering to be explicitly forbidden from looking at any patent whatsoever.

A peculiarity of the U.S. patent system is that the size of the penalty is larger if the party accused of infringement is shown to have "knowingly" infringed. This is intended to punish deliberate malign behavior more severely than accidental infringement, because there is a lower penalty if you didn't realize there was a patent to violate.

However, the second order effect is that accurate knowledge of patents is a legal liability. When considering whether a party "knows" about a patent, any engineer in the company would count. If Bob reads Patent A and Sally writes code that infringes Patent A, it's difficult for their company to prove that Bob never said anything to Sally. And why even take on the burden of that proof? As a practical matter, the potential legal cost of the larger infringement penalty outweighs the potential benefit of searching beforehand to ensure you aren't infringing.

When I joined Microsoft, part of the instructions given to all new employees was that you should never view any patent, anywhere, ever, no matter what. Even if there is some reason why knowledge of patents is necessary, you should not try to search for or view those patents yourself, because if you look at a page of 50 patent search results to find the one you want, someone could argue you "know" about the other 49. This is arguably ridiculous, but when your goal is reducing legal costs, you must avoid even the possibility of ridiculous arguments, because arguing back requires time from lawyers.

Standard operating procedure is for engineers to know nothing about patents and the legal department to make all patent-related decisions. Naturally, the legal department makes those decisions with the goal of maximizing profit from lawsuits against other companies and minimizing loss from lawsuits by other companies. The process deliberately and explicitly eliminates the possibility that accurate knowledge of software and hardware will be applied to patent decisions, because the only people with that knowledge are engineers, and letting engineers know about patents increases your legal risk.

Since the Patent Office also does not have the manpower or technical resources to make accurate decisions about engineering patents, and in any event is not incentivized to reject patent claims, patents on average bear no relation to reality. They're determined entirely by what you can get away with in court.

LarryMade• 15 years ago

I think the NDA requirement before revealing the infringing patents is a telling sign. They know they were weak and stand on shaky ground.

I had thought that if some entity was to properly assert their patent rights, they had to make the specific patent claims known to the parties concerned which gives a period of time for the potentially infringing company to rectify, or to progress further into arbitration. Microsoft seems to be playing it like a organized crime protection scheme.

jaaron• 15 years ago

I truly admire B&N's approach, but they may have to take a lesson from Sun in its early fight with IBM on patents [1]. It's not about these particular patents. MS has thousands of patents and can keep playing this game indefinitely. That's the shame of this system - it isn't about patents or innovation, it's just a shakedown pure and simple.

[1] http://www.forbes.com/asap/2002/0624/044.html

brlewis• 15 years ago

I don't know about indefinitely. At some point it may change. A good lawyer may argue successfully against continued use of court precedents presuming validity of granted patents. Presumption of validity is arguably out of place given today's patent system.

monochromatic• 15 years ago

> Presumption of validity is arguably out of place given today's patent system.

It comes from the statute though, so a court isn't really free to just ignore it. Changing this presumption would take congressional action.

IgorPartola• 15 years ago

Somewhat off topic, but why are the licensing fees that MS is demanding redacted from the cited documents? Are these not public records?

nkassis• 15 years ago

I think but IANAL that those are considered trade secrets.

law• 15 years ago

Invalidating patents with prior art isn't as easy as you might think. There are two ways to do this: you can invalidate on novelty grounds (that is, the invention was anticipated by a single piece of prior art) or non-obviousness grounds (a combination of prior art essentially undermines the idea that the patentee took an 'inventive step'). Only the claims in the patent are considered when assessing novelty and non-obviousness. In the case of novelty, a single piece of prior art must embody everything claimed in the patent, whereas non-obviousness loosens this restriction. Non-obviousness claims are typically far more difficult to prevail upon, which is why companies won't do it more often.

For what it's worth, the relatively recent KSR v. Teleflex case gives us the current opinion of the Supreme Court in non-obviousness battles. In that case, they slid the scale back to favor the Graham[1] test for non-obviousness, rather than the controversial teaching-suggesting-motivation test, which tries to determine whether something in the prior art suggests the desirability of combining the claimed subject matter, and thus its obviousness. Now, the Graham test (which was a 1966 decision) allows for empirical evidence of non-obviousness, to wit: commercial success, long-felt but unsolved needs, and failure of others to invent the patented subject matter.

All of these are issues that need to be litigated in federal court, an exceptionally expensive endeavor that no corporation will take without a very strong incentive.

[1] http://en.wikipedia.org/wiki/Graham_et_al._v._John_Deere_Co.....

meric• 15 years ago

Barnes & Noble see moving into the tech industry as the next move for the company, but because, as a company rooted in the business of physical books, they lack a patent "moat" to protect themselves against other big tech companies. It will be difficult for B&N to produce anything but low margin commodity devices. Any differentiation from other devices will eventually drag B&N into a patent battle. Their (possibly) declining physical book business would make it hard to purchase a portfolio from a dying tech company.

One day, here comes Microsoft demanding from B&N a license fee per device for some obvious patents. Since B&N is building a platform that sell high margin products (e-books), the license fee is likely to be affordable....at least until Amazon comes along with patents for a "online bookstore"... Yet... What a perfect opportunity to rack up a storm, raising awareness of the ridiculous patents owned by existing companies!

It is in B&N's interest to devalue existing patent portfolios of their current and future competitors in the tech industry, and they are trying to do exactly that. Even if the plan fails and politicians are unmoved, future tech companies may think twice before threatening B&N with a patent lawsuit... B&N is actually going to bother to find all the pieces of prior art!

We shouldn't be surprised a bookstore is fighting against software patents, because we know an existing technology company, with software patents valued at billions, are definitely not going to do it. It had to be a large company that could afford such a fight but the large company had to not have invested heavily into a technology business. Companies with no stake in a technology business would have no interest in demolishing software patents... unless it is moving into it. What companies making such a move? A company that is facing a fast declining market for its products.[1]

Such a company can only be a bookstore. [2]

[1] If it wasn't fast declining, they wouldn't be doing anything. Imagine putting a frog in a slow cooker, compared to putting a frog in boiling water.

[2] It could have been a company in the music industry... but I think it might be too late for those guys. All they can do is try to hang on to what they've got.

Barnes & Noble pummels Microsoft patents with prior art

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