John Koenig

John Koenig

Patents Illustrate Crafty Surveillance Techniques

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The days of simple law-enforcement wiretaps for telephone surveillance are gone. Today’s digital networks break conversations into packets for transmission and reassembly at their destination, making them harder for law enforcement agencies to identify and monitor. Compounding the surveillance complexity are Federal laws that specify how and when law enforcement agencies may monitor individuals within the United States.

James Clapper, Director of the NSA, recently stated that “the NSA does not voyeuristically pour through U.S. citizens’ e-mails.” But leaks like those of Edward Snowden tend to confirm what many conspiracy theorists fear, that the United States security apparatus has become an ungovernable force.

There are extensive disclosures in patent applications at the U.S. Patent Office. Patent grants over the past decade illustrate a number of crafty surveillance techniques. Below are some of the patents we uncovered:

  • 8094791 – Verizon: Comparing keystrokes in order to biometrically authenticate a caller’s identity.
  • 8194825 – AT&T Mobility: Authenticating a caller by matching an expected “path delay” and alerting law enforcement.
  • 7684547 – IBM: Moving a suspect VoIP call onto a monitorable analog circuit for surveillance by law enforcement.
  • 6563797 – AT&T: Sending a distinct alert to law enforcement that differentiates normal incoming calls from surveillance calls.
  • 8306190 – AT&T: Forking a voice call simultaneously to law enforcement in addition to connecting the intended endpoint.
  • 7155207 – Nextel: Recording voice traffic and forwarding the content to a law enforcement agency whenever certain keywords are detected.
  • 7730521 – Juniper Networks: Intercepting network data packets and mirroring them to law enforcement for analysis.
  • 7764768 – Alcatel/Lucent: Separating a caller’s video, e-mail, and voice streams for delivery to a lawful monitoring system.
  • 8270573 – Ericsson: Intercepting ringback tones, identifying the called party, and routing the tone to law enforcement for analysis.

The patent system advances a somewhat speculative constitutional charter. It allows the public to see the complete inventions in exchange for granting the inventor a limited monopoly. But there are no assurances that the patented inventions will become commercial products.

James Clapper photo: Medill DC

The $800 Million Dollar Question: What’s the Difference Between Trademark and Copyright?

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Confused about the difference between trademark and copyright? Don’t be. It’s a mad, mad world.

Sun v Microsoft Example

Ten years ago, when Sun sued Microsoft over Java, Sun alleged trademark infringement because Microsoft was not implementing Java according to Sun’s Java specification. Microsoft had entered into a license agreement with Sun — promising to follow the specification. When Microsoft deviated from the specification, Sun rightly claimed breach of contract and trademark infringement. Sun sought an injunction against Microsoft to stop using the Java logo and to remove the incompatible Microsoft code from the market. Sun ultimately prevailed, and received a large settlement, in part due to Microsoft’s anticompetitive conduct over Java.

David Boies is familiar with the Java issues in the Microsoft antitrust case. According to Boies biography, he served as Special Trial Counsel for the United States Department of Justice in its antitrust suit against Microsoft. At the conclusion of that antitrust suit, U.S. District Court Judge Jackson found that Microsoft took actions “with the sole purpose of making it difficult for developers to write Java applications … that would allow them to be ported.”

Oracle Alleges Damages and Lost Profits

Boies now represents Oracle (which has since acquired Sun, including its rights to Java) in its case against Google for patent and copyright infringement of Java. He surely knows the differences between the issues in the prior lawsuits. Unlike Microsoft, Google never licensed Java from Sun. It never agreed with Sun to implement the Java specification, and it doesn’t call its product Java. It calls it Android and Android is not an antitrust case. In fact, the Microsoft .NET Framework and Java are the two dominant middleware platforms.

In court pleadings, Oracle constantly argues that Google breaks the “write once, run anywhere” promise of Java.

“Google undermined the compatibility of Java. It took the APIs it wanted, to attract developers to Android and gain market share quickly, and left those it did not — fragmenting Java and its “write once, run anywhere” promise.”

“Oracle has been harmed because Google fragmented the Java APIs, severely undercutting Java’s “write once, run anywhere” promise.”

“Google’s fragmentation of Java has violated the “write once, run anywhere” creed.”

“Google has significantly harmed the value of the APIs by fragmenting Java and undercutting its “write once, run anywhere” capability.

The problem for Oracle is that Google made no license promise, and doesn’t need to worry about Oracle’s “write once, run anywhere” registered trademark because it has nothing to do with Android.

Moreover, Oracle is suing Google for copyright infringement, not trademark infringement. Oracle never alleged any Java trademark claims, only harm by “fragmentation” of the Java “write once, run anywhere promise.” But promise and fragmentation are not copyright claims, they relate to trademarks. It’s a nice example of the adage that “if you repeat something often enough, people will believe it’s true.” Accordingly, on September 15, 2011, Judge William Alsup in his order regarding summary judgement says:

Android allegedly supports some, but not all, of the APIs defined for the Java platform… This so-called fragmentation undermines the “write once, run anywhere” concept underlying the Java system and supposedly damages Oracle by decreasing Java’s appeal to software developers.

Google could have long ago pointed out that Oracle is alleging trademark harm using copyright infringement claims. But why should Google help Oracle plead correctly. Google never agreed to the “write once, run anywhere” promise from which Oracle says it suffered harm. While Oracle could have argued that Google has confused the market by making references to Java in Android marketing and documentation, Oracle cannot now amend the complaint with a trademark infringement cause of action. It’s too late.

Google has already prevailed on the key issue of non-copyrightability of API names. In his partial summary judgement order September 15, 2011, Judge Alsup held that “the names of the Java language API files, packages, classes, and methods are not protectable as a matter of law.” Oracle has its work cut out, explaining to a trial jury that the names of the Java files, packages, classes and methods are not protectable, but Oracle somehow has a substantial copyright claim to snippets of code, declarations, and the arrangement of the specification.

Oracle is not giving up however, and the API copyright issue isn’t the whole lawsuit. Oracle is also claiming patent infringement, and there are still questions of fact and law about the scope of Google’s alleged copying. But those don’t relate to the “write-once, run anywhere” promise from which Oracle says it suffered harm. Nevertheless, Oracle’s latest alleged copyright damages and lost profits estimate is still in the neighborhood of a whopping $800 million dollars.

So don’t feel bad if you don’t understand the difference between trademark and copyright. A lot of fine people get it mixed up.

David Boies Photo: David Shankbone

The America Invents Act is Better for Small Business

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The America Invents Act goes into effect over the next 18 months, with certain provisions such as fee setting to be determined under the regulatory authority of the Director of the USPTO, David Kappos.

During the patent reform debate, concern for small business and inventors fueled an atmosphere of hot rhetoric. But the America Invents Act distinctly improves U.S. patent law for small businesses by eliminating some trouble spots, and bringing more certainty, simplicity and economy to the patent process, all of which allow greater patent participation by small businesses.

Grace Period for First Inventor To File

Effective March 17, 2013, the U.S. patent system awards a patent to the first inventor to file an application — aligning with the rest of the world, according to the original U.S. patent system. But the first inventor to file also receives a U.S. one-year grace period until filing, from the date he or she makes an invention public. This means that an inventor can effectively stop-the-clock on prior art by making a public disclosure, use or sale of the invention. For small businesses, this grace period creates valuable time to seek financing, customers and sourcing, without sacrificing patent rights.

Fast Track Examination

Startups often succeed based on their strategic investment in a single area of expertise. However, obtaining an issued patent typically takes 3 to 4 years. The America Invents Act creates a 12-month patent examination fast-track upon payment of an additional fee. Small businesses can particularly benefit from the fast-track process, by quickly ramping up the size of their patent portfolio. The fast-track examination is available to any filer for an additional $4800 fee — but small entities pay only $2400.

Other Qualifying Fee Reductions

Using the eFILER system, after November 15, 2011, original applications for utility patents avoid a $400 surcharge by filing electronically. Effective the same date, a “micro-entity status” provides qualifying inventors, including institutions of higher education, a 75% discount on most USPTO fees compared to the 50% discount already available for small entities.

Objections to Pending Applications

Under the new law, non-parties may anonomously submit potential prior art and comments on the pending applications of other inventors. The new rules govern the timing of the objections, but no longer must the objecting non-party wait for a final decision by the patent office. The prior rules typically involved legal representation that many small businesses could not afford.

Expanded Prior User Rights

Many businesses, particularly small businesses, rely on trade secret protection of their valuable innovations, instead of more expensive patent protection. Under the first-inventor-to-file system, the right to continuing use of these trade secrets is preserved so long as the business can demonstrate commercial use at least one year before the effective filing date or public disclosure, of an asserted patent. Before the new act, prior user rights applied only to processes. Expanded prior-user rights now apply to any process or instrumentality (machine, manufacture, or composition of matter) used in a process.

Opinions of Counsel

Willful infringement of a patent creates the potential for treble damages. In the past, companies tried to avoid this threat by obtaining an opinion of counsel. However, an opinion of counsel is expensive, putting small businesses at an economic disadvantage. Effective September 16, 2012, the failure of an accused infringer to obtain an opinion of counsel or to produce such opinion during litigation cannot be used to prove willful infringement or inducement of infringement. The threat of treble damages for failure to obtain opinion of counsel is now gone.

There are other simplified provisions of the act, including best mode and inventor oaths, which along with those mentioned above, eliminate burdens on all businesses. In particular these changes help small business whose limited economic resources make it difficult to always engage qualified patent counsel. As such, the universe of inventors who can now benefit from patent protection has widened. Although the patent system is imperfect, this latest reform has made U.S. patent protection less burdensome and more accessible to small businesses.

David Kappos Photo: US Mission Geneva

Google Gives Oracle a Tutorial on API Copyright Law

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For the past year Oracle and Google have been locked in high-profile dispute over Oracle’s rights to the APIs in the Java Virtual Machine. Oracle asserts that Google’s Android operating system infringes on JVM patents and copyrights that Oracle inherited as part of its 2009 acquisition of Sun. At the time of the acquisition, the open source community was concerned about Oracle owning MySQL, not Java. Java was flagged by the European Union. As a Wikileaks cable showed last week, the U.S. Government leaped to Oracle’s assistance in persuading the E.U. regulators to permit Oracle’s acquisition of Sun. Fast forward two years to a new owner of Java — an Oracle more hostile to open source than Sun and whose only competitor to Java is the Microsoft .NET Framework.

API Copyright Facts

“All can see the tactics whereby I conquer, but what none can see is the strategy out of which victory is evolved.” – Sun Tzu

At this stage of the copyright litigation in Oracle v Google, Oracle needs to demonstrate to Judge William Alsup that there is a “genuine issue of fact” whether Android infringes the Java APIs. That’s enough to get Oracle’s copyright case in front of a jury. To get the copyright issue thrown out before trial, Google must rebut the arguments that Oracle has presented. Addressing each specific fact, Google’s Reply last week offers an exceptionally detailed and clear tutorial on API copyright law. A legal monograph published by Professor Efthimios Parasidis in 2005 provides a similar analysis.

Windows API Example

Google’s Reply makes a strong case against copyright protection of APIs. But there are additional examples where APIs were considered unprotectable. In the antitrust case against Microsoft, a U.S. District Court stated “Theoretically, the developer of a non-Microsoft, Intel-compatible PC operating system could circumvent the applications barrier to entry by cloning the APIs exposed by the 32-bit versions of Windows (Windows 9x and Windows NT).” The court went on to say “Applications written for Windows would then also run on the rival system, and consumers could use the rival system confident in that knowledge.” This is the same circumstance in which U.S District Court Judge Alsup finds Android.

There are two possible outcomes to the copyright claims of Oracle: Android infringes the Java APIs or it doesn’t. It may appeal the partial summary judgement on the copyright issue once there is a final judgment on the rest of the case. If Judge Alsup rules in favor of Oracle, then the copyright infringement issue will be decided by a jury later this year.

Oracle has made Android a target in spite of the fact that Oracle has little or no stake in mobile devices, now or on the horizon. The chief beneficiary of taking down Android would be Apple, chaired by Ellison’s friend Steve Jobs. It seems questionable whether the Oracle Board of Directors is providing oversight of this case, since it doesn’t appear to benefit Oracle shareholders. One wonders if Ellison has other goals in mind. Oracle might like to see the API copyright issue head to the U.S. Supreme Court. If so, losing may ultimately benefit Oracle, eliminating concerns about linking to Linux header files or the GNU Classpath, and taking the air out of vague GPL license terms that create extraordinary copyright hazards for software companies.

Larry Ellison Photo: Colin McDonald

Google Must Take the Offensive with the Motorola Patent Portfolio

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Google’s plan to buy Motorola Mobility will likely win approval from the Department of Justice, just as Oracle earlier received approval to buy Sun. The acquisition will double Google’s workforce and increase the size of its patent portfolio to more than 17,000 patents. What should it do with all those patents? Google is not an active patent plaintiff, but at the same time, Google has never before owned this kind of patent portfolio.

Larry Page wrote in a blog post that Motorola will continue to be run as a separate business. He also stated that the acquisition of Motorola will increase competition by strengthening Google’s patent portfolio. Well, surely Larry realizes these statements are to some degree incompatible.

At a minimum, the Motorola patents help Google defend its Android investment against Apple, Nokia, Microsoft and others. But Google needs more than defensive thinking to manage the Motorola patent portfolio.

Google must put the property to “its best and highest use”, as real estate people say. This means using patents offensively, depending on Google’s needs.

Google needs a patent strategy that people at Google and Motorola can understand and execute. The plan needs a degree of simplicity for successful implementation. Using a triangle as a model, Google can create a roadmap to guide internal decisions about how and when to use its newly acquired patent portfolio.

To implement the strategy, each patent in the Motorola portfolio should be assigned to one corner of the triangle. Patents might later move around depending on licensing, but this model establishes the initial priorities.

Core to Google Business

The first priority should go to patents that support Google’s core business. That means any Motorola patents related to search and advertising go to the top. Such patents apply towards protecting Google’s major revenue source, which is advertising.

Patents in this area would not be directly shared in support of the Android community. Rather, they would used to maintain Google’s advertising revenue stream, whether that revenue stream is derived from Android devices or not. Google would use these patents offensively to protect its core business.

Grow Android Base

The second priority is to apply Motorola patents to protect and grow Android-based products. Some might argue that this helps Motorola’s competitors. More objectively, a broadly supported Android platform creates momentum and competitive excellence for Motorola as well as for other Android manufacturers.

Solid platform support for the Android community increases hardware and software interoperability, and reduces the overall cost of Android as a solution. It also helps Android compete against Apple and Microsoft, providing more lift for Motorola.

History provides a guide here. The PCI bus created by Intel allowed the PC industry to achieve a high level of hardware and software compatibility. Because of that standard, all PC vendors could pass lower costs and better quality to consumers. The resulting greater volume provided an incentive for the industry to innovate much faster.

The same idea applies to using Motorola patents to grow and improve the market for Android devices. Google would use these patents defensively, a purpose acceptable to Android partners and developers.

Differentiate Motorola

The third corner of the triangle contains patents that provide unique product differentiation for Motorola. There are many areas where Motorola can enjoy a competitive advantage.

Likewise, all major Android device makers, including Samsung, HTC, and Huawei, have created patent portfolios in support of their devices and business objectives. Having patents to support Android-based products is an absolute business necessity for these vendors. These manufacturers took to heart what former Sun CEO Scott McNealy once said, that open source is “free, like a puppy is free”.

If the patent litigation history of these vendors is any example, Motorola will cautiously use such patents both offensively and defensively. Motorola should have no problem preserving and even enhancing its product differentiation using some, instead of all, of the 17,000 patents in the portfolio.

Larry Page Photo: Jakub Mosur