Much Ado About Software Patents

A software company and the U.S. Patent and Trademark Office (USPTO), which granted it a broad encryption patent in February 2001, have recently come under fire by a firm who claims the patent shouldn't have been issued in the first place.

Westlake Village, Calif.'s PC Dynamics is furious that patent 6,185,681 was awarded to MAZ Technologies, of Irvine, Calif.

Not only is the patent "absurd," claims PC Dynamics President Pete Avritch, but MAZ is also demanding that his firm pay a $25,000 licensing fee because a PC Dynamics product, SafeHouse, draws on transparent encryption technologies. Because SafeHouse was crafted in 1994, a full seven years before MAZ secured its encryption patent, Avritch claims MAZ has no right to seek money from him. And, he said, the patent should never have passed muster. Why not? Because of the rules of prior art, which basically state that if an invention is known or is being used by someone in the United States, another person who makes the same invention at a later date may not obtain a patent.

"The process is prone to abuse and the PTO is apparently unable to differentiate the good from the bad. For curiosity, as I was preparing my own press release, I searched the PTO database for software patents issued that day (happened to be March 26th) and found patent 6,363,418 which covers caching images in web browsers," Avritch said via e-mail. "Caching concepts have been around since the beginning of computers. How is this novel? Should I now run out and get myself a patent on caching video or 3D wire frames? Some of these concepts are so simple that I would fire a programmer for not being able to think them up on a moment's notice."

"The demand from Maz is based on a patent application filed in 1998, long after the widespread use of hard drive encryption," Avritch continued. "That application somehow failed to discover and identify a huge body of 'prior art' that included existing encryption products, even encryption products used for decades by the U.S. government -- which the PTO also somehow failed to research before it approved the patent. Clearly, the PTO needs to re-examine and invalidate this patent."

"The Cryptographic File System, written and made available in 1993, does the same thing," Schneier said about the patent granted to MAZ Technologies. "I expect this thing to be overturned quickly -- it's idiotic. It's abuses of the patent system like this that make it difficult for legitimate companies to develop and market technology products."

Phil Zimmermann, inventor of the widely-used PGP (Pretty Good Privacy) e-mail encryption software had said this about the issue: "Does the lack of reference to obvious and well-known prior art products indicate an ignorance on the part of the patent applicant or a deliberate attempt to exclude those products from consideration as prior art by the Patent & Trademark Office? This illustrates a festering problem at the PTO with how patents get issued. This patent cannot be allowed to stand," said Zimmermann.

"PC Dynamics' only goal is to generate free publicity," Mahne said. "Therefore, Mr. Avritch has not and will probably never seriously consider the legal issues. Instead, he has tried to create a public outcry, akin to what he achieved with the Energizer bunny dispute. There is one important difference this time around: PC Dynamics contacted MAZ and asked MAZ to send an infringement notice. PC Dynamics is trying to paint itself as the victim of the PTO's mistake and deceit by MAZ. On the contrary, PC Dynamics seems to be trying to snow the technical community and the public to generate more sales.'

PC Dynamics is no stranger to patent validity squabbles. In the Energizer Bunny suit Mahne referred to, PC Dynamics published the Energizer Bunny Screen Saver in the early 1990s. In 1994, the company was targeted as the first test of a patent claiming rights to nearly all advertising or corporate logos appearing in software products. Coverage of the patent fight triggered Bruce Lehman, then Commissioner of Patents for the PTO, to order a re-examination and invalidation of the patent.

Mahne continued: "The MAZ patent was the product of honest and serious research and development by MAZ' engineering team. The patented invention was a response to the unmet needs of MAZ's customers and the lack of available and specific technology that would meet these needs in the marketplace... Because PC Dynamics has not consulted with a patent attorney on this matter, there has been no one to correct Mr. Avritch in his incorrect views of the MAZ patent and the prior art."

Avritch whent on to bridge the gap in his argument, noting that a combination of lapsed patent judgement and a tricky patentee, can yield the type of position his firm finds itself in.

"To be clear, the law does not require you to disclose anything but what you know," Avritch said "....but, how many people are using this loophole to their advantage, figuring that the PTO is way too swamped to really investigate as much as they should, or maybe they don't have an expert in a specific area so that something that is novel does not stand out as such to the examiner.

So should the patent process be revised? See Page 2.


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