Jun 1, 2001 12:00 PM, BY PAUL D. LEHRMAN

If you want to see just how totally out of control the high-tech universe is, then go to your favorite Internet search engine and type in the words “bogus patents.” NorthernLight.com returns over 250 results — almost all having to do with companies and their lawyers fighting over the legitimacy of new technology patents. Not over who did something first, but whether the patents should exist at all or not.

In the old days, patent fights were about timing: The development of everything from the sewing machine to the television is littered with cases in which one inventor or company claimed he (it was almost always a “he”) invented something before some other guy did and therefore was eligible for compensation. And usually things were reasonably clear-cut: Either someone could prove that they had come up with an idea and used it first or they couldn't. Patent officers and judges could determine, with a certain amount of confidence, when one invention bore too close a resemblance to another, or when someone expressed the main points of an idea — the concept known as “prior art” — before someone else did.

The whole idea behind patents, like copyrights, was not just to ensure that an inventor could make money from a new idea, but also to publish the details of the invention so that others could build on it — at the same time creating a reasonable monopoly for the original patent holder and requiring that others who want to use the idea pay a license fee. The patent system was supposed to restrict and regulate competition, not shut it off. But it also had another role: to spread knowledge.

Today, however, companies look at patents in a totally different light. A whole new industry has sprung up in “defensive” patents — let's take out a patent on this idea, even if we're not using it and may never, just to make sure no one else can. It's become particularly nasty in the software world. Although software patents are illegal in Europe, in this country thousands of patents are applied for every year for techniques like handling e-commerce transactions, compressing images or tracking Internet users' habits. To make matters worse, a lot of these concepts are far from original — they've just never been patented before. Companies are staking claims on ideas that have been floating around for years and used by many, but that doesn't deter them from demanding royalties on “their” intellectual property.

For a patent to be valid, it has to be considered “non-obvious,” that is, a genuine invention. A landmark Supreme Court ruling in 1882 read, “It was never the object of patent laws to grant a monopoly for every trifling device, every shadow of a shade of an idea, which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufactures. Such an indiscriminate creation of exclusive privileges tends rather to obstruct than to stimulate invention.”

Probably half of the patents I've read are clearly invalid to anybody who knows the art.
— Raph Levien

But the definition of what is “non-obvious,” especially to those who smell money, seems to be rather fluid. I have personally been involved in a couple of scraps, within our own industry, over this issue. A few years ago, a keyboard manufacturer tried to patent the idea of velocity-based sample switching; that is, how hard you hit a key on a musical keyboard determines which sample will play. Very early in the days of digital samplers, this might have been considered a patentable idea, but by the time this manufacturer got around to it, it was already in wide use throughout the industry. It was an obvious feature for any sampling keyboard that intended to reproduce the sound of a real musical instrument. The folks who objected to the patent being granted contacted me, and I was able to point them to a user manual from an older instrument that clearly showed this concept being used to simulate a piano sound over a wide dynamic range. Having established prior art, they were able to have the patent application thrown out.

More recently, I was a consultant for a law firm on the other side of the fence. A research institution was suing a commercial manufacturer for using a signal-distribution scheme the institution had patented for, and I was asked for my “expert” opinion as to whether there was indeed infringement. My report read, “Yes, the defendant was infringing on the patent, but I could name four other companies that were also infringing, because the idea was so obvious it should never have been patented.” I was thanked (and paid) and told that my presence in court would not be necessary. As far as I know, the case is still pending.

One of the problems with the current patent situation is that many of the people who work at the U.S. Patent and Trademark Office don't seem to be the ideal candidates for making fair and intelligent decisions about the new concepts and ideas that are being thrown at them constantly. Given the ever-faster-spinning revolving door between business and government, it's not a stretch to think that many inspectors could be, as one report accuses, “former lobbyists for the mega-corporations they're supposed to be overseeing.” Other reports say that patent officers work on a quota system, and so they can't afford to spend the time and resources investigating new filings. Whatever the reason, there is a new laxity in the patent office, and large high-tech companies are taking advantage of it, often to smaller companies' detriment.

Computer writer Joseph T. Sinclair puts it this way: “For lack of trained personnel, the Patent Office in the last few years has approved thousands of patents regarding online [Web] business systems that will never hold up in court. Most of the patents have been filed defensively on the advice of attorneys. In other words, if a corporation sues your company for a patent infringement based on its bogus patent, your company can counterclaim for infringement on its bogus patent. The result is a wash and a moneyless settlement. But if you don't have a bogus online business systems patent or the money for an attorney, you're a victim in this Silicon Valley blood sport.”

Therefore, a lot of ideas — like that signal-distribution concept — receive patent protection when they shouldn't. Raph Levien, an inventor and programmer active in the open-source movement, says, “The examination process for software patents is a sham — probably half of the patents I've read are clearly invalid to anybody who knows the art.” Perry Leopold, an Internet innovator, says, “The patent bar has been lowered so far you can trip over it if you're not watching.” Perhaps no other striking example of this can be found than patent number 6,004,596, “Sealed Crustless Sandwich,” which is, literally, a patent issued in 1999 for a peanut butter and jelly sandwich.

There's tremendous pressure from the high-tech community to shove through patents on “every shadow of a shade of an idea,” just to make sure the competition doesn't do the same thing first. And it's led to some really interesting battles. Priceline, for example, the “name-your-price” airline ticketing service that William Shatner proclaimed was going to be “really big” (but which lost 98% of its value in the last year, not to mention Shatner), sued Microsoft over a name-your-price hotel room service on the software giant's Expedia.com travel site. Last year, on the other hand, Microsoft — which has been accused of being one of the worst offenders in this area — used its legal muscle to shut down an independent developer that had figured out how to decode their Active Stream Format (ASF). The developer maintains, quite logically, that it's ridiculous to patent a file format, but he hasn't got the money to battle Gates' legal minions.

Some government forces are trying to fight back. Congressman Rick Boucher, D-Va., co-sponsored a bill last session that would outlaw software patents by “creat[ing] the presumption that the computer-assisted implementation of an analog world business method is obvious and thus is not patentable.” Given the current rabid pro-business atmosphere in Washington these days, it's hard to imagine this could pass, but stranger things have happened. (And, considering that Europeans have already done this, embarrassment can be a strong motivator.)

So what does this have to do with our corner of the high-tech world? Well, one bogus patent that has the potential of screwing a large number of us pretty badly is currently floating around — and one of our number may have helped to stop it.

Set the Wayback Machine to Philadelphia, 1981, Sherman, and we'll visit Perry Leopold, an itinerant singer/songwriter with one well-received but minimally distributed self-produced record of “progressive folk” recorded in a single session in the basement of a shoe repair shop, along with 10 years of heavy touring to his credit. Taking a break from the road, Leopold set up a self-help organization for musicians, offering contacts and tips for dealing with various aspects of the music business, from self-promotion to copyright issues to record deals. It was called the Performing Artists Network, or PAN, and in 1983, it went online, using the services of Delphi (then a competitor to Compuserve and The Source, the two biggest online networks) and hooking up users around the country through the data networks Telenet, Sprintnet and Tymenet. “I always shared my contacts with friends and really anyone I met on the road,” he says today, “in the belief that it all came back to me somehow, and then some. PAN was an extension of that philosophy.”

The sign-up fee was a hefty $250, but Leopold waived the cost in many cases. There was no such thing as unlimited Internet access in those days, and for heavy users, it was not uncommon for online charges to exceed $100 a month. But musicians, engineers, programmers and marketers in the burgeoning computer music field signed up in droves, especially when Leopold started offering free memberships to customers of selected companies.

I was working with a music software startup at the time, and we were one of the first to jump on the PAN bandwagon. We were the first, in fact, to offer online technical support, in the person of yours truly, and many, many manufacturers followed suit. Leopold pioneered a lot of online features we today take for granted: He created the first online gateway between Japan and North America, his was the first service to market e-mail-to-fax and fax-to-e-mail conversion (as well as voice-annotated fax), PAN was one of the first private networks to get access to the Internet in 1992, and he even built, in 1992 (before it was strictly legal), what he claims was the world's first Internet-based shopping mall, in conjunction with a music dealer.

PAN also had online areas for synth patches, MIDI files (the service was the host for the MIDI Manufacturers Association discussion forums and files for many years) and samples. At the 1987 meeting of the Audio Engineering Society, he presented a paper on digital downloading of music, in its various forms. Significantly, he described a way to preview digital audio files: “At 2,400 baud,” he recalls, “people weren't keen on spending 12 hours at $12 an hour to download a couple of megs of string sounds, so they previewed them by first downloading a small file from a collection of samples. Samples are digital audio, no matter how you look at it.”

Jump to October 1996. A company in San Francisco called Intouch Group applied for a patent on a “network apparatus and method for preview of music products and compilation of market data” — in other words, a way for folks to download snippets of music and for the hosts to keep track of who was doing it. The patent, number 5,963,916, was granted three years later. In the spring of 2000, Intouch Group decided to flex its muscle and sued Amazon.com, Liquid Audio, Listen.com, Entertaindom and Discovermusic.com for patent infringement, because they allow users to download and preview digital music and/or video. It would seem that as far as Intouch Group is concerned, anyone who sets up a system for downloading previews of any media file involving music is in violation of its patent.

Now it starts to get interesting. Amazon.com (also known as the largest nonprofit organization in the galaxy, but that's another article) itself is embroiled in a patent suit against Barnes & Noble. Amazon has claimed that it owns the patent on “one-click” Internet shopping, and Barnes & Noble has been violating it. Amazon even managed to get an injunction against Barnes & Noble, forcing the company to take that feature off its Website. Tim O'Reilly, one of the most respected publishers of books and newsletters about the Internet and an open-source advocate, wrote an open letter to Amazon CEO Jeff Bezos, criticizing the company for its action and calling on Bezos to relinquish rights to the patent. While Bezos didn't agree to that, he did something potentially more intriguing: He teamed up with O'Reilly and a Boston patent lawyer named Charles Cella to create a new Web-based company called BountyQuest, whose mission is “market-based patent reform.”

BountyQuest is looking for people — inventors, engineers, researchers, even graduate students — who might have information germane to a patent fight, but who otherwise might not think of getting involved. How are they going to find these people? By offering “bounties” of up to $25,000 for information that helps to debunk any of the dubious patents and copyrights on their list. What goes on the list is determined by BountyQuest's corporate clients, who put up the bounty money (and BountyQuest takes a chunk). As of this writing, the list includes a patent on pre-paid cellular service, a patent on window shades that open and close automatically when the light changes, and a copyright on the design and image of a particular-style Japanese pagoda. The clients are usually anonymous, but sometimes it's pretty easy to guess who's looking for information.

Not surprisingly, one of the first bounties the site offered was for prior art that could damage Intouch Group's claim on previewing digital audio. Just nine days after the posting, Perry Leopold, alerted by his lawyer who read about the reward in The New York Times, sent a copy of his 1987 paper to BountyQuest. According to the site, “It quickly became apparent that his submission precisely matched all the criteria necessary to make him a winner.” And so Perry Leopold became one of the first four winners of a $10,000 prize for showing that he invented something — which he never claimed to own — that someone else was now trying to collect royalties on.

It's been many years since Leopold played his music on the streets and made records in basements. PAN, unlike many of the companies that used its services, was profitable from the word go and still is as a networking resource and Web hosting service. A lawsuit against Rupert Murdoch (who bought Delphi and ran it into the ground) won Leopold a hefty settlement a few years ago. But he could have conceivably made a lot more from the work that he did — with the help of some of the most important figures in the music technology industry in the '80s and early '90s.

“Someone recently asked me what other things I might have patented, had I been of a mind to at the time,” he says, “and if I had even realized such things were patentable.” He then reels off some 18 ideas that most of us take for granted today, but for which he claims he could have “planted the flag.” “But I consider all of these things innovations rather than ‘inventions,’ per se, and thus, to my mind, are not worthy of a patent. It's not like inventing the transistor — now that is an invention!” And think of where we would be today if someone had taken out a defensive patent against the concept, before Bell Labs came up with it.

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Paul D. Lehrman is a composer, author and educator, as well as “the guy” on Mix's Website, mixonline.com. His personal page is at paul-lehrman.com.

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