03/18/2010 05:12 am ET | Updated May 25, 2011

Is There a Method to This Madness?

For years I've been itching to write an article, a blog, an email blast, a Facebook post -- just something -- to rant about the idiosyncrasies of patent law. I'm not talking about a scholarly, academic work; if you want to learn patent law in a nutshell, go read Patent Law In A Nutshell. Instead, I've wanted to write a piece explaining why it is that after years of litigating patent infringement cases, I understand the law fairly well but sometimes just don't get it.

I've resisted writing these thoughts down, partly out of fear of exposing to my patent law brethren that, like Meryl Streep confessing to Amy Adams in the dramatic closing scene of Doubt, that "I have my doubts; Oh I have my doubts." Nevertheless, having just read the recent decision in Perfect Web Technologies v. InfoUSA (Fed. Cir. 2009), I feel compelled to take a minute to rant.

By way of context, I began practicing patent law at a prominent L.A. firm as one of several lawyers on a team defending Hewlett-Packard against claims filed by Pitney Bowes alleging that virtually all of Hewlett-Packard's laser printers, which incorporated a feature for smoothing print called "Resolution Enhanced Technology" or "REt," infringed a Pitney Bowes patent. The case might seem a bit incongruous on its face. How was it that a company known primarily for postage stamp meters was suing HP -- a world leader in the development and sale of laser printers -- for infringing a laser printing patent? It turns out that, largely unbeknownst to the industry, engineers within Pitney Bowes tinkered with laser printer technology in the 1970s, and a series of patent applications led to the issuance in 1983 of the patent in suit.

Two aspects of the case stood out to me at the time. First, there was no evidence that HP's engineers were aware of, let alone copied, Pitney Bowes's patent when they designed their REt system (incidentally, even Pitney Bowes's then management appeared unaware of its own patent for some time, as it did not file suite until years after HP began selling the accused printers). Second, there was no evidence that HP's engineers copied any Pitney Bowes laser printer that utilized this patented technology, because Pitney Bowes never claimed to have sold such a laser printer.

Call me crazy, but as a young lawyer with no prior experience in patent law, I wondered how HP could be held liable for patent infringement if it had not copied the patent and had not copied a Pitney Bowes product. Actual copying is an element of a copyright infringement claim, so why would the law be any different here? Moreover, despite the law's oddities and absurdities, perceived or real, it does tend to work out that we only hold people liable when they've done something "wrong" in the everyday sense of that word.

But alas, patent law did call me crazy. In spite of my misconceptions and the misconceptions of many people I've observed commenting on patent cases, copying is not an element of patent infringement. Thus, you might analogize patent law and patent infringement to a game of Monopoly. If by chance you land on "St. Charles Place," and if it is owned by someone else, you pay. It doesn't matter whether or not you knew the property was owned by someone else; it doesn't matter whether or not you knew the perimeters of the property; and it doesn't matter whether or not you intended to trespass. As a result, it is often highly misleading and erroneous to suggest that a company found liable for patent infringement "stole" or "ripped off" technology.

This all makes for a rather dangerous game when you factor in the risks. Defendants accused of patent infringement can be (and often are) hit with astronomical damages awards in the hundreds of millions of dollars, with recent verdicts exceeding $1 billion. Further, courts can permanently enjoin the accused infringer from selling its products up through the expiration of the patent. The risks were too high for HP -- nearly its entire line of laser printers was potentially at risk--and so in a public settlement, it paid Pitney Bowes $400 million to buy peace.

With outcomes like this -- the well-publicized case against Research In Motion is another example -- I cringe a little when I hear patent law and the proliferation of infringement suits hyper-simplistically defended with platitudes about "rewarding invention." Certainly, patent law can reward inventive effort, but not always. I struggle to comprehend how HP's payment of $400 million to Pitney Bowes, or the verdict against RIM, rewarded invention rather than punishing it.

And indeed, much of patent litigation today is entirely divorced from the motivations of patent law; it is simply about making money for the sake of making money, with no associated public benefit. Today, there are companies (you've probably heard the term, "patent trolls") whose entire business consists of shaking down accused infringers with "paper patents" -- patents that were issued but have never been the subject of a product on the market. This makeshift industry is even becoming vertically integrated: law firms prosecute patent applications, law firms acquire the resulting patents, and law firms turn around and file infringement suits for their own financial gain. So the companies who are actually benefiting consumers by designing, manufacturing, and selling products -- often without the slightest knowledge of these paper patents -- are forced to pay a hefty ransom to save their business and keep these products on the market. This is how patent law frequently "rewards invention."

The potential for injustice -- at least I think it's injustice -- is compounded by the fact that patentees generally seek to obtain the broadest patent protection possible. Patent "claims" -- the portion of the patent which serves to define the invention -- tend toward obtuse language that describes the patented product in the most abstract, conceptual language possible. After all, the bigger we draw the boundaries of St. Charles Place, the more likely it is someone will land on it.

And many patented inventions are not "products" at all. The Supreme Court recently heard oral argument in Bilski v. Kappos, which concerns the validity and enforceability of "method" claims that are not tied to a particular machine. Although the USPTO rejected the patent application at issue in Bilski, there are examples of successful applications that would leave you scratching your head. At present, my favorite comes from the above-mentioned Perfect Web case. The patentee in that case applied for and obtained a patent to the following:

1. A method for managing bulk e-mail distribution comprising the steps:

(A) matching a target recipient profile with a group of target recipients;

(B) transmitting a set of bulk e-mails to said target recipients in said matched group;

(C) calculating a quantity of e-mails in said set of bulk e-mails which have been successfully received by said target recipients; and

(D) if said calculated quantity does not exceed a prescribed minimum quantity of successfully received e-mails, repeating steps (A)-(C) until said calculated quantity exceeds said prescribed minimum quantity.

I know, I know, this is all pretty technical stuff -- I should use a semi-colon and parentheses here to indicate facetiousness -- so allow me to use my years of legal training and patent experience to put this in plain English for you:

1. A method for sending emails where you:

(A) find a bunch of people you want to send an email to;

(B) send the email;

(C) see if everyone got your email; and

(D) if enough people didn't get your email, send it again.

I'm not kidding. This company didn't patent any technology behind computers, the Internet, or email delivery systems. Rather, they got a patent on the idea that if you send an email to a number of people, and some don't receive it, you should send it again. Seriously, I think I infringed that patent claim yesterday when I emailed a Tiger Woods joke to my friends. Fortunately, the Court of Appeals for the Federal Circuit just affirmed a lower court decision declaring the patent invalid, so you should feel safe returning to your cutting-edge practice of sending emails to groups of people.

I could go on and describe my ideas for re-writing patent law to ameliorate some of this craziness, but you'll have to wait for my book on the subject. Seeing as it took me 10 years to get around to writing a short blog post, I expect it'll hit stores by 2025.

Until then, I'm adopting an "if you can't beat 'em, join 'em" philosophy. I'm preparing to patent a method for blogging "comprising the steps: (A) matching a target recipient profile for blog readers with a particular target blog; (B) transmitting a writing to said blog readers on said blog; (C) calculating the quantity of comments received from said blog readers on said blog; and (D) if said quantity of comments do not exceed a prescribed minimum quantity of comments, repeating steps (A)-(C) until said calculated quantity exceeds said prescribed minimum quantity." When my patent issues, the rest of you bloggers will just have to watch out.