The EFF says the Patent Office is using the wrong standard and awarding too many inappropriate software patents.

By Charles Babcock

InformationWeek

Sep 4, 2006 12:00 AM

The opponents of proliferating software patents who see them as a threat to open source software may finally get their day in court--the U.S. Supreme Court.

The critics have been itching for this opportunity for years. But the Supreme Court rarely reviews patent cases, which usually are decided by federal appeals courts. The top court, however, has agreed to hear three patent cases this fall, though only one relates to the impact of patents on open source software.

The case involves two brake pedal manufacturers. The Electronic Frontier Foundation, a legal advocacy group, has filed a friend of the court brief in the case of KSR International v. Teleflex. The two parties will be arguing whether Teleflex has patented the right to put electronic sensors on brakes. The EFF has signed on to argue that the U.S. Patent Office`s increasingly loose grants of patents is hurting innovation in many fields, such as electronic brake sensors, but that it`s particularly worrisome for open source code development.

Stop The Surge

Patents are meant to protect innovations that represent inventions and breakthroughs, not steps that ``a person of ordinary skill in the field could consider obvious,`` says Corynne McSherry, an EFF attorney. Recent decisions by the Circuit Court of Appeals have forced the U.S. Patent Office to change its standards for patents, resulting in ``a surge of software patents`` that often cover what McSherry says is commonplace functionality. The EFF wants the Supreme Court to rule that the Patent Office should use a stricter standard based on a 1966 decision, Graham v. John Deere.

Legal Arguments

Electronic Frontier Foundation`s brief contends:

Patent Trolls On The March They realize ``the probability of gaining approval for a patent on an obvious innovation is quite high.``

Open Source More Valuable Projects share knowledge ``significantly more valuable than that disclosed in a patent because patents do not require disclosure of source code.``

Growth`s At Risk ``Holders of bogus obvious patents, assisted by the Federal Circuit`s improper test, may limit`` the growth for which open source is poised.

Not everyone agrees patent standards have gotten too loose. In June, FireStar Software sued Red Hat after its acquisition of JBoss, charging in a Texas court that JBoss` open source object/relational mapping software, called Hibernate, violates its object/relational mapping patent. FireStar asserts that it patented the entire concept of object/relational mapping, not merely a specific method of doing so. But facing even a bad patent in court can be costly. Research In Motion, maker of the BlackBerry, was deemed in violation of five NTP patents by a federal jury in 2002. With its wireless e-mail technology at risk, RIM settled the case in March by agreeing to pay NTP $612 million, a pact that stuck even though the Patent Office a few days later overturned several NTP patents.

Open source advocate Bruce Perens claims FireStar illustrates how companies keep their patent claims vague. ``It`s a practice to capture the maximum range of possible infringement,`` he says.

Even more damaging, he says, is the potential of patent filers to scare off would-be open source innovators by making claims against existing open source projects and users of their code. A Berkeley physics teacher, Robert Jacobsen, loves model railroads and built the Java Model Railroad Interface as open source code for fellow hobbyists. In March, he received an invoice for $203,000 from KAM Industries saying it had a patent on digital methods of controlling a model railroad command station, and it was seeking payment for all the times Jacobsen`s code had been downloaded. Jacobsen is fighting the invoice in court and asking that the KAM patent be voided.

Defending against such claims can put a small company out of business or depress the stock price of a sizable one like Red Hat. It costs on average $3 million to $5 million to mount a legal defense, according to the annual survey of the American Intellectual Property Law Association. But Perens is more worried about open source developers and small companies that base their business on open source. ``It`s no longer possible to write a program of complexity without infringing on what someone claims is their established patent,`` he says.

As such claims mount, they will cast a chill over more open source companies and probably the projects themselves. ``As a society, it`s a terrible mistake to let that happen,`` Perens says. ``We`re going to kill the golden goose.``