Google asks for re-examination of 2 Lodsys patents

Google asks for re-examination of 2 Lodsys patents

Google has filed a request with the United States Patent on Trademark Office (USPTO), asking that 2 of the patents Lodsys is using the troll iOS and Android developers be re-examined.

“We’ve asked the US Patent Office to reexamine two Lodsys patents that we believe should never have been issued,” Google senior vice president and general counsel Kent Walker told in a statement. “Developers play a critical part in the Android ecosystem and Google will continue to support them.”

While re-examination could get the patents thrown out, the more common result seems to be a narrowing of focus. Likewise, while the ongoing Lodsys lawsuits could be paused pending the re-examination, there's no guarantee of that either.

It's nice to finally see Google take some action, though Florian Mueller of FOSS Patents seems non-plussed:

While I agree with Google's senior vice president and general counsel Kent Walker that those patents should never have been issued, I don't consider those reexamination requests -- unless they will be accompanied by more forceful and useful measures very soon -- a serious commitment to supporting Android app developers against trolls. If this is all that Google does, it's too little, too late, and calling it "half-hearted" would be an overstatement.

Apple, by contrast, has filed a motion to intervene in the cases. Apple, Google, Microsoft and others are already licensed under an agreement with previous patent holder, Intellectual Ventures. There was a theory that the Intellectual Ventures license might prevent Apple et al from trying to invalidate the patents, so either that's not the case or Google is going for it anyway.

Meanwhile, the whole situation continues to cost developers time, money, attention, and sanity. (Which is part of why this matters.

[Wired, FOSS Patents]

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Rene Ritchie

EiC of iMore, EP of Mobile Nations, Apple analyst, co-host of Debug, Iterate, Vector, Review, and MacBreak Weekly podcasts. Cook, grappler, photon wrangler. Follow him on Twitter and Google+.

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Reader comments

Google asks for re-examination of 2 Lodsys patents


Why would Google's motion to re-examine and overturn these patents be half-hearted? If anything, the opposite is true -- Apple's motions to intervene takes the halfway measure of considering Lodsys' patents valid, simply offering the theory that Apple's paid licenses covers Apple customers.
Google, on the other hand, is (admittedly lately) taking the far more aggressive stance that the patents in question should be completely tossed out.
(btw, your link to FOSS patents at the end of the post is empty.)

"Developers play a critical part in the Android ecosystem and Google will continue to support them.”
So they actually like malware to be on the android platform? And ecosystem? HA thats a laugh

What makes it a longshot? Google is pretty good at invalidating stuff in court. Just look at the Oracle case for a recent example. If Google used their down time to swot up on supporting evidence, they could end the whole thing in one fell swoop for everyone.
I don't really follow Florians "odds" argument as to why its automatically a weak action, as it ignores circumstance. It's like saying the odds of having a successful consumer tablet is low, therefore the iPad 3 will be a flop.

Your the dumbass. You'd actually have to try or download from an unreliable source to get Malware on Android.
You're just a hater sir.

Don't worry. This middle-aged "man" has nothing better to do than argue senseless points from his parent's basement. The only time he's not posting irrational comments is when his mommy is heating him up a hotpocket.

Not at all - I'm saying that surrendering half the battle before you even start - as Apple is doing by conceding the validity of this troll's patents, is the half-hearted measure, whereas Google, though late to the party, is poised to fight the entire fight.

If you did even a little research (or perhaps you know, but are trying to make apple look bad) you would know that apple is licensing a group of patents from lodsys which includes the patents in question. And a part of that licensing agreement, like almost all patent licensing agreements, stipulates that you cannot fight to invalidate those patents in court.
Hence Apples argument that they already own licenses to the patents which should cover their developers.
More and more I see Dev. that you are not trying to see whats happening, only "why Apple r bad un Google es teh good geuys." it's pretty sad.

Ad hominem much?
Without stooping to your level:
1) Any portion of any licensing agreement can be challenged.
2) If you are found in violation of that license, and the patents are valid, the penalty is - surprise - a revocation of that license, plus anything else specifically proscribed in the contract. Nothing more, nothing less. Any company willing to risk that contract can mount a challenge.
You may not realize that Google is also a partner in IV, has the same relevant licenses, and faces the same decisions and consequences as does Apple. Google is willing to risk its standing with IV to fight this particular troll, Apple is not.
That is not good or evil; it is corporate strategy. In different circumstances, Apple and Google could reverse positions. I could care less if it is Apple or Google leading the charge against BS patents; I simply want trollish patents eliminated. In this specific case, Google's position does more to advance that cause than does Apple's.

If it is true, as Dev has stated, that Google has licenses from IV, like Apple does, perhaps Google and Apple are going at it from two different directions on purpose. Kinda like "You re-examine the patents, and we'll enforce the license." If Google is successful, Apple benefits. If Apple is successful, Google benefits (if they have the same licenses).

Google and Apple are both large investors in Intellectual Ventures. (Cue perfectly legitimate complaints about Google's hypocrisy wrt patents here.)
While the license terms for the Lodsys patents are not specifically disclosed, since both Google and Apple are IV partners, and both Apple and Google seem to have the same licenses of their own products, in the absence of any other publicly disclosed contracts to the contrary it seems safe to assume that both Google's and Apple's rights to Lodsys patents are derived from their participation/investment in IV.
Apple and Google are definitely going at it from different directions. I prefer Google's path here simply because invalidation will kill the troll, whereas Apple's concessions of validity and arguing of license terms can only, at best, push the troll to a new bridge, where it will survive and attack somebody else. If the roles were reversed, rest assured I would be cheering Apple and booing Google.

As many readers of this blog are likely aware, Lodsys has asserted that many application developers are infringing claims of its U.S. Patent Nos. 7,222,078 and/or 7,620,565 (I’ll refer to them as the Lodsys Patent Claims).
While these patents seemingly expire August 6, 2012 (as a result of the priority claims and the terminal disclaimers that were filed in each patent), Google nonetheless continues its quest to invalidate the Lodsys Patent Claims. It is worth noting, that once a patent expires or is invalidated, it cannot then be infringed by anyone.
In summary, Google initiated Reexamination proceedings with respect to U.S. Patent No. 7,620,565 (Reexamination Control No. 95/000,638) and U.S. Patent No. 7,222,078 (Reexamination Control No. 95/000,639) seeking to invalidate the Lodsys Patent Claims. The patent office adopted a majority of Google’s proposed rejections. In response, Lodsys submitted Declarations seeking to overcome the patent office rejections (and particularly U.S. Pat. 5,965,505).
The Declarations submitted by Lodsys identified a number of reports authored by Daniel Abelow and Dr. Barbara Flagg. Interestingly, these reports were dated Spring 1991 --- which is more than one year prior to the earliest filing dates of the Lodsys patents.
Google, seizing upon this, now proposes a number of additional rejections and enforcement issues based on these reports. For example, Google now proposes that the Lodsys Patent Claims are invalid under 35 USC 102(b), because:

  1. one is not entitled to a patent if the invention was described in a printed publication more than one year prior to the date of the application for patent, and the reports predate Lodsys’s relevant patent application by more than a year;
  2. one is not entitled to a patent if the invention was in public use, more than one year prior to the date of the application for patent, and the Declaration/reports indicate such a system was pilot tested and open to a number of students; and
  3. one shall be entitled to a patent unless the invention was on sale in this country, more than one year prior to the date of the application for patent, and the Declaration/reports indicate Harvard accepted a proposal (arguably prior to Spring 1991) that was successfully completed.

If Google is correct on any of these points, the Lodsys Patent Claims appear to be unpatentable or invalid.
Google also notes that Lodsys never submitted the reports to the patent office despite its obligation to disclose information that may be material to patentability. A violation of this duty with respect to any claim could render all claims unpatentable or invalid.
In sum, the Lodsys Patent Claims seem to expire this summer and Lodsys’s efforts to keep the Lodsys Patent Claims from being invalidated have seemingly opened up a lodestone of new arguments that may be used to mitigate their impact.
Stay tuned.