This is a survival guide for app developers who are in the midst of the Lodsys patent war.
How to survive charges of infringement
To that end I enlisted the help of patent attorney Wei Wei Jeang. Wei Wei is a partner at Andrews Kurth LLP. She has a computer engineering degree from the University of Illinois at Urbana-Champaign, and has been practicing patent law since 1989. Her portfolio includes companies of all sizes, from individual inventors, to Fortune 500 clients. She has experience both protecting her clients' intellectual property, as well as defending them against allegations of infringement.Francis: Can you explain in non-legalese what the main intellectual property or properties are relating to Android and iPhone apps that Lodsys claims to own? WW: Currently two patents are involved in the lawsuit: US 7,222,078 and US 7,620,565. What the lawyers fight about in a patent lawsuit is the claim language because the claims describe the metes and bounds of the invention. The claims are the legalese in numbered paragraph form at the end of the patent and are usually preceded by "What is claimed is:." Because this is central to your question, I am going to risk turning off some of your readers or putting them to sleep by copying the first claim of the '078 patent below with my comments.
The '078 patent:
This claim is about a system that has a "unit of a commodity" with a "user interface." This is very broad and can be interpreted to cover a wide range of electronic devices, including smartphones, PDAs, tablet PCs, laptops, PCs, handheld gaming devices, etc. As with conventional user interfaces, it is "configured to provide . . . two-way local interaction" between the user and the unit, and in particular can "elicit ... information about the user's perception of the commodity." The unit further has a memory that can store the "results of the two-way local interaction," and "a communication element" that can relay this result to "a central location." The last element is "a component" that can manage and collect the results of interaction from multiple users.Francis: As a developer I frequently hear that the Lodsys infringement claim involves any "in-app purchase." Is this what the patent language is describing? WW: The patentee describes in the '078 patent that "[a]s envisioned by this invention, as customers and vendor employees interact to produce continuous improvement, the marketplace may be e-engineered into an interactive development environment ...." However, as the language in the claim is very broad, it can be construed to cover virtually any kind of "local interaction" a user has with his/her electronic device, as well as any kind of "perception of the commodity" that is relayed to some central location. To evaluate for infringement and invalidity, all the claims in the patent must be considered. Francis: What steps should an individual developer take when they receive one of these letters from Lodsys? WW: First of all, this is my personal opinion and your readers should not take this as a legal opinion for their own specific situation. I think the wise thing is to always consult a patent attorney when you get one of these letters. Many patent attorneys are willing to meet with a new client on an initial consultation without charge. If you have received a letter, that means you are on Lodsys's radar screen. These letters should not be ignored, especially since Lodsys has carried out the threats by filing suit. It has been reported that Lodsys is seeking 0.575% of total revenues as royalty, so each developer should decide for his or herself whether they want to just pay this money and make Lodsys go away or make a principled stand against Lodsys.
Typically, a patent lawyer would advise that the recipient of such a letter to send a letter back to Lodsys to state that legal representation has been engaged and that the lawyer is taking steps to analyze the patents. This may buy more time (although this is not guaranteed). More time is good because Lodsys is currently entangled in other lawsuits and proceedings that may yield results effectively letting app developers off the hook.Francis: I'm curious what if any role I should attempt to engage Apple/Google in if I find myself ensnared in Lodsys proceedings? WW: In addition to consulting with a patent lawyer, the developer should also contact Apple and/or Google, as both companies have gotten involved in the lawsuit, where Apple asked to intervene in the suit and Google asked to reexamine the '565 patent. These companies hopefully will not leave the developer community hanging and may have further instructions for the developers. Both Apple and Google have sufficient resources to force Lodsys conclude these threats, whether by succeeding in court, in the USPTO, or by making additional royalty payments under the license agreements between the parties. Francis: Is there any end in sight to this type of threat to app developers? WW: Various entities are engaged in efforts to defeat the Lodsys patents. One result that would benefit all alleged infringers of the Lodsys patents is a declaration either by court or by the U.S. Patent and Trademark Office that one or more of the patents is invalid. One primary way to invalidate a patent is to uncover printed publications that pre-date the patent. An invalid patent cannot be enforced.
In June, ForeSee Results, Inc. filed a declaratory action lawsuit against Lodsys in the Northern District of Illinois asking the court to declare that there is no infringement and that four Lodsys patents, including the two discussed here, are invalid. A declaratory action is comparable to firing the first shot across the bow and gives ForeSee Results the advantage of choosing which federal court it wants to litigate in, if its preference is to not be engaged in the piney woods of Eastern Texas (where Lodsys's official office is located and where it's filed its lawsuits).
Additionally, another company has also become involved. Article One Partners has reportedly put out a $5,000 bounty for high quality prior art on three of Lodsys's patents. The prior art Article One Partners finds can be used in the current lawsuits or additional reexamination proceedings.
Additional notes from Wei Wei
I hope that readers find Wei Wei's advice and insight as informative as I did. She asked me to include several additional notes as a matter of completeness.
- Attorneys have to pass a special additional examination to be registered to practice before the USPTO and be able to call themselves patent attorneys. Be sure to check an attorney's credentials.
- Although it has been widely reported that Google has requested reexamination of both Lodsys patents, the USPTO records show reexam only of the '565 patent has been requested, and the request for reexamination has not been made public, nor has it been granted as of the morning of Aug. 19, 2011.
- Since the reexamination filings have not been made public by the USPTO, I was not able to verify reports that Google was the entity that filed the request for reexamination.
Talking with both Diego and Wei Wei was eye-opening for me. The number of app developers receiving letters from Lodsys claiming patent infringement is on the rise. Diego's story is proof that you don't have to be part of a multi-million dollar organization to find yourself standing in the middle of this legal battlefield. At the same time, the practical advice Wei Wei provided leaves me feeling less vulnerable and ill-equipped to handle the situation. Her ability to bridge some of the gap between my world of microprocessors, and the alien world (at least to me) of lawsuits and legal jargon, was extremely valuable. I appreciate both Diego and Wei Wei taking the time to talk to me and my readers.
It's obvious which side of the fence I fall on when it comes to this issue, but if you want to learn more about Lodsys's point of view on this subject, you might consider reading the Lodsys blog.
For more on this topic, check out these related links:
- Apple tries to intervene in Lodsys lawsuit (CNET News)
- Lodsys patent target bites back (CNET News)
- Lodsys vs Angry Birds (ZDNet)
- Google Steps Up to Defend Android Developers From Patent Lawsuit (Wired.com)
- Apple to Lodsys: you'll have to go through us to sue iOS devs (Ars Technica)