EFF triggers sixth re-examination
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     16 January 2009

The San Francisco-based Electronic Frontier Foundation (EFF) has won its sixth consecutive bid to have a patent re-examined at the United States Patent and Trademark Office (USPTO).

IP Management/ Patents

The group's success stems from moves in October to urge the USPTO into taking a fresh look at Stanley Jungleib's patent for a digital music package. As IP Review Online reported that month, several pieces of prior art had thrown the patent's validity into question. Now that the patent is to be reviewed, it may have its claims narrowed or be cancelled entirely. Either result would have a huge impact on the IP behind competing innovations. The EFF sees the USPTO's decision to re-examine as a major coup in its Patent Busting scheme to overturn 'bad patents'.

A system for making, swapping and playing music files, US patent 5,886,274 was granted to Jungleib's employer Seer Systems in March 1999. Chief of the prior art examples cited by the EFF was a book that Jungleib published four years earlier called General MIDI, in which he outlined technical features that later became claims of the '274 application. His writings inspired a welter of digital music systems.

US law firm Day Casebeer supported the EFF in its efforts to secure the re-examination. Replying to the request, the USPTO said: 'In view of the prosecution history, it is considered that the evaluation of a prior art reference (or combination of references) that teaches or suggests a composition system capable of creating or playing a sound-source … would raise a substantial new question of patentability.

' … a reasonable examiner would consider evaluation of the General MIDI reference as important in determining the patentability of the claims. As such, it is agreed that the General MIDI reference raises a substantial new question of patentability with respect to the Jungleib patent.'

Welcoming the USPTO's decision to re-examine, EFF senior IP attorney Michael Kwun said: 'Mr Jungleib encouraged others to use the techniques he described in his book, and sought patent protection only after those ideas had entered the public domain. It's unfortunate that Seer Systems didn't call Mr Jungleib's book and the other prior art we cited to the PTO's attention before the patent was issued.'

Day Casebeer technology litigation specialist Paul Grewal praised the USPTO's stance. 'Unmeritorious patents can place significant barriers in the way of innovation in the digital age,' he said. 'The USPTO quite rightly concluded that there are substantial questions of patentability raised by our request, and we look forward to the USPTO's ultimate decision on this patent.' While Seer still has an opportunity to appeal, statistics are not in its favour: the USPTO has narrowed or invalidated around 70% of patents put forward for re-examination.

In a statement, the EFF said that five more patents are under review at the USPTO thanks to the Patent Busting scheme. Its current strike-rate is bound to draw greater attention to these five cases. In order to build its argument against the '274 patent, the EFF enlisted the services of Harvard Law School students. Working out of the university's Cyberlaw Clinic – based at the Berkman Center for Internet and Society – the students conducted extensive research into the patent’s background and drafted the EFF's official prior art description.