IP: RE: Joint interview with Todd Dickenson and Tim O'Reilly on paten ts

[Dave Farber <farber@cis.upenn.edu>]

>From: John Shoch <shoch@alloyventures.com>
>To: "'farber@cis.upenn.edu'" <farber@cis.upenn.edu>
>Cc: "'tim@oreilly.com'" <tim@oreilly.com>,
>         John Shoch
>         <shoch@alloyventures.com>
>Subject: RE: Joint interview with Todd Dickenson and Tim O'Reilly on paten
>         ts
>Date: Wed, 31 May 2000 09:34:48 -0700
>X-Mailer: Internet Mail Service (5.5.2650.21)
>
>Dave,
>
>I cannot resist entering the discussion on patents between O'Reilly and
>Dickinson, especially with respect to the work at Xerox PARC.
>
>A.  Excerpts from the "debate":
>
>Tim: ... if you trace back who are the big winners in the industry today,
>many of them, in fact almost all of them, are based on developments that
>came from outside their own walls. You know, they did not in fact invent the
>basis of their business. They have innovated on top of the work of others.
>Microsoft didn't invent the fundamental technologies in Windows -- they
>stole them from Apple, who stole them from Xerox.
>
>Dickinson: Absolutely, and the reason they were able to steal them from
>Apple -- well, I won't comment on what they stole them for -- but the reason
>they were able to take those inventions without license was because the
>people didn't patent them in the first place. Where would Xerox be today if
>Xerox Park controlled that technology?
>
>Tim: I think where Xerox would be today, it might be better for Xerox but it
>would not be better for us as a technological country....
>
>Dickinson: Well, you've got Xerox, or you've got Microsoft. Take your pick.
>
>Tim: I don't think so, because you know Xerox basically owned those ideas
>but did not in fact exploit them -- ....
>
>Dickinson: Anybody is free to make those choices that wants to. Nobody is
>twisting anybody's arm to file a patent application. If Xerox chose -- the
>Human Genome project is a good example, in the government. They have
>affirmatively chosen not to patent their discoveries. They've dedicated them
>to the public. I think that's a noble thing to do.
>
>
>B.  Some comments:
>
>--I am not a patent lawyer, but I have lived through a lot of this -- first
>as a researcher at the Xerox Palo Alto Research Center (Xerox PARC, not
>Xerox Park), later as President of the Xerox Office Systems Division, now as
>a venture capitalist.
>--In general I am a supporter of Dickinson's view that the patent system is
>sufficiently flexible to deal with new technologies, including software.
>The structure is not perfect, but it is a game with pretty clear rules, and
>which lots of people can play.  I like strong patents, particularly if the
>ideas really meet the test of being new and non-obvious (more on this
>later).
>--At Xerox we certainly knew how to protect our intellectual property.  We
>filed and were granted patents on the Ethernet, various mice (dual wheels
>w/shaft encoders, single-ball, pure optical, etc.), and other hardware
>innovations.
>--The case of the Ethernet is particularly interesting.  Having the patent
>protection gave us the flexibility to decide how to engage with the market.
>We wanted to build office systems that used the Ethernet, but we did not
>necessarily want to build high-volumes of Ethernet chips.  So, a BUSINESS
>decision was made to license the innovation on very modest terms, to help
>expand this market.  [In contrast, IBM and other backers of the token ring
>tried to extract per-unit royalties for the patents behind those designs.
>So the Ethernet finally won the standards wars and the market, while token
>ring slipped into oblivion.]
>--HOWEVER, the patent system and the USPTO really let us all down in the
>1970's, when the view was that you could not patent ideas which were
>embodied in software.  The advice we got at the time was that it would be
>fruitless to pursue them.  [In some cases people tried to get around this by
>a) implementing a "software" idea in a special purpose piece of hardware
>(which could be patented), or by b) loading a general-purpose computer with
>the "software" idea, locking it in a box, and trying to patent this
>embodiment.]
>--So we were stuck with copyright protection.  We certainly copyrighted the
>code itself, and the screen images.  Thus, we could copyright the expression
>of our particular "waste basket" for deleting files, but we could not get a
>patent on the general idea of "dragging an object across a screen to a
>delete-object icon."  Thus, Apple (and later Microsoft) could copy the
>underlying idea, and merely had to change our waste basket into a garbage
>can icon (to avoid a copyright infringement).
>--Not surprisingly, we all found this very frustrating.
>--Later, the USPTO decided that they would start to consider filings for
>patents on ideas that were embodied in software -- but by then it was too
>late for Xerox, since the ideas had already been made public.  To compound
>the felony, however, the standard USPTO practice was to consult their
>existing patent filings to decide when to grant a patent.  Not having
>previously granted any software patents, they didn't have much of the prior
>art!  So all sorts of things got through which, in the opinion of many, did
>not really meet the test of being new and non-obvious.
>--Some will argue that people who know about the prior art should just help
>knock down these bogus patents.  Unfortunately, the system has the
>incentives in the wrong places.  Those who have filed the bogus patents have
>lots of economic incentive to protect them.  Those individuals who actually
>invented the idea years before have no economic incentive to dig back
>through their files and jump in, because there is nothing in it for them.
>[Alvy Ray Smith has a great story about coming to the aid of Adobe in
>helping them fight against a bogus patent, by digging out ancient prior art
>which he had done.  Alvy is a righteous and noble soul, but he invested a
>lot of time to help some friends -- with little personal reward (other than
>satisfaction).  We need more people like Alvy, but it is a lot to ask of
>people.]
>--Finally, I will certainly take issue with Tim on where we might be today
>if Xerox had been able to patent these early ideas.  First of all, the
>shareholders of Xerox would probably have more of the wealth than the
>shareholders of Apple and Microsoft.  Second, computer users might have a
>system which had more design integrity, was better integrated, simpler, and
>more reliable.  Tim, you might want to poll old-time users of the Xerox Alto
>and the Xerox Star, and see how those compare with Windows of today -- and
>what those systems might have been like with 15-20 years of continued
>development.  [It is also not widely known that Microsoft was a customer of
>Xerox, buying the Xerox Star system -- and they acknowledged that they
>brought programmers in to look at the machine, to study how we had done
>things.]
>
>John Shoch
>General Partner, Alloy Ventures
>
>
> >Date: Mon, 29 May 2000 11:14:04 -0700
> >From: "Tim O'Reilly" <tim@oreilly.com>
> >To: farber@central.cis.upenn.edu
> >Subject: Joint interview with Todd Dickenson and Tim O'Reilly on patents
> >
> >Link: http://slashdot.org/articles/00/05/28/1435241.shtml
> >Posted by: jamie, on 2000-05-28 22:30:00 EDT
> >Dept: don't-want-to-be-Jerry-Springer-but, topic: Patents
> >
> >    "The O'Reilly Network is running a debate between Tim
> >    O'Reilly and Patent Office Director Q. Todd Dickinson.....