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.....