Thursday, December 03, 2009

Perfect Web -- When a patent is so obvious even a caveman could invalidate it

Now, I don't take very seriously the press that the patent system is "broken" and that the PTO is so overburdened that they'll let you patent a peanut butter sandwich. [Oh, wait, they did.]

But I have a hard time believing that a patent this dumb actually made it all the way to the Federal Circuit.

The plaintiff, Perfect Web, managed to get a patent on a bulk email distribution system which had four steps:

1. Match the target profile with a group of target recipients
2. Send the emails
3. Count the emails that were successfully received
4. If you don't get as many successful hits as you want, send out the emails again.

Remember, this is a patent, which would give Perfect Web the right to stop anyone else from doing this and to sue infringers for damages.

On top of everything else, the first three elements were held to be within the prior art, meaning that the patentability of this "invention" rested solely on the fourth element -- if it doesn't work the first time, try again.

Thank God for Judge Ryskamp of the Southern District of Florida, who threw this patent out on summary judgment. Perfect Web, however, appealed to the Federal Circuit.

The Federal Circuit started out its analysis by invoking the "common sense" standard from the Supreme Court's KSR decision, which makes it unnecessary to cite to particular art which would make a patent obvious if the court finds that "ordinary skill and common sense" would have led a person of ordinary skill to develop the claimed invention. The court found that what it described as the "try, try again" element would have been obvious as a matter of common sense, that performing the first three steps more than once was "one of the inferences and creative steps that a person of ordinary skill would employ" and that no expert testimony was necessary to invalidate this patent.

If you are interested in an excellent analysis of this decision in light of KSR from someone whose perspective is different than mine (but who comes to the same conclusion -- that this patent is dumb) go over to IPWatchdog.

The court also rejected Perfect Web's argument that the patent satisfied a "long felt unmet need" because it could not show that the supposed "need" was "long felt" or that the invention even met that need. Indeed, Perfect Web could not show that the invention actually reduced marketing costs, its supposed purpose.
So, I suppose the Federal Circuit comes through again. But it's a shame they had to waste their time on this one.

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