During the heady dot-com heyday, patent attorney Scott Harris and his buddies set off to patent a far-out sounding "paradigm" for marketing software to customers.
The idea reached the end of the road Friday when the U.S. Court of Appeals for the Federal Circuit determined that it's not worthy of a patent. Citing its recent decision in In Re Bilski, which found that pure business methods aren't patentable, the court ruled that the "Applicants do no more than provide an abstract idea -- a business model for an intangible marketing company."
Harris, who gained notoriety when he was pushed out of Fish & Richardson in 2007 after one of his patents was asserted against firm client Google, said he was disappointed but not surprised.
"The way the patent office and the Federal Circuit is acting lately is that they're really trying to restrict the scope of patents, and this is just one more in a series," said Harris, adding that he may appeal to the Supreme Court.
Patent law observers were also unsurprised.
"When I saw the claims themselves, I said, 'A paradigm? Today? Are you kidding?'" said Mark Spolyar, a patent prosecutor with Baker Botts in Palo Alto.
Harris came up with the idea for a company that would market software made by smaller companies with two of his friends, who are also named as inventors on the patent application: Lewis Ferguson, a securities litigator with Gibson, Dunn & Crutcher in Washington, D.C., and Darryl Costin, a technologist. Harris said they were eating dinner at a Washington, D.C., restaurant when they came up with the plan.
"The Internet was just starting," Harris said. "We were talking about all sorts of schemes that we could make wealth and fame off the Internet."
Harris said he wanted to break new ground with the 1999 application, which tries to patent a "paradigm" for a software marketing company -- a rarely attempted claim.
"A paradigm is basically a way of doing something," Harris said. "I was trying to define a whole new set of claims -- a new style of claims."
Back then, the patent office was more permissive in granting patents, so it wasn't that shocking.
"That was filed in an era where people were just throwing all sorts of claims at the patent office," recalls Spolyar.
Of course, today with cases like Bilski, the courts and the patent office are more conservative about what is allowed to be patented. The patent was rejected by the patent office, the Board of Patent Appeals and Interferences, and now the Federal Circuit.
The court in In Re Ferguson applied the test from Bilski: that a method or process has to be tied to a machine or transform an article to be patentable. The idea for a marketing company does neither, wrote Judge Arthur Gajarsa.
"Although Applicants argue that the method claims are tied to the use of a shared marketing force, a marketing force is not a machine or apparatus," he wrote.
Gajarsa also dismissed the "paradigm" claims, writing they didn't fall into any known category of patentable subject matter.
"Bilski is definitely alive and well and being applied," commented Michael Barclay, an IP litigator with Wilson Sonsini Goodrich & Rosati.
Another judge on the panel, Pauline Newman, concurred but wrote separately to take issue with some of the majority's opinion, saying they were stretching their interpretation of Bilski in the case.
For his part, Harris said he's been happy since leaving Fish. A lawsuit between the two has been settled, and he's now working on his own patents as well as those for clients. Harris said he now has 39 patents and 115 patents pending. He's also suing companies like Sony and Symantec for infringing on his patents. And is the software marketing business still in the cards 10 years later? "We're still actually thinking about it," Harris said.
