Undetectable claims are a huge problem during litigation. This highlights the disconnect between what the patent attorney does during examination – and what the litigator needs to successfully sue infringers.
DataWidget vs Mailchimp
Datawidget sued Mailchimp for patent infringement, but the case was dismissed because the patent claims were undetectable. The patent being asserted is US 10,102,557, a copy of which is here.
Joel Brown’s invention spent 8 years going through the USPTO examination process. The patent was filed on 2010, but did not issue for the better part of a decade. The USPTO granted the applicant an extension of over three years to the patent term because of the delay.
Sadly, the patent is very weak for a number of reasons.
- The independent claim is very long. This means it is narrow, and it means that it is easy to design around.
- The claim requires multiple actors, including database providers and ecommerce vendors. This means the infringement is very hard to enforce from a legal tactic standpoint.
- There are *zero* references cited by the applicant. This means nobody did a patent search, and the patent has a huge surface area for challenging the validity. It also raises the possibility that the patent
DataWidget sued Mailchimp and alleged infringement, but only said that the infringement was based on “knowledge and belief” that Mailchimp must infringe. However, DataWidget had no access to the internal workings of Mailchimp and they could never “look under the hood” to conclusively determine whether Mailchimp actually infringed.
DataWidget admitted that they did not have *actual* evidence of infringement and only were guessing.
They are based on Plaintiff’s deep experience in the data and web-to-print industries and its belief of what happens “behind the scenes” in order for Mailchimp to offer the services it does in the manner that it does. DataWidget had no access to Mailchimp’s technical documents, software code, or server logs prior to filing its complaint, so it makes sense that some allegations would be made upon information and belief.Plaintiff’s Response page 12
The Court was unimpressed.
DataWidget alleges that Mailchimp’s website allows customers to access third-party seller data, but only speculates as to how Mailchimp accomplishes this. This is fatal to DataWidget’s claims. The means by which customers access third-party data is the heart of the ‘557 Patent, and DataWidget cannot allege infringement without factual allegations showing how Mailchimp gives its customers this access. The sheer possibility that Mailchimp uses a software that functions the same way as the Widget is insufficient to state a claim for patent infringement.Court Order, page 9
Undetectable claims are fatal to software patents.
It is very easy to get software patents, notwithstanding the nonsense about “patentable subject matter” and 35 USC 101. Software always has been, and forever will be patentable.
In order to get the patents across the goal line, patent attorneys will load up the independent claims with lots of limitations. This makes the patents very narrow, but also has other problems.
When a limitation is undetectable, it cannot be enforced. Period.
Conflict of interest of patent attorneys.
Patent attorneys are given the task “get a patent.” Their duty of care is only to get a patent, not to get a “good” patent.
This is why the role of in-house patent counsel is exactly opposite of outside counsel. The in-house counsel must live with the patent after it issues. The outside counsel does not.
Outside counsel’s job is merely to get a patent. In-house counsel is required to make sure the patent will survive litigation, that the patent meets a real business goal, and that the patent will add value to the company.
If you hire outside counsel, you are responsible for the quality of their work. Just because they are from a “big firm” does not mean their work product is good. In fact, most of the time, Big Law hurts startups more than they help.
The story of DataWidget’s lawsuit is just one example of how undetectable claims are a problem. This happens when there is nobody minding the store and outside counsel is left to do whatever they want.
I don’t know the relationship between DataWidget and the patent attorneys who are working on the patents. I don’t know if DataWidget had in-house counsel or not, nor if the patent attorney was working miracles to get the claims they had, or if the patent attorney was “mailing it in” and not putting up a good fight with the examiner.
The lesson learned here is that undetectable claims are a huge problem during litigation. It also highlights the disconnect between what the patent attorney does during examination to get a patent across the goal line – and what the litigator needs to successfully sue infringers.