Thursday, May 17, 2012

The Art of Prior Art

We have come to love the art of excellent prior art. Finding really good prior art is one of those serendipitous search moments. Just doing a prior art search makes you smarter but when you find an elegant, amazing piece of prior art it's great. The best prior art quests tend to be part of invalidity efforts with big money, big principles, or both at stake. The one we discuss here is a big principle example.

A refresher on what USPTO says about prior art:

Under 35 U.S.C. 102(b) states: "A person shall be entitled to a patent unless -- (b) the invention was patented or disclosed in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States."

Excellent prior art was found by the people at Public Patent (PubPat) Foundation at Benjamin N. Cardozo School of Law; a not-for-profit legal services organization whose mission is to protect freedom in the patent system. says that they represent the public's interest against undeserved patents and unsound patent policy. We are nonpartisan about their mission but impressed by their finely honed prior art skills.

In September of 2008, Pubpat asked USPTO to re-examine a patent for photomosaic images (6,137,498) The patent was filed in October 27, 1997 based on a provisional application dated January 2, 1997. The patent was granted in October 24, 2000. The reexamination appears to have triggered when the inventor, Robert Silvers of Cambridge, Mass. was sending cease and desist letters and asserting his patent against individuals, small businesses, and against the GIMP open source software program. On June 11th, 2009, PubPat received a copy of the USPTO Office Action invalidating 41 of the 63 claims including all of the independent claims. While the fight wasn't totally over, this was a major victory.
What was the primary piece of prior art cited in the USPTO Office Action? The cover of the "Being Double Digital, The Media Lab at 10" November 1995 issue of WIRED magazine. The cover featured a photomosaic portrait of Nicolas Negroponte. This piece of prior art was actually created by Mr. Silvers himself. A piece of art previously submitted to USPTO.
To add to the sublime nature of this particular piece of prior art is the fact that Mr. Silvers' bio cites the Media Lab under his educational credits. Mr. Silvers published a paper titled "Mosaics: Putting Pictures in their Place". The paper was submitted to the Program in Media Arts and Sciences, School of Architecture and Planning as part of the requirements for a Degree of Master of Science in Media Arts and Sciences at the Massachusetts Institute of Technology (MIT) That paper, published in 1996. The document itself states "In 1994, he entered the Media Laboratory at Massachusetts Institute of Technology in Cambridge. The very institution that the WIRED magazine profiled in the November 1995 issue that was used to invalidate Mr. Silver's patent. It's interesting that Mr. Silver's own work is not cited on the patent document.
Mr. Silver passes the patent number test. Mr. Silvers' web site includes his patent number on the bottom of every page. Perhaps Mr. Silver will need to modify his website now.