As a (mobile) SW developer and technologist, the state of the US Patent Office and its process has been and is a concern. In the past I’ve been vocal about this:
As (mobile) technologists we must be aware of and recognize the potential for harm when obvious/weak-patents are granted by the Patent Office. We should be able to trust the patent system, but the system is weak.
Yesterday I read about RunwayFinder vs. FlightPrep (Stenbock & Everson) and it caught my eye, thus decided to do a quick analysis.
I am no lawyer but when you align the facts, which is not a hard thing to do, you can start to see patterns, such as potential patent-trolling or using the USA patent program as currently implemented to allow for weak and/or obvious patents and prevent others from providing access to innovation.
RunwayFinder vs. FlightPrep (Stenbock & Everson) Timeline
0) There is a patent application 09919672 Filed on Jul. 2001 that is referred to by patent 7640098 (their only granted patent). The 672 patent has no “Patent Number” and no “Issue Date”. It is not clear that the 672 has been granted. The 672 I can’t find;
1) On September 28, 2005, “Stenbock & Everson” owners of FlightPrep filed 7640098 titled “Process for generating travel plans on the internet.” This is a divisional patent. The 098 patent has been granted. It makes reference to patent application number 09919672 (Jul 2001) that cannot be found;
2) Also on September 28, 2005, “Stenbock & Everson” filed 20060031006 titled “Process for generating computer flight plans on the internet”, and got revised on February 9, 2006. The 006 has not been not granted;
3) I tried to confirm if the patent 672 is granted or not. Searching for 09919672 on the granted patents DB returns NOTHING. But searching on the Patent Applications (that is, patents filed but not granted) returns ONE patent application: 20060031006 (and not 09919672). That is strange as the 006 makes no mention of the 672 within but are associated somehow;
4) November 10, 2009, patent 20100217520 is filed. Titled “Process For Generating Computer Flight Plans on the Internet” (see similar name); the 520 has not been granted at this point. Very likely 7640098 will be used as a precedent to get this one granted, while getting the opportunity to “fix” any weaknesses on the original patent applications;
5) Nov 3, 2010, an article/announcement on US Fed News Service is published “US Patent Issued to Stenbock & Everson on Dec. 29 for “Process for Generating Travel Plans on the Internet” (Oregon Inventors)”;
6) On Dec 9, 2010, some days later, “RunwayFinder is now offline”.
Observations
Now, I am not sure what claims and filing date is FlightPrep is using against RunwayFinder, but when you combine the facts above and the observations below some things come out as odd , in this particular case, it seems the US PTO process was exploited for patent-trolling purposes:
0) The idea of “Process for generating travel plans on the internet”, in 2005, may not be unique enough. Note RunwayFinder was started in 2005;
1) Seems “Stenbock & Everson” exploited the divisional patent as a loophole for 7640098 to leverage the priority and filing date of 09919672 of 2001. Can someone help verify this? Was the divisional “legit” or intended to workaround the system?
2) How quick it went from step #5 (announcement of patent granted) to #6 (forcing competitors out of business).
FlightPrep claims they offered RunWayFinder a temporary license while they negotiate things, but I understand RunWayFinder position of shutting down if threaten with a ~$3M lawsuit while “negotiating”.
You can read about RunwayFinder now offline (RunwayFinder blog)
-and-
Regarding RunwayFinder shutting down (FlightPrep website)
In the end, mainly the companies with deeper pockets are the major beneficiaries of the current US PTO patent process and the US PTO process can be exploited in ways it should not. Lets not forget where innovation and many of the jobs are coming from today — small tech startups. And patent trolling is evil.
“Stenbock & Everson” Patent History (USPTO) as of Dec 15, 2010
Granted:
7640098 Process for generating travel plans on the internet
Filed September 28, 2005 Revised: December 29, 2009
Divisional patent related to 09919672
09919672 | Jul., 2001 | No patent # | No issue Date
Primary Examiner: To; Tuan C
Attorney, Agent or Firm: Ipsolon LLP
Filed:
20100217520 Process For Generating Computer Flight Plans on the Internet
Filed: November 10, 2009 | Revised: August 26, 2010
20060031006 Process for generating computer flight plans on the internet
Filed: September 28, 2005 | Revised: February 9, 2006
Related to this see Runway Finder Is Going to Fight The FlightPrep Patent and Lawsuit (Aviation Blogs).
ceo
09/919,672 was “Abandoned — Failure to Respond to an Office Action” on 11-09-2009. This was after the patent examiner issued a non-final rejection citing patents 5,999,882 (Simpson) and 6,606,559 (Beckmann) on 02/26/2009. What is odd here is the abandonment should have occurred on 05/27/2009. The successful patent was filed on 09/28/2005.
The filings on the original application were irregular. The examiner rejected their improper disclosure of prior art, incomplete drawings, and claims for being poorly defined (35 USC 112). And that was after several amendments. Not all the claims were rejected before it was abandoned. Rejected was 28, 29, 31-35, and new claims 50-62.
The priority date is 07-31-2001 and this proper under international treaties. This is an exceptionally lengthy prosecution period and I am surprised there is no associated patent term adjustment.
They had the same examiner and patent attorney for both the abandoned application and the patent. The divisional application appears to have been required to carve out the survivable components of the original application. This makes sense given there were a significant number of non-rejected claims and the type of rejections on the original application. A divisional must use the same claims from the parent application. Given they had the same examiner for the concurrent exams, this is very likely to have happened properly. The divisional is required when the original application claims more than one invention.
They are producing a product so it doesn’t meet the definition of a patent troll. http://www.flightprep.com/
I don’t see anything irregular. It appears Runwayfinder needed better counsel or was simply unwilling to negotiate with the owners of the IP. Some critics don’t like patents, some don’t like software patents. They can blame the Supreme Court for the latter. We can blame their economics professor on the former.
P.S. I have no relationship to either companies or no known association with anyone who has a relationship with either company.
Jon, thanks for the follow up and taking the time to do the research…
“They are producing a product so it doesn’t meet the definition of a patent troll. ”
CEO>>Perhaps I was a bit harsh saying that; but the timing of things, the way things occurred, just doesn’t feel right. Based on your research, I have removed the “patent troll” reference. Thanks.
ceo
This is hard-won patent that took too long to prosecute. Runwayfinder could have avoided the situation by negotiating the license while it was still an application. But I have seen businesses, or I should say their owners, decide to ignore a situation as a way to deal with it. It is unfortunate and leads to unnecessary outcomes.
Essentially, patent licenses are an affordable way to protect yourself. I very much recommend you let someone else own the patent. Ownership is an expensive and unpredictable process. Licensing fees generally look like rounding errors and are built into the cost of goods for all legitimate business.
However, I approach companies for licensing and have seem similar behavior. They feel like they have been damaged in some way because they were not the first to invent. Pride maybe. I had one company literally pick and leave the country after a 5 minute conversation. Breaking their leases cost more than paying a license.
The most typical negative response to the patent owner is “I will sue you until you run out of money.” That posturing is generally a sure sign I have more money.
So, while patent trolls get the bad name, licensees are not always pleasant, or ethical, themselves. Their personalized license plates read LETEMSUE. It appears that might have happened here.
A couple more data points. The original 7 claims of the 2001 patent were replaced in their entirety in 2006 with 24 new claims including many new concepts not included in the original application. How is that even possible? This application was rejected a total of 7 times, including one final rejection. It appears that the applicants just wore down the patent examiner.