How to break a patent in 5 minutes

Patents were invented in order to encourage innovation. They are supposed to protect inventors that spend money in research or discoveries made by innovative thinkers. Without them, many would argue, the United States would not have ever seen the industrial or digital revolutions.

However, there are enterprises that using the patent system in a way that is killing innovation. We all hear about enterprises using patents as defensive mechanisms for their own patent infringement issues… Company A sues Company B for infringement – Company B sues Company A back for other patents they own, the lawyers get a big fat payday while consumers are ultimately left holding the bill.

But what is worse are the companies that patent something ridiculous and then simply use the patent as revenue stream to sue other companies for infringement.

A few years back, Macromedia launched a feature in the Flash player that allowed you to print something that was off-screen. A few months later, a company called Post Future patented the ability to print coupons using the web even thought the end user could not see it. In other words, they patented a feature built into Flash (they vigorously and successfully defended the patent many times over).

But today, as a part of our SODA membership, I just became aware of a patent that has my blood boiling.

Patent 6,351,265

PixFusion holds the patent for swapping heads in a photograph digitally. The patent is 23 pages long.

Lets walk through the abstract really quick:

A method of providing normalized images, comprising the steps of:

(a) receiving an electronic representation of an image including a head;

(b) extracting the head from the image;

(d) rescaling the head to a plurality of desired sizes; and

(e) outputting the plurality of rescaled heads as printed images on a medium.

So, I decided to see how long it would take me to actually do this.

First – receiving an electronic image including a head

I simply took a picture of Shannon and Buffy using my iPhone, and then pulled (received) that image using iPhoto…

Second- extracting the head from the image:

There are lots of options for this in photoshop. I chose to duplicate the background onto layers, then erased the background away (notice my awesome photoshop skills)

Third & Fourth – determining the size of the head and rescaling

This was quite difficult. Because Buffy’s head is slightly bigger than Shannon’s, I had to use their noses and mouths to resize their heads to fit their bodies. The patent calls this process “using reference vectors”:

The method according to claim 1, wherein said head has a reference vector and said body has a reference vector, further comprising the step of combining said head and said body to obtain a predetermined multidimensional relationship of the respective reference vectors of said head and said body.

Finally: Outputting the image

This one was the most difficult. I had to… wait for it … print the image. Here’s proof that I did it:

All in all, it took me 5 minutes to complete the task. Ironically, the patent claims that this process is quite complicated, requiring unique skills and equipment (it was approved in 2002 – so scanners, digital cameras and photoshop all existed at the time)

I realize that this may seem funny to those of you reading this, but the fine folks at PixFusion are actually aggressively pursuing their rights under this patent. For agencies, it is a nuisance at best, a huge resource hog at worst. Patent squatters are taking advantage of the lack of resources and education in the patent office. There is NO value in the world for holding this patent.

I hope to hear back from them, and I promise to include any communication with them in my Blog

…
some of my favorite excerpts from the patent:

In the following description, the term “head” is intended to include not only the head of a human being with its hair (however long) face, ears, etc., but also any and all appurtenant accessories such as a hat, glasses, hair adornments, jewelry (earrings, etc.) and the like. The term “body” as it is used herein, is intended to include the body of a human being, animal, fish, etc., (either real or fictional) including not only the torso, arms, legs, tail, fins, etc., but also any and ail appurtenant clothing, shoes, jewelry, and the like. The “body” may also be another environment in which an image of a head is appropriate, such as a window, television screen or portal. The image of the head and/or body may be obtained from a “real” head or body, respectively, either photographically or by electronic image scanning, or from an artistic or computer generated rendering thereof

…

In order to facilitate alignment of the head and body, and relax the necessary tolerances for an aesthetically pleasing result, a collar may be provided on the body immediately adjacent to a location of said superimposed head. Alternately, a neck portion may be provided on the head, with a reference point on the neck. A soft pink border may be provided around the head.

…

According to a still further object of the invention, the images may be associated with audio information, such as spoken words. These words may include, for example, the name of the person whose head is included in the image.

…

In another embodiment, the body part images may be interchangeable for placement with a range of different background images, in the manner of the known “Mad Libs”, allowing humorous combinations of foreground and background images. In this case, the various anatomical body part images may be of the same size yet differ in other additions or characteristics, as discussed above.

Posted on January 22, 2010 at 2:57 pm in Tech News | RSS feed | Respond | Trackback URL

17 Comments to “How to break a patent in 5 minutes”

John Wilker
January 22, 2010 at 3:11 pm

Sigh. Further proof of the broke-ness of our patent system :(
anthonyfranco
January 22, 2010 at 3:19 pm

Just received a link to a related ADWEEK article from a friend in SODA:
http://www.adweek.com/aw/content_display/news/digital/e3i0d52172227325f28ce4c3b683da9ba5f
inventionaddict
January 22, 2010 at 5:32 pm

This patent issued in 2002 meaning the idea was probably pre 2000. The article in ADWEEK references the Elf Yourself application (powered by JibJab). I think there is more to the patent than you say.

I agree the patent system needs help but you are oversimplifying this.

Regards,

Stephen
http://www.inventionaddict.com/
anthonyfranco
January 22, 2010 at 5:46 pm

inventionaddict :

You failed to make an argument that the “invention” I listed above should be patentable… I broke the patent, no? Doesn’t that seem ridiculous ?

There are thousands of patents just like this one – every project on the internet somehow infringes on some kind of patent.

Someone even has the patent on using a single pixel gifs to track email opens. That is an idea, not an invention.

I know some large software companies that entice their employees (to the tune of $1,000) for every patent they can get filed, and an additional $1,000 for those that are accepted. The reason? I know several people that on on patents that say they are ludicrous. In my early days of technology, I was listed on a patent to create dynamic email messages.

Most tech execs know that you can get patents through the system for almost anything. All it requires now is a good creative lawyer, a slight spin on something, a couple weeks, and a few thousand bucks.

The system does not “need help” – it needs a total overhaul.
Matt Griswold
January 22, 2010 at 7:26 pm

The USPTO needs to educate themselves AND begin soliciting experts in the field to better evaluate the validity of this stuff. I am ALL for the patent system; but this casts a dark shadow.
Rob
January 23, 2010 at 8:12 pm

One of the problems is the USPTO is not adequately funded and staffed.
justaguy
April 6, 2010 at 7:15 am

I’m afraid Anthony is not oversimplifying. There really is nothing in the patent. A patent examiner made a mistake, and as a result real companies and real people are being fleeced for millions by this legal extortion scheme.
Nor is there any real recourse for a small company (i.e. revenues under say 20M) – litigation costs in the US for defending against a patent lawsuit are 2M to 5M. The process can be expected to take 3 to 4 years. The management distraction involved, and loss of business (as your company’s technology comes “under a cloud”) – can cost more. So a small company cannot possibly afford to stand up to its rights & is vulnerable to extortion regardless of whether it actually infringes a patent.
compositor
May 19, 2010 at 9:58 am

While I want to agree with the conclusions, there are a few holes in the analysis. First, you did not “break” the patent, you merely showed someone how to infringe the patent. To break the patent you need to show references that do the same thing that pre-date the patent. This patent’s filing date was in 1993. I want to believe there are references out there, but you have to keep the date in mind. This was pre-Forrest Gump after all and digital compositing was hardly mainstream.
anthonyfranco
May 19, 2010 at 10:36 am

You are right, the title probably should have been “how to infringe on a patent in 5 minutes” -

My point was that this should not be patentable. I understand how “prior art” patent law works. I don’t care that someone came up with how to cut and paste heads on a photo in 1993. I don;t care that Amazon implemented one click purchase. I don;t care the Post Future produced the first Flash coupon. These are simple features enabled by the platform, not true innovations.

I still am unclear, where is the hole in my analysis? Do you really believe photoshopping heads should be patentable? Was this really an innovation or was it simply someone realizing what Photoshop was capable of and then deciding to make a buck by patenting the use of it.

If this abuse of the patent system were alive 100 years ago, the invention of the printing press would have lead to patenting the use of the color cyan and the color magenta on paper run through a press.
Anonymous
June 11, 2011 at 8:20 am

The scope of the patent protection isn’t defined by its abstract, but rather by its claims. It’s likely that the abstract represents the originally-filed claims, which were then amended (and narrowed) during prosecution. Hence, claim 1 requires:

1. A method of producing an electronic image of a subject, said method comprising the steps of:

(a) providing an electronic representation of a pixel image of a head of said subject from an external source;

(b) providing a background image containing a body configured to adjoin said head;

(c) producing, from the electronic representation, a set of digital representations defining an actual size of said head in said electronic representation;

(d) providing a set of digital representations defining a desired size of said head corresponding to said body;

(e) processing said electronic representation of said image of said head in dependence upon the size information defined by said actual size and said desired size, representing said scanned image of said head scaled to said desired size; and

(f) outputting said head, electronically rescaled to said desired size, superposed on said body.
Don
August 18, 2011 at 6:41 am

I once heard a woman from India criticizing the US patent system. I think she said you could fold a piece of paper into 10 different ways, and the USPTO would allow you to claim 10 patents on it. What she said was essentially correct; The USPTO doesn’t grant patents based on whether or not there is creative insight in the idea, but on whether or not it has ever been published. Things that 10,000 software engineers had already thought of because no special creative insight was required became patented due to this inherent defect in the US patent system. This allowance IS the defect, and it will be the demise of the US patent system because it creates an untenable situation where (and we’re already seeing it) there is a virtually infinite number of claims for little more than a new screw here, and another whistle there. Searching the patent system, not for novelty, but for such an endless array of configurations is overwhelmingly time consuming, expensive, cost prohibitive, and more and more likely to end up not finding an established claim until tens or hundreds of thousands of dollars have been spent. This is never what the founding fathers intended when they used the word “invention.”
Anonymous
September 13, 2011 at 6:55 pm

Golly! Obviously no one here has ever tried to patent an invention. I have, and it was no free pass by any means. I had thoroughly researched previous patents and the field of the invention and described all that in my patent applications. The patent examiner came up with a list of what he thought was “prior art” (“the processes, devices, and modes of achieving the end of an alleged invention that were known or knowable by due diligence before and at the date of the invention” dictionary.com) which was comprised of patents not only from the USA, but also from overseas…places I hadn’t even thought of looking. I did manage to show how my gizmo was novel, however. It was useful, which is another requirement. And the “non-obvious” requirement is a tricky one, as many things become obvious once explained.
It was the furthest thing from simply adding another screw or or folding a piece of paper or any other trivial development you might care to dream up. I don’t doubt some patents get through that never should have. I love the one for a laser used as a cat toy, a use I saw many people discover independently long before the approved patent was applied for.
I read seemingly endless troves of letters where people who never created anything rail against patents and copyrights. And yet want the benefits of the creators efforts. If I didn’t see some possibility of perhaps profiting someday on my efforts, I’d be doing something other than spending hundreds of hours and thousands of dollars creating new things.
My main beef is how expensive it is to defend a patent which means I have to align myself with a large company or anyone could infringe at will. I licensed both of my patents to huge companies (partly for their legal department and partly because they have manufacturing and distribution all set up).
My secondary beef is that the patent examiners are overworked and underpaid, meaning they can’t spend enough time examining applications and also the smartest engineers don’t pray to get a job there. They aren’t necessarily Einsteins. So part of my job was to assume I had to educate whatever examiner I got dealt. Congress pockets whatever “extra” money the patent office makes, which I wish were devoted to hiring better people and giving them better equipment.
The bright spot is that it is amazing what hasn’t been invented yet. My inventions may not on the order of the light bulb or the transistor, but they are new, useful and non-obvious. Sometimes a particular arrangement of parts has an unexpected benefit which puts the lie to the comments of those who never created anything new and try to criticize those who do.
Obvious “inventions” are not inventions. Old “inventions” are not inventions. But what is obvious and old in hindsight may not have been at the time of the invention. I recall fondly trying to hire an engineer to help me and being told over and over that what I wanted to accomplish was either impossible or too dangerous. After I spent years educating myself and literally blowing up or melting a fair number of electrical or electronic parts, I managed to come up with a device that did what I had set out to do…and then the very same engineers said such things as “Huh! How can that be an invention? It’s obvious!”.
If ignorance is bliss, some of you commentators must be ecstatic.
Anonymous
September 13, 2011 at 7:23 pm

I went to read some of the (very long) patent the author complains about and part of the Background section it reads “It is known to produce pictures of human subjects with the head of one human being superimposed upon the body of another human being, animal, fish, etc. This superposition is normally accomplished “mechanically” by cutting around the outline of the head of a person shown in a first photograph and applying this head, in the proper position and orientation, to a body in a second photograph. The resulting “mechanical” is thereafter photographed and/or scanned electronically to produce a third photograph or electronic image. Electronic implementation of this process is also known, where the head is electronically traced and superimposed. ” Poor Anthony, he does exactly what the inventors say is already known, and then he complains that it is already known. The inventor is not trying to patent what is already known.
If anyone cares enough to read in detail, it becomes obvious this patent entails much more than just cutting, resizing and pasting. Among many other creative ideas, it includes taking multiple images of a face in different positions and then using them to progressively place the new face over an existing face, meaning one could have a movie of someone turning in a circle, and then superimpose a new face which also turns in a circle. I’m not saying that was necessarily new at the time but it might have been. I am also not saying that is all the patent claims, I am just trying to describe my limited understanding of how complex this patent is relative to the way it was described (incorrectly) by Anthony. Read some of the examples in the patent to see what the inventor actually is claiming his invention can do.
It leaps out at my how the inventor is describing using a Targa computer, as that brings me way back to the primitive and expensive computers that were around when i took a computer art class at an art college many, many years ago. Photoshop was not common in the Targa days, nor were PCs generally available that did much more than draw jaggy lines and basic shapes. It makes me suspect the inventor had been working on this for some time before submitting his patent application. If an inventor can show he has been diligently working on an invention for years, he can then apply for a patent and claim to be the rightful inventor, even if someone else patented it in the intervening years. That is the meaning of first-to-invent. Now, I don’t see any other intervening patent being described by Anthony, so that angle is moot. I am just saying it’s possible the inventor had worked on this invention for years before he applied for a patent and would still be the rightful inventor and deserve his patent and the rights it involves.
I have an invention I have been working on for twenty years and I still harbor hopes of finishing it in the form I desire it to be. I hope no one else patents it first or publishes the idea before then. But meanwhile I am amazed that such a novel, non-obvious and useful invention hasn’t been developed in the last 20 years. If it ever is finished and patented and gets on the market, I predict it will be “obvious” in hindsight. Meanwhile no one has thought of it, which makes me suspect it isn’t obvious at all.
Anonymous
September 13, 2011 at 8:14 pm

Anthony, you truly betray your pride in your ignorance when you type. You write “If this abuse of the patent system were alive 100 years ago, the invention of the printing press would have lead to patenting the use of the color cyan and the color magenta on paper run through a press.”
Well, golly Moses, a quick glance on the web brings one to Jacob Christoph Le Blon.
“In 1708 and 1709 he is known to have made colorant mixing experiments in Amsterdam and in 1710 he made his first color prints with yellow, red, and blue plates.[2] While in Amsterdam he became acquainted with Arnold Houbraken, who quoted him as a source of information on German painters for his Schouburg,[2] later published after Houbraken’s death in 1718. Le Blon’s wife died in 1716 and in 1717 he moved to London where he received royal patents for the three-color printing process and a three-color tapestry weaving process.”
Well, whodathunkit? Someone did invent multi-color printing once upon a time and did get a patent on it and the world still continued to revolve. It it had been invented 100 years ago, the inventor still would have deserved a patent and whatever rewards that might entail.
Anthony, you ask “I still am unclear, where is the hole in my analysis?” I suspect the reason this is unclear to you is that you don’t understand what you read even when it is right in front of you. You display a classic case of the Dunning–Kruger effect. “The Dunning–Kruger effect is a cognitive bias in which unskilled people make poor decisions and reach erroneous conclusions, but their incompetence denies them the metacognitive ability to recognize their mistakes.[1] The unskilled therefore suffer from illusory superiority, rating their ability as above average, much higher than it actually is, while the highly skilled underrate their own abilities, suffering from illusory inferiority. Actual competence may weaken self-confidence, as competent individuals may falsely assume that others have an equivalent understanding.” (wikipedia)
If that isn’t clear to you here it is in brief. It is your ignorance which gives you such confidence. The more informed one becomes, the more that person realizes that there is more to know and also that there is more than one way of looking at something. You, on the other hand, are limited to one way of looking at very limited (and at least partially incorrect) set of thoughts. It isn’t my job to educate you, but I try anyway. The bottom line is that you have come to conclusions much too quickly and just expressing confidence doesn’t add anything to your conclusions.
Your only hope is that you are not stupid, which, if so, would indicate it is hopeless for you to even try to learn enough to have anything to offer on this topic. Hopefully you are lucky enough to just be ignorant and over-confident. There is always hope for the ignorant. It’s just irritating when it is accompanied by such sweeping proclamations.
It occurs to me the answer to your question “where is the hole in my analysis?” is that you have your head up the hole in your analysis. Take all the time you need to digest that thought.
Cheers!
anthonyfranco
September 14, 2011 at 5:57 am

Anonymous – thank you for your well thought through comments and well researched rebuttal. I’ll try to make this short and quick.

My complaint is simply this – the patent system is broken, and truly silly things are patented because the USPTO does not have the resources nor the skill to properly evaluate patent requests. Additionally, I believe the patent system should reward those that DO more than those that SUPPOSE.

My argument on patenting the use of the color magenta still stands – the three color printing process was a true innovation that deserved protection. My comparison was meant to show that, if we had the same patent system then, we would have had a bunch of patent trolls trying to patent the use of things that have become obvious in the application of the true innovation, like using the color magenta.

There is a real-world case of this that comes to mind. PostFuture was a company that was granted a patent for printing coupons from the web – their “innovation” was simply that a consumer could be looking at one thing online, hit the print button, and a coupon would pop out of the printer. The rub? Adobe included that functionally in the Flash Player a year earlier. PostFuture took someone else’s innovation and found a way to package it to look different to the USPTO.

One final, off topic, point. I find it humorous that you felt so compelled to insult me directly as you were making good arguments. Doing that makes you look cheap, bitter, and just plain grumpy. Next time, have the courage to do it without anonymity. I find that one becomes quite a bit more civil if they stand in the light to be heard.
Anonymous
September 14, 2011 at 4:56 pm

If anonymity is perceived as cowardly, cheap, bitter and grumpy so be it. There are places on the web where that is not even an option. As long as it is an option here, I choose to use it.
I was offended by what I saw as your flip approach to criticizing patents, and that lit my fuse. You be flip, I be grumpy. But I was and am sincere in my comments. The web is littered with ignorant, self-interested musings and I see yours here as adding to that. I certainly don’t expect to be absolutely right in what I comment here. If my language was insulting, I hope it was at least intelligently insulting. My intention is to make it clear that I view your analysis as that of a dilettante. I would hate to have your comments stand unchallenged and have some reader think no one thought differently from what you espouse. If you can correct your errors and delete my comments, that would be nice. I don’t know if WordPress allows you to do that. Can’t you even correct your headline to read “infringe on” instead of “break”?
I believe we do agree on a number of things. Patents that are not novel, useful and non-obvious should not be granted. Methods for resolving alleged infringing of patents and throwing out faulty patents should be quicker and cheaper.
I believe there is a range of patents, from deserving to faulty and the rest fall in the middle where it can be more difficult to say which they are. The questions are how novel, useful and non-obvious does it have to be to be patentable? It isn’t always a simple call. It would be nice if everyone could live a life where they didn’t infringe on a patent prevented them from doing as they wish freely. The trouble arises when something patented becomes valuable. There isn’t any problem with inventions which nobody wants.
I believe we agree it would be nice if the text of patents were easier to understand, but the strength of a patent depends on how much territory it covers which leads towards broad terminology while specificity makes it easier to understand but narrows the scope of the patent. I seem to recall Edison using the term “transmissive envelope” to describe the glass so someone couldn’t simply use a different material and get around his patent. It was an apt description and yet it makes it more difficult to envision what he is patenting.
I do have a patent which I have tried to bring to market unsuccessfully but I still hope to before it expires. If someone else brought it to market I would hope they would negotiate a license with royalties. And anyone who so desired could then disparagingly call me a “squatter”. There would be no way for the casual observer to know if had just been sitting on the patent like a vulture waiting to pounce or actively pursuing bringing it to market. Thus using the term “squatter” can be used opportunistically to form some sort of a lynch mob. Words do matter in that case.
If the folks at PixFusion are attempting to enforce claims which they specifically describe in the background of the invention, that is simply silly. The background section describes prior art. But if they are trying to enforce something distinct from that which was not described in the background, and did not exist before they applied for their patent, that may within the scope of their patent rights. So either they are silly, or you are mistaken or both. I have come up with things which I thought were new, and my research proved me wrong. That can be gut wrenching to accept. On the other hand, I have come up with things which I thought surely someone had already done and was wrong again. Accepting being wrong can be tough, but if I didn’t swallow the sometimes bitter medicine and do so I would be depending on fantasy as my foundation.
Your Flash example sounds valid on first blush, but then that is undermined by your flawed analysis of the PixFusion example. Looking at the timeline you presented, it is possible Post Future had invented their off-screen printing method before the Flash folks came up with theirs and and if Post Future did successfully defend the patent, that makes it all the more likely scenario. Macromedia is not some small company unable to challenge a flawed patent. Things which are obvious in hindsight are not necessarily obvious when originated. If you want a total overhaul of the patent system because you see it as broken, you need a better foundation to back up your stance. Changes that might be beneficial become harder to accomplish when someone overshoots the mark by exaggerating what the problems are.
The big changes in the works now to change the patent laws may have unintended consequences. I personally would prefer incremental changes which would tend to be more correctable if they didn’t perform as imagined.
Gad, this is probably going nowhere. I didn’t intend for this to be a debate but rather just each of us stating opinions. Let the readers decide for themselves, it isn’t necessary for you and I to see eye to eye.
john
September 26, 2011 at 10:19 am

Good to see a couple intelligent people debating grey areas. Difficult to remove the emotion when things appear so silly on the surface and the system is deeply convoluted at the same time. In any event, was curious to know if anyone could refer me to research in this particular area that PixFusion is claiming stake. For example, does their patent stand in the US only? Are there other country specific patents out there in this regard. How would one protect patents when managing campaigns to a global audience, i.e. geotargeting each patent provider?

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