Will Patent Feuds Scuttle Android Developers?

Recently, the technology press has been aflutter with coverage of Google’s newly released Android mobile operating system and the first Android-enabled commercial handset from HTC being offered by T-Mobile. Much of this coverage has focused on Google’s ZXing barcode recognition SDK, a software library that turns an Android-enabled cameraphone into barcode scanner. Barcode scanning-enabled applications, such as Compare Everywhere (formerly called Android Scan) were among some of the most interesting winners of the first round of the Android Developer Challenge.

Unfortunately, many of these developers are ignoring the existence of key patents related to use of cell phones as barcode scanners that may ultimately doom their application. Several firms, including Neomedia and Scanbuy, have received patents on accessing content by taking a photo of a barcode with a cell phone, or linking physical media to information on a network using an mobile device. Are these patents defensible? Probably not, as they likely fail the requirement that an invention be non-obvious to someone versed in the state of the art.

Whether or not these patents will withstand judicial scrutiny in the long term is inconsequential. The patents have been issued and in the short term their owners will undoubtedly attempt to use them to extract funds from Android developers that build on top of ZXing to create barcode scanning-enabled mobile applications. Those that have managed to create an application that generates revenue will have to choose between paying up, folding, or taking the fight to court. I happen to know that some of these same patent holders have attempted to shake down other, non-Android, mobile application developers aggressively in the past.

What’s especially interesting is that this is an issue that Google appears to be carefully and studiously ignoring. While the EFF has been attempting to bust down some of these patents, that won’t be good enough in the short term. Until those patent hurdles are removed, developers will need to realize the risk that they may be facing by building on Android and the ZXing library.

8 thoughts on “Will Patent Feuds Scuttle Android Developers?

  1. NeoMedia’s rich patent portfolio was developed by former Symbol VP of 2D Systems, Rob Durst, and former Symbol Principle Engineer Kevin Hunter. Kevin is the holder or co-holder of over 45 US and International patents, and Rob is the named inventor on 28 US patents including their international counterparts with additional US and foreign patents pending.

    NeoMedia’s patents were first licensed by Digital Convergence for $100M in 2000 to facilitate the launch of the :CueCat.

    In 2001, NeoMedia Technologies formed a strategic alliance with Symbol, now owned by Motorola, and signed a worldwide licensing agreement under NeoMedia’s intellectual property. Symbol would later offer to buy NeoMedia’s valuable patent portfolio in 2002 for $150M. The offer was declined however in favor of further developing the IP and growing the patent portfolio as a core component of NeoMedia’s long-term growth and market strategy.

    In 2005, Virgin Entertainment and NeoMedia Technologies entered into an extended licensing agreement, which saw Virgin license NeoMedia’s patents through 2016.

    NeoMedia’s many European patents can be found at the following link:

    http://v3.espacenet.com/results?IA=neomedia&sf=q&FIRST=1&CY=ep&LG=en&DB=EPODOC

    NeoMedia brought suit against Scanbuy for patent infringement. Litigation has been ongoing.

  2. I would not say that Google or this project is ignoring the issue of patents. It is, in fact, an important issue for any project to consider, as you say. This is a great topic.

    We would of course never knowingly do anything that infringes on a patent. If the post you cite sounds evasive, it is only because I am not a lawyer and don’t and can’t make pretend to make decisions and statements about patent issues. Google, however, does have a legal team that is aware of the project, as with all Google’s launches. They do evaluate projects before launch for legal issues. Like I said we know of no reason to think there is any patent infringement here — or else it would of course never have been released.

    I can add to this that the Neomedia patent was recently invalidated by the USPTO due to the EFF’s efforts, something I think is widely viewed as the right decision. We have met the CEOs of both Neomedia and ScanBuy (lovely folks, all of them) and have heard nothing but support.

    I think two of your points stand. Should companies take a more proactive approach to attack patents they think are invalid? That I don’t have a good answer for.

    Second, while this library has, I believe, no patent issues, this does not imply that the same is true of any application built on top of it. This is, unfortunately, an issue that any project faces and must tackle for itself. I am not sure if this project has an obligation to figure out for the community what is and isn’t patented and give an opinion on the patents.

  3. An excellent response Sean (who, for those who don’t know, is one of the developers behind ZXing).

    My main concern has been that Android’s ZXing may be encouraging developers to develop applications that invite claims of patent infringement regardless of their functionality. I had not seen that the Neomedia patent had been completely invalidated, only that portions had been struck down – this is great news.

    Hopefully the same will happen to other, similarly obvious, patents that relate to barcode scanning using a cell phone camera.

  4. @ Sean

    Can you please tell me how ShopSavvy & CompareEverywhere do not infringe on the following NeoMedia patent:

    Patent #6,651,053 – Interactive system for investigating products on a network

    An interactive search system for use with a global computer network, e.g., the Internet, using a search identifying barcode to rapidly and effectively obtain a supply of related information for presentation to a user. A computer, either landline based or mobile, may be used to input a UPC code, taken from a package or advertisement or prestored in the computer, to an implementing server on the network. The server contains a database of product and manufacturer identifying UPC codes and uses the input UPC code and the database to identify the manufacturer and is programmed to then perform a search of the network to locate sites relating to or operated by the manufacturer. Also, the server may search the network on a product basis to locate other sites containing the UPC under search. Using “parsing” technology, the server “pulls out” the product description, transmits it to and places it in a random access memory (RAM) or storage of the computer, and proceeds to perform further searching relying on the product description to uncover relevant information. Accordingly, using a single input, a collection of product-related and manufacturer information is quickly assembled in the computer available for a user’s consideration all at once at any time.

  5. lets talks facts:

    NeoMedia’s patent was NOT invalidated. People should really educate themselves on how the patent reexamination process works:

    http://www.uspto.gov/web/offices/pac/mpep/documents/2200_2201.htm

    NeoMedia even issued a PR clarifying the review process:

    http://www.reuters.com/article/pressRelease/idUS146630+25-Jul-2008+MW20080725

    “The USPTO recently issued an Office Action regarding the re-examination of NeoMedia’s U.S. Patent number 6,199,048. The re-examination procedure is a standard legal process that occurs in the natural course of business – this is not an “out of the ordinary” event. It is not unusual for the USPTO to preliminarily reject claims during the re-examination process. This initial action is non-final and will be subject to a review process. The ‘048 patent is presumed to be valid, intact and enforceable during the re-examination process.”

    NeoMedia’s patent attorney issued his response to the USPTO examiner and she should be issuing an office action by the end of October.

  6. I guess the answer to your first question depends on whether you think the patent is valid – nonobious in this case. Speaking purely as a layman, it seems quite obvious based on a look at this abstract. Do you disagree? Careful before you make claims of infringement without counsel. I mean haven’t retailers been reading barcodes and calling up info on a device since the 60s?

    It might be worthwhile to note you are an investor in Neomedia. Nothing wrong with that, I know it from prior conversation. These readers may not.

    Your second post is about another patent, as I understand, *the* patent that EFF asked be reviewed. They did rule that all 95 claims were invalid which you know. Not sure what you mean when you claim it wasn’t invalidated. Maybe you mean it is still possible to appeal this. OK, sure, *maybe* they will change their minds again! Good luck.

  7. There are some new developments in patent law. There is now the machine-or-transformation test which would suggest perhaps that these methods might be enforceable.

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