From: John Shoch <shoch () alloyventures com>
To: "'farber () cis upenn edu'" <farber () cis upenn edu>
Cc: "'tim () oreilly com'" <tim () oreilly com>,
<shoch () alloyventures com>
Subject: RE: Joint interview with Todd Dickenson and Tim O'Reilly on paten
Date: Wed, 31 May 2000 09:34:48 -0700
X-Mailer: Internet Mail Service (5.5.2650.21)
I cannot resist entering the discussion on patents between O'Reilly and
Dickinson, especially with respect to the work at Xerox PARC.
A. Excerpts from the "debate":
Tim: ... if you trace back who are the big winners in the industry today,
many of them, in fact almost all of them, are based on developments that
came from outside their own walls. You know, they did not in fact invent the
basis of their business. They have innovated on top of the work of others.
Microsoft didn't invent the fundamental technologies in Windows -- they
stole them from Apple, who stole them from Xerox.
Dickinson: Absolutely, and the reason they were able to steal them from
Apple -- well, I won't comment on what they stole them for -- but the reason
they were able to take those inventions without license was because the
people didn't patent them in the first place. Where would Xerox be today if
Xerox Park controlled that technology?
Tim: I think where Xerox would be today, it might be better for Xerox but it
would not be better for us as a technological country....
Dickinson: Well, you've got Xerox, or you've got Microsoft. Take your pick.
Tim: I don't think so, because you know Xerox basically owned those ideas
but did not in fact exploit them -- ....
Dickinson: Anybody is free to make those choices that wants to. Nobody is
twisting anybody's arm to file a patent application. If Xerox chose -- the
Human Genome project is a good example, in the government. They have
affirmatively chosen not to patent their discoveries. They've dedicated them
to the public. I think that's a noble thing to do.
B. Some comments:
--I am not a patent lawyer, but I have lived through a lot of this -- first
as a researcher at the Xerox Palo Alto Research Center (Xerox PARC, not
Xerox Park), later as President of the Xerox Office Systems Division, now as
a venture capitalist.
--In general I am a supporter of Dickinson's view that the patent system is
sufficiently flexible to deal with new technologies, including software.
The structure is not perfect, but it is a game with pretty clear rules, and
which lots of people can play. I like strong patents, particularly if the
ideas really meet the test of being new and non-obvious (more on this
--At Xerox we certainly knew how to protect our intellectual property. We
filed and were granted patents on the Ethernet, various mice (dual wheels
w/shaft encoders, single-ball, pure optical, etc.), and other hardware
--The case of the Ethernet is particularly interesting. Having the patent
protection gave us the flexibility to decide how to engage with the market.
We wanted to build office systems that used the Ethernet, but we did not
necessarily want to build high-volumes of Ethernet chips. So, a BUSINESS
decision was made to license the innovation on very modest terms, to help
expand this market. [In contrast, IBM and other backers of the token ring
tried to extract per-unit royalties for the patents behind those designs.
So the Ethernet finally won the standards wars and the market, while token
ring slipped into oblivion.]
--HOWEVER, the patent system and the USPTO really let us all down in the
1970's, when the view was that you could not patent ideas which were
embodied in software. The advice we got at the time was that it would be
fruitless to pursue them. [In some cases people tried to get around this by
a) implementing a "software" idea in a special purpose piece of hardware
(which could be patented), or by b) loading a general-purpose computer with
the "software" idea, locking it in a box, and trying to patent this
--So we were stuck with copyright protection. We certainly copyrighted the
code itself, and the screen images. Thus, we could copyright the expression
of our particular "waste basket" for deleting files, but we could not get a
patent on the general idea of "dragging an object across a screen to a
delete-object icon." Thus, Apple (and later Microsoft) could copy the
underlying idea, and merely had to change our waste basket into a garbage
can icon (to avoid a copyright infringement).
--Not surprisingly, we all found this very frustrating.
--Later, the USPTO decided that they would start to consider filings for
patents on ideas that were embodied in software -- but by then it was too
late for Xerox, since the ideas had already been made public. To compound
the felony, however, the standard USPTO practice was to consult their
existing patent filings to decide when to grant a patent. Not having
previously granted any software patents, they didn't have much of the prior
art! So all sorts of things got through which, in the opinion of many, did
not really meet the test of being new and non-obvious.
--Some will argue that people who know about the prior art should just help
knock down these bogus patents. Unfortunately, the system has the
incentives in the wrong places. Those who have filed the bogus patents have
lots of economic incentive to protect them. Those individuals who actually
invented the idea years before have no economic incentive to dig back
through their files and jump in, because there is nothing in it for them.
[Alvy Ray Smith has a great story about coming to the aid of Adobe in
helping them fight against a bogus patent, by digging out ancient prior art
which he had done. Alvy is a righteous and noble soul, but he invested a
lot of time to help some friends -- with little personal reward (other than
satisfaction). We need more people like Alvy, but it is a lot to ask of
--Finally, I will certainly take issue with Tim on where we might be today
if Xerox had been able to patent these early ideas. First of all, the
shareholders of Xerox would probably have more of the wealth than the
shareholders of Apple and Microsoft. Second, computer users might have a
system which had more design integrity, was better integrated, simpler, and
more reliable. Tim, you might want to poll old-time users of the Xerox Alto
and the Xerox Star, and see how those compare with Windows of today -- and
what those systems might have been like with 15-20 years of continued
development. [It is also not widely known that Microsoft was a customer of
Xerox, buying the Xerox Star system -- and they acknowledged that they
brought programmers in to look at the machine, to study how we had done
General Partner, Alloy Ventures
Date: Mon, 29 May 2000 11:14:04 -0700
From: "Tim O'Reilly" <tim () oreilly com>
To: farber () central cis upenn edu
Subject: Joint interview with Todd Dickenson and Tim O'Reilly on patents
Posted by: jamie, on 2000-05-28 22:30:00 EDT
Dept: don't-want-to-be-Jerry-Springer-but, topic: Patents
"The O'Reilly Network is running a debate between Tim
O'Reilly and Patent Office Director Q. Todd Dickinson.....