Technocrats take the '318 patent to task

In this DigitalField Insider web exclusive, Managing Editor Steve Kuehn reports on the Solaia patent case and how it continues to weave its costly way through the courts and U.S. industry.

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 By Steve Kuehn, Managing Editor

C

onsidering the highly developed nature of patent law

these days, most of the patents granted are likely to be truly legitimate. But with so many patents being granted (according toU.S. Dept. of Justice, Bureau of Justice Statistics, the number of patents granted has increased 197% from 62,000 annually in 1983 to 184,000 in 2001) for things not envisioned when the laws were devised (internet commerce and bio-engineered organisms to cite two examples) it&rsquos equally likely that there will be some that truly aren&rsquot, and that shouldn&rsquot have been granted in the first place. Many agree that this is true for Solaia&rsquos Patent 318.

         
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What is the '318 patent? In early 2001, Solaia LLC purchased the rights to the now controversial patent known as &ldquo '318&rdquo from Schneider Automation. Soon thereafter it engaged the services of renowned Chicago patent enforcement law firm to pursue its claims against users of the technology defined by the patent granted in 1991 to Square D (acquired by Schneider) and employee and inventor Brooke T. Roseman. Formally, it&rsquos patent 5,038,318 covering the &ldquoDevice for Communicating Real Time Data Between a Programmable Logic Controller and a Program Operating in a Central Controller.&rdquo

Those with a thorough understanding, and a long enough history in the automation industry to understand the technology, maintain that as written, '318 won&rsquot hold up in court.

In a letter from a person identifying himself as an &ldquoindustry veteran who prefers to remain nameless,&rdquo (Start magazine &ldquoMail Call,&rdquo Jan. &rsquo03, p10) The '318 patent &ldquobasically patents a method for controlling a manufacturing operation using a spreadsheet add-on that talks directly to the registers in a programmable logic controller (PLC) without using the operating system or any I/O device.&rdquo He points out two big problems with '318: One, it&rsquos extremely narrow, and two, it had to be narrow to avoid a rejection based on a considerable amount of prior art&mdashsomething that anything patentable has to rise above to be granted.

Mr. Nameless offers a nicely succinct appraisal, and offers some truly insightful commentary on the patent&rsquos technical (or lack thereof) merits. He also points out the patent&rsquos real weakness&mdashthe amount of prior art that came before '318 was granted. But for a comprehensive analysis of the '318 patent on the record, the staff at High Tech Services (HTS), a North Carolina-based systems integrator provide a detailed appraisal on their website.

High Tech Services, founded by president by Keith Baldwin (who holds a Masters in integrated manufacturing systems and is a founding member of the CSIA) recommends that to better understand the problematic nature of the '318 patent it&rsquos instructional to understand what is patentable.

The U.S. patent office offers this: &ldquoIn the language of the statute, any person who ‘invents or discovers any new and usefulprocess, machine, manufacture, or composition of matter, or any new and usefulimprovement thereof, may obtain a patent,&rsquo subject to the conditions and requirements of the law. The word ‘process&rsquo is defined by law as a process, act or method, and primarily includes industrial or technical processes. The term ‘machine&rsquo used in the statute needs no explanation. The term ‘manufacture&rsquo refers to articles that are made, and includes all manufactured articles. The term &ldquocomposition of matter&rdquo relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. These classes of subject matter taken together include practically everything that is made by man and the processes for making the products.&rdquo

The HTS analysis then quotes Roseman from the original patent application on a number of points but one stands out:

&ldquoThe invention furnishes a program or instruction means that operates through a general purpose spreadsheet program to effect information transfers to and from the addressable registers of a PLC and assigned cells of a displayed spreadsheet directly from the spreadsheet program and without transfers through the operating system program or a specially written device driver program.&rdquo

Says HTS, &ldquoWe don&rsquot see how using the specific words ‘PLC&rsquo or ‘spreadsheet&rsquo constitutes anything ‘new&rsquo or ‘improved.&rsquo &rdquo The systems integrator&rsquos analysis argues that &ldquoPLC&rdquo and &ldquospreadsheet&rdquo are nothing more than a type of computer and type of software that are communicating with each other.

&ldquoThere were other companies already making SCADA software that talked with PLCs at the time,&rdquo says HTS, and &ldquothat because computer programs were already talking to PLCs, uploading and downloading data, one might think that a claim about PLCs and spreadsheets would not hold up.&rdquo

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