Understanding reverse engineering patent infringement can be confusing, especially if you're not familiar with patent law and other related regulations.

Patent Licensing & Infringement

Reverse engineering is when you start with a specific product and work your way backward to figure out the process used to manufacture or develop it. The process involves careful analysis, which can be handled in several ways, depending on the industry and type of technology. Being familiar with patent law can help you to have a better understanding of this concept.

Over the past few years, patent licensing has become a major part of many industries. Certain sectors, such as high technology, place a higher value on licenses and patents. Leading the way are semiconductor companies, especially considering how many patents already exist and the number of competitors in the space. For example, Texas Instruments took part in groundbreaking campaigns for licensing in the 1980s.

Intellectual property organizations are heavily involved in all major corporations, including consumer giants like Apple and communications providers like Ericsson. Every company must grow and/or defend its assets in terms of intellectual property, often requiring high stakes and millions of dollars. In order to build and execute a patent licensing program that is successful, those involved must be able to find and prove that a patent has been infringed upon, often done through reverse engineering. In many cases, the single factor for failure in patent licensing is due to the lack of evidence of the use of the invention.

Cases that involve software for computers often rely on the production by an opponent when the source code has been discovered. When the source code is available, this is where the investigation will remain, even when the product is available for a small price. The source code makes up the plans for any type of software, somewhat similar to a building blueprint. However, the source code isn't the actual product.

Object code can be distributed in all types of items, including the Flash animation on a website, a software program like Microsoft Windows, a video game, or the firmware found within a digital camera. Open source products are one exception. The object code gives instructions to the computer or the microprocessor within a device, such as within a camera. These instructions direct the computer about how to act as a game, word processing system, operating system, or other functionality provided by the software.

These instructions are created indirectly by computer programmers. They write the source code, a mix of mathematics and pidgin English. From there, the instructions are compiled or translated into the object code. This type of code can be packaged in a downloadable file or CD to become a product available to customers. Therefore, it is logical that source code is a main focus of software litigation. Instead of worrying about the translation that is only understandable to a computer, the legal case will focus on the original code that was written by a human computer programmer.

However, while this is more logical, using the source code does create a problem. Until you reach a specific step in the process of litigation, you won't have access to the source code from the other side. The owner of the product will hold it tightly, which can create a problem similar to the old chicken and the egg issue in litigation related to software patents.

Reasonable Basis

The Federal Rule of Civil Procedure 11 (FRCP) dictates that a lawyer cannot file a claim of patent infringement without reasonable basis. This reasonable basis must include two main parts:

  • Interpretation of the claim
  • Comparison of the accused method or device against the claim

After the case against a patent on software has been opened, the comparison of claims is typically presented as a table, which includes the source code from the opponent, produced in the discovery period. However, in order to complete the discovery period, you will need a case, and the case needs at least one complaint, and the complaint needs reasonable basis.

Aside from the Rule 11 under the FRCP, local patent laws and regulations also often require detailed contentions of infringement. The information should be presented at the start of the legal process. Before discovery, the contentions of infringement should include at least one claim for each accused process or product. Interpretation of this requirement by the court requires reverse engineering or a similar process, as is seen in Network Caching v. Novell, ND Cal., 2002.

Therefore, reasonable basis in a claim of infringement of a software patent must be based on something aside from the source code of the opponent. These claims must be clearly outlined before the filing and discovery process. Simply stating that a copyright has been infringed is not considered reasonable basis. Even using product documentation or marketing materials may not be enough to provide infringement. Some of the most useful methods used to investigate infringement claims include:

  • Analyzing recent capital improvements and/or price changes
  • Speaking with suppliers and customers
  • Reviewing the regulatory filings of the opponent

These methods may apply to software on a limited basis. The solution to this common problem is to rely on an expert to examine the software product, which is reverse engineering.

What is the Use of Reverse Engineering?

In certain industries, reverse engineering will allow a company or individual to determine whether an invention that has patent protection is being used by another. This process involves purchasing a product and disassembling it to get a better understanding of what materials are used to construct it, how it functions, and how it was built.

What is Included in the Reverse Engineering Process?

When a company or individual is working to reverse engineer a product, the process includes several steps:

  • Analyzing the circuits, which involves identifying how the device works.
  • Analyzing the process, which helps identify what a device is made of and how it is built.
  • Analyzing the system, which involves how components of a device are used together, such as signals, software, or chips.

When analyzing the system, this step is when patent infringement is most likely to be found, often in several main sectors:

  • Computing
  • Wireless
  • Consumer electronics
  • Communications and networking

In these industries, where standards drive much of the production and innovation, patent infringement is often identified with literature or documentation. The previous method of basing copyright infringement claims on standards alone has been replaced with the complex method of reverse engineering, due in part to the increased number of suppliers, competition, and convergence of technology.

Reverse engineering of software involves working from the bottom up, rather than working backwards. Instead of trying to recreate the original source code, software reverse engineers often try to learn more about the design as it was built by reviewing lower-level product details. This process is similar in some ways to the inference of blackletter law in the common law, based on fact-specific case holdings. The goal of reverse engineering a software program is usually more about understanding its potential flaws or operating with it, rather than trying to duplicate it.

Prior to the Digital Millennium Copyright Act, many companies and individuals wondered whether reverse engineering was a legal process. A controversy between video game makers Nintendo and Atari laid out some of the early framework for the legality of reverse engineering. In the late 20th century, the Nintendo Entertainment Systems (NES) 8-bit device was one of the top options in the video gaming market. This device included a security mechanism called the 10-NES and restricted the use of games that didn't contain specific software and a chip. NES used this security mechanism to encourage developers of popular video games to enter into licensing contracts.

The 8-bit was introduced to the U.S. market in 1986, which was the same year that Atari, a competing video gaming company, started reverse engineering the device. Atari used a method that monitored the communication between the game console and cartridge, but this didn't provide sufficient information. Next, Atari used a chemical peeling process to remove layers from the NES chips to examine the object code under a microscope. Even with these efforts, Atari could not reconstruct the code from the layers removed from the chips.

When NES filed for copyright protection, the process included filing a listing of all object code. This document included the details that Atari was trying to find through the reverse engineering process. In order to gain access to the document, Atari filed a false lawsuit with claims that NES had sued Atari for infringement of copyright. Atari submitted falsified affidavits to the office, which granted them access to a copy of the listing document. Following this action, Atari began reproducing the software for its own video games.

NES filed a lawsuit against Atari for copyright infringement. One issue brought up in the suit was whether Atari had the right to reverse engineer the security mechanism used in the NES 8-bit console. During the legal proceedings, the court determined that although Atari's method of obtaining the information was tainted, since the company filed false documents, it was legal to use reverse engineering. Going through the process of reverse engineering is considered fair use as long as it is necessary to understand the device or product.

If a work's nature requires some type of copying to allow for a better understanding of how it works, the nature allows for reverse engineering and considers it to be fair use. In the Atari and NES example, Atari using reverse engineering to figure out the object code was considered fair use. However, since the copy of the listing document was obtained fraudulently, Atari could not use the fair use defense in the lawsuit. As long as an individual or company using reverse engineering creates an original product, they should not be considered to be infringing on another's copyright.

Under current trade secret laws in the U.S., reverse engineering is viewed as a fair and legal way to learn more about a trade secret, as long as the product was acquired by honest and fair means. However, acquisition of the product honestly and fairly can have a broad definition that is up for debate. If the recipient of a software program signed a contract with a clause that restricted reverse engineering, but the vendor has been leaking information about the product to the press, would this be considered fair and honest? This example comes from an early case around patenting software, Stac v. Microsoft.

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