On Tuesday, Facebook was awarded patent no. 7,809,805, more than three years after it had applied for it with the U.S. Patent and Trademark Office.
It’s not any old patent, as the media outlet Bnet was first to discover. It broadly covers mobile location-based social networks and includes a “method of sharing locations of users participating in a social networking service at a geographic location,” and the execution of “status information manually provided by the first user on an input module of the mobile device.”
In short, the patent sounds like a potentially fatal threat to a number of location-based startups, including Foursquare and Gowalla.
At least, it sounded deadly until TechCrunch learned that Google became owner of a very similar patent in 2005. It was back then that Google acquired the mobile social networking site Dodgeball, the first company founded by Dennis Crowley, who more recently co-founded Foursquare.
The confusion that’s ensued isn’t entirely uncommon, according to Joel Lehrer, an attorney specializing in intellectual property for the Boston office of Goodwin Procter. As Lehrer points out, USPTO attorneys are tasked with searching the division’s database, patent applications, academic papers, and all kinds of other things that have been in the public domain to establish whether or not something is novel.
But “they don’t spend weeks analyzing a patent,” he says. “They are given hours.”
It’s “not a lot of time to search everything that’s ever been done in the world before,” Lehrer says. And missing clues can be disastrous. In this case, Facebook’s patent, which includes numerous references that the company and its attorneys deemed relevant for the patent search, did not include Google’s patent, so it was never considered.
Interestingly, it doesn’t seem to matter whether or not Facebook intentionally left out mention of Google’s patent. While “an applicant and their attorneys are under a duty of disclosure to tell the patent office about any reference or document that they believe material” to the patent, says Leher, “they aren’t under any obligation to do a scorched-earth search.”
In fact, the possibility that Facebook didn’t know about Google’s patent is probably enough reason for the USPTO to leave well enough alone. “If Facebook never researched the patent, nothing will happen; the patent office won’t say we screwed up,” Lehrer says.
So is Facebook in the clear? Not exactly. According to Lehrer, three things could still upset its patent victory. A third party like Google or Foursquare could take action to invalidate the patent by filing a reexamination proceeding with the patent office; a third party like Google could file a lawsuit in court to declare that the patent be held invalid; or, after suing an entity over the patent (like Google or Foursquare), Facebook could lose it if the defendant asserts that the patent is invalid and a court decides the defendant is right.
The last scenario may go far in shielding some of the location-based service startups that might have been sweating it earlier this week. Lehrer says that Facebook need only send out a letter, demanding that a third party pay a licensing fee to Facebook, for that third party to make a claim in court or to file for a reexamination by the USPTO.
“That’s not usually done,” says Lehrer, pointing out the expense of litigation. He says that far more often, some sort of cross-license agreement is established that allows both the first patent holder and the second patent holder to peacefully coexist.
“But that’s assuming [the patents] aren’t exactly the same,” Lehrer says.
Asked to compare the patents of Facebook and Google — two deep-pocketed companies that would conceivably spend millions of dollars to defend this particular patent — Lehrer says: “They aren’t exactly the same, but there’s a lot of overlap.”