back to article Cali court backs ex-Apple engineer who says he invented Find My iPhone and Passbook

Apple has lost its bid to dismiss a former employee's lawsuit over claims he invented services like Find My iPhone and Passbook but was not included on patents subsequently filed by the tech giant. Darren Eastman worked for Apple for nearly a decade after being hired by Steve Jobs himself in 2006, and has been credited on one …

  1. Persona Bronze badge

    Why

    Everywhere I've worked it's been part of my contract that all patents raised will be owned by my employer. I also remember from way back that in order to be enforceable the employer had to pay you a nominal amount for the patent, but this nominal amount was $1 which they graciously rounded up to £1 just to be sure should FX rates fluctuate. I even recall some people actually getting their £1. Perhaps the "nominal" sum Apple gives for a patent is a little higher.

    1. Roland6 Silver badge

      Re: Why

      The patents might be owned by your employer, however, that isn't the same as being credited (in the patent filing) as the original inventor.

      1. Notas Badoff

        Re: Why

        Which you might be able to reference on your CV/resumé. You know, in case you wanted to have a life after Apple.

        1. bombastic bob Silver badge
          Devil

          Re: Why

          yes, all of the above.

          credit where credit is due. If he was a significant contributor to the invention, he deserves to be on the patent. If all he did was "what he was told", maybe not so much. But i expect there was actual engineering and creativity involved.

          On the only patent application I was included on, I did the prototype implementation of the patented system. People barely associated with it (mostly managers) were also included, plus the guy whose idea it was (the engineering VP who briefed me on it so I could make the prototype).

          So yeah, if this guy was involved in the creativity process, then he should be credited. All team members of significance in the process. What's wrong with doing that exactly?

          (it's not like they have to pay him, they probably have 'work for hire' and other contract law on their side, but it's NOT a one-way street)

    2. BebopWeBop Silver badge

      Re: Why

      HP actually used to be very generous - as I believe IBM were, in the past. Paid for a house refurbishment in my case.

      1. Charlie Clark Silver badge

        Re: Why

        Bell Labs was famous for it, and able to bask in the glow of the associated Nobel prizes.

        It can make excellent business sense to allow researchers a stake in their patents and we're seeing this with some of the top AI boffins who would rather be cited on the patent than earn even more money.

    3. JetSetJim Silver badge

      Re: Why

      At least for one of the patents, he claimed he had IPR developed prior to joining Apple in 2006 and declared in an intellectual property agreement he signed with Apple in 2005. Makes you wonder what is in the agreement, especially as the patents in the article were only filed 5 years later...

  2. Tromos

    "...lost its fifth appeal..."

    I sincerely hope that any damages and costs awards are at least doubled on every failed appeal. Apple just seem to be trying to extend any lawsuit to beyond the lifetime of whoever is bringing it.

    1. bombastic bob Silver badge
      Meh

      Re: "...lost its fifth appeal..."

      I have to wonder if denying an employee the deserved mention as an inventor in a patent has ANYTHING to do with attempts to depress, hold back, or otherwise discourage competition for employees and increasing wages. As I recall, there was some "do not recruit" agreements between the various Silly Valley companies to avoid competing for them, a decade or so ago... am I right?

      So yeah, denying credit on patents means someone ELSE is less likely to hire the guy, or at least force them into a 'bidding war' to keep him around.

  3. Fruit and Nutcase Silver badge
    Joke

    An (Eastman) Kodak Moment

    The court is clearly sympathetic to Eastman's case, making several jabs at Apple's case including admonishing it at one point for ignoring a key legal case that made the opposite case to Apple's argument.

    1. Trollslayer Silver badge

      Re: An (Eastman) Kodak Moment

      NEVER insult the judge's intelligence.

      1. Blofeld's Cat
        Facepalm

        Re: An (Eastman) Kodak Moment

        "NEVER insult the judge's intelligence"

        An uncle of mine was a lawyer, and one of his favourite stories concerned an up-and-coming barrister who was arguing that an obscure point in a recent case (X v Y) had set a legal precedent.

        He referred to the case frequently during his argument, obviously irritating the judge, who eventually stopped him.

        "Mr ... the court is gratified that you have studied X v Y so closely, but I feel your interpretation of the case is incorrect. It is also unfortunate that you had not spent a little time longer at your studies, for you might have discovered the name of the presiding judge".

  4. 2+2=5 Silver badge
    Unhappy

    TITSUP

    Total Inability To Specify Uncredited Patentee

  5. Denarius
    Joke

    R U shore

    Jobs is dead ?

  6. Anonymous Coward
    Anonymous Coward

    Could invalidate the patent?

    I'm not sure if this applies to the US Patent Office, but in general patent offices take a dim view of people playing fast and loose with patent applications. The reason that the names of the actual inventors are written on a patent, rather than their boss' name, the CEO, etc., is that a patent can be invalidated if the submission is proved to contain falsehoods. It's a case of "bad paperwork - no patent".

    If he can prove in court that he was the inventor of parts of the patents, then the USPO could rule them invalid. And since they have been published, the inventions are in the public domain and couldn't be patented again if this happened. Oops.

    1. Doctor Syntax Silver badge

      Re: Could invalidate the patent?

      The defence of "prior art" mentioned in the article also seems to be a route to invalidating the patent.

      1. Jimmy2Cows Silver badge

        Apple cuts off nose to spite face

        Caught my attention too, that one...

        Apple ... claiming there was "prior art" on the patents

        Seems like a nuclear option which leaves them liable to having said patents invalidated, a kind of "have it our way or nobody has it".

        Also, this begs the question how the fuck did these get awarded in the first place? When the patent applicant knows there's prior art, and still their patent is granted, there can be zero doubt the US patent system is hopelessly fucked.

        1. caffeine addict Silver badge

          Re: Apple cuts off nose to spite face

          Because the US patent system doesn't care about prior art. That's for teams of lawyers to argue about at a later date. The system is completely screwed.

      2. TJ1

        Re: Prior Art

        The way I read it Apple are claiming there was prior art *from within Apple* to show that other employees had already done what Eastman is claiming he invented.

  7. mark l 2 Silver badge

    Didn't realise 'find my iphone' was patented. But surely prior art does exist since GPS tracking for finding stolen vehicles has been around well before the iPhone existed and it is a similar technology.

    1. Anonymous Coward
      Anonymous Coward

      A similar comment seems to come up on every patent story. If you're sure that there is prior art then I presume you have read the patent in question and compared it to the technologies that existed at the time and see if they operated in the same way as the methods and claims in the patent?

      I would suggest that a GPS vehicle tracker is not the same as Find MyiPhone but I could be wrong.

      Not that I have any desire to legitimise software patents that are clearly obvious to one skilled in the art. I think that they are ridiculous, along with copyrighting an API and IPR for vague songs that have a similar timing of their beat of a newer song.

      1. Hans Neeson-Bumpsadese Silver badge

        I would suggest that a GPS vehicle tracker is not the same as Find MyiPhone but I could be wrong.

        I would be inclined to agree with you.

        We went through a phase in the late 90's/early 00's where existing patented ideas were re-patented with "on the internet"....and then a similar thing started to happen around the mid 00's but using "on a mobile phone"

      2. Joe Harrison

        If it's Apple patented then how come Google/Android also has a find-my-phone?

        1. Jimmy2Cows Silver badge

          There are different ways to achieve the same effect.

      3. JetSetJim Silver badge
        Headmaster

        Patent #1: System and method for remotely initiating lost mode on a computing device. File date is June 2012. From the claims, seems to basically be a patent for a computer device to receive an authenticated command to go into lock-down mode (supress some functionality) or come out of it, transmitting time-stamped location info to the requesting user based on criteria (periodic, heuristic, ...) while in lost mode.

        Patent #2: Remotely initiating lost mode on a computing device. File date is June 2012. Covers some server side functionality for receiving the lost phone data stream, plus mentions disabling power off and reporting battery life

        Patent #3: Device locator disable authentication. File date is June 2013. Associates a device by hardware ID to a "cloud account" of some form, that allows for "lost mode" control, includes remote wipe functionality

        Patent #4: Bypassing security authentication scheme on a lost device to return the device to the owner. File date is Nov 2013. Covers "privileged contacts" who can be contacted from the lost phone to override lost mode. Seems to be limited to WiFi connections only, but it's written in patent-speak, so difficult to tell :)

        Patent #5: Location-Based Ticket Books. File date June 2013. Seems to be the Apple Wallet patent, storing "virtual tickets"

        A lot of the first 4 patents' content is rather obvious considering there were products on the market for laptops which you could trigger to fire up the camera and take pics and send them to ppl - I even knocked one up in (crap) code to check a GMail account for a trigger email, do the pics and email them, from memory that was in 2011, but I didn't bother publishing it.

        Similarly, the Prey app (one of many), was initially published in 2009, probably did what I was trying to do much better! this article seems to show a great deal of the "patented" features in action and available for desktop clients.

        IANAPatent Attorney (but have read quite a few patents in my time), but all four Find My Phone patents look rather "obvious to one skilled in the art", if not already in the public domain at least a year prior to filing.

        The Apple Wallet one? I was getting e-tickets to stuff before the file date, and they all came into my Gmail account. Might be moderately novel to merge tickets from different providers into an app for convenience, I'll give them that.

      4. Cederic Bronze badge

        I haven't read the patent in question or compared it to the technologies that existed at the time, because I don't need to in order to know that the US patent system is inherently broken and that this should never have been patentable in the first place.

        Yes, there's prior art. Yes, this is a very obvious thing to do. Yes, this is a farce.

    2. Charlie Clark Silver badge

      About the only thing the USPTO has failed to accept a patent for is stupidity!

      Once the principle of software patents were accepted, companies have gone mad for them out of the fear that if they didn't patent "the patently obvious" someone else would and sue them for it.

      The patent for rounded corners doesn't come close to some of the software ideas or "business practices" that have been patented. If he was around today Pythagoras would either be a billionaire or in debtors' prison!

  8. Ken 16 Silver badge
    Paris Hilton

    Ungenerous?

    But they practically give away their products, overpay their taxes, make sure their workers are comfortable...don't they?

  9. Anonymous Coward
    Anonymous Coward

    Would love to know what the Disk Utility bug he was so passionate about that led to his unfair firing. Must have been something very serious like data loss.

    1. Anonymous Coward
      Anonymous Coward

      If I recall, it was around OS X 10.8 or 10.9's release.

      Doing a certain operation in Disk Utility (might have been permissions repairing, hard to remember 6 or so years ago now) on a disk that had full disk encryption on it caused the Index to be dropped. Which wouldn't become apparent until next boot.

      On an encrypted disk...

      Yep. All those bits'n'bytes securely locked up. No way to get at them. Those were a fun few days in the support trenches...

      The impact was low though, because most people that were running that setup were either running OS X Server, or a "Prosumer".

      AC, as I still know enough people around there and those poor b*st*rds got it in the neck enough then...

  10. Anonymous Coward
    Anonymous Coward

    I am no friend of Apple.

    But I'm not a friend of someone who thinks Steve Jobs was a cool guy, either.

    It all boils down to "intellectual property" being such nonsense.

    Companies should be forced to use the GNU General Public License for each and every piece of software they provide.

    It's ${current_year} and we still have no mobile phone where you can simply open a shell..

    1. bean520
      FAIL

      > It's ${current_year} and we still have no mobile phone where you can simply open a shell..

      Android and ADB would like to have a word with you...

      1. Anonymous Coward
        Anonymous Coward

        Oh well, there's busy box.

        Switching Applel against Goo patents doesn't really help your case, though.

    2. Charlie Clark Silver badge

      Why would assigning all the righs to the FSF help anything?

      The GPL is political ideology masquerading as technology. The stated aim is more or less to make commercial software development impossible.

    3. Anonymous Coward Silver badge
      Boffin

      If all of my software has to be released under the GPL, that makes it virtually impossible to justify developing software commercially.

      It's a bit like saying the the Colonel has to reveal his chicken recipe...

      And I can open a shell on my Android phone just fine, TYVM

      1. Michael Wojcik Silver badge

        It's a bit like saying the the Colonel has to reveal his chicken recipe...

        But only a bit, because 1) KFC has a vast physical business which does not depend on any particular cooking technique or recipe, and 2) the recipe for KFC, including the original rub, is well-known, even to the public. Poundstone went to some trouble to confirm what ingredients are in the supposed "7 herbs and spices", using expert judges to suggest possibilities and a laboratory to test for them, in one of his Big Secrets books.

        Spoiler: The only flavoring ingredients present in any significant amount are salt and black pepper.

        And 3) the KFC recipe, insofar as it has any IP protection at all, would fall under a trade secret. Trade secrets are a miserable failure for software. RSADSI tried to protect RC4 as a trade secret, and it was reverse-engineered very quickly. (For a number of years, people would talk about "ARC4", for "Alleged RC4", as RSADSI refused to confirm the reverse-engineered algorithm matched the official one. But since RC4 is astonishingly simple, thus easy to reverse-engineer by disassembly and inspection, there wasn't much doubt. And, of course, no one ever found a difference between the output of the two for any given input.)

    4. Cederic Bronze badge

      I own three on which that's possible. By which I mean three mobile phones each with a different operating system.

  11. adam payne Silver badge

    In the most recent legal proceedings, Apple ask the court to dismiss the lawsuit altogether, including a defamation allegation from Eastman, by claiming there was "prior art" on the patents

    Are Apple trying to invalidate their own patents?!? Is this cut of your nose to spite your face?!?!

    1. JetSetJim Silver badge

      If there's any novelty in those patents it's really, really skinny and not monetisable. I've had a peek through them and there were products on the market that did broadly similar things to them prior t othe earliest filing date (at least the 4 that are for Find My Phone, unsure about the Wallet patent)

  12. Anonymous Coward
    Anonymous Coward

    "Eastman told The Register..."

    But what did APPLE tell The Register ... ?

  13. Samantha3b

    Jobs

    I always thought that that nice Mr Jobs had prior form for "borrowing" unpatented freeware.

  14. Robert Jenkins

    "Find my iphone" is in virtually a clone of "Lojack for laptops" / Computrace, which existed well before 2006.

    It's so close, including location and remote erasure etc., that I do not see any changes radical enough to be patentable?

  15. hasan.raza90

    Aren't patents belongs to the employer if...

    invented / worked on during office hours, can some shed some light on this, btw has anyone seen the TV series Silicon Valley, in it a big tech giant Hooli did same with its employee. Lets see what Apple gets

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