After Recommind announced June 8 that it had obtained a patent on predictive coding, the news rapidly rebounded throughout the e-discovery industry. In a Law Technology News article published the same day, Recommind Intends to Flex Predictive Coding Muscles, reporter Evan Koblentz quoted Craig Carpenter, Recommind’s general counsel and vice president of marketing, as saying that the company would “seek to license the patents to other companies that already offer their own versions of predictive coding or that want to have the ability.”
Koblentz also spoke to Catalyst’s CEO, John Tredennick, who said, “We’re puzzled that you can get a patent on what seems to be 40 years in the making in the academic community.” The next day, in a post at the blog Above the Law, John’s response and those of other Recommind competitors were characterized as jealous and grumpy.
Call it grumpiness if you will, but others in the e-discovery industry continue to weigh in on the patent with comments that are every bit as skeptical. Here at the Catalyst blog, Tredennick wrote a more-detailed explanation of his position, Predictive Coding: One Grumpy Old Competitor Speaks Up, and Catalyst’s senior applied research scientist, Jeremy Pickens, wrote an in-depth analysis, The Recommind Patent and the Need to Better Define ‘Predictive Coding’.
From elsewhere in the industry, other voices chimed in. Yesterday, Equivio distributed a statement to users of its software, saying that nothing in the Recommind patent “would inhibit, in any way, the use of Equivio software.” It goes on to say:
Recommind’s patent covers a very specific technique, within the predictive coding arena, for a very specific scenario. Recommind’s original request was in fact very broad, but the patent examiner rejected this request, and confined the patent to a particular threshold mechanism in a rolling loads scenario. Bottom line–other techniques for predictive coding are legitimate, and there are many different approaches available in the industry.
Indeed, at the time of Recommind’s filing, in May 2010, there were many vendors actively offering predictive coding applications in the e-discovery market. This was clear to anyone attending last year’s LegalTech New York conference in February 2010 or to anyone following the industrial and academic work at TREC 2009 and 2010. In their 2010 survey report on predictive coding vendors, the eDiscovery Institute lists 11 predictive coding providers. In addition to Equivio and Recommind, the companies surveyed included Capital Legal Solutions, Catalyst, FTI Technology, InterLegis, Kroll Ontrack, Valora and Xerox.
Equivio’s statement says that it has a number of pending patent applications on predictive coding with filing dates that pre-date the Recommind filing.
[W]e think the claims issued in the patent and the associated workflow are so commonly used that the workflow is neither novel nor non-obvious to a trained practitioner, and there is enough prior art on each of the individual technologies to warrant a re-examination and eventual invalidation of the patent. In any event, it is fairly easy for anyone to pick up existing prior art and devise a similar workflow that achieves the same or better outcome, and attempt to enforce the patent will likely be challenged.
Rangan takes it further, arguing that the patent is not just bad, but is bad for the corporations and law firms that use e-discovery technology.
[T]here is an even bigger issue at stake here beyond the status of Recommind’s patent: namely, shouldn’t the e-discovery vendor community continue to work, as it has for years, toward what is in the best interest of the legal community and, more broadly, the justice system? Recommind’s thinly veiled threats about requiring industry participants to license their technology are an affront to those who have invested years developing the technology and practicing the approach in real-world e-discovery cases. … Wouldn’t a better outcome be for corporations and law firms to benefit from the innovation that comes from free competition in the marketplace, while still honoring the sort of novel, non-obvious innovation that warrants patent protection?
Several others offered similar opinions questioning the validity of the patent. At her blog Ride the Lightning, Sharon Nelson, president of Sensei Enterprises, said, “I personally agree with John Tredennick that this technology has been decades in the making–it is likely to be challenged as not being novel and as being obvious.” Monica Bay, editor-in-chief of Law Technology News, wonders whether Recommind is blowing smoke. Although she usually steers clear of this sort of industry “pissing contest,” she says, she can’t help but believe that the Recommind patent “seems pretty darned broad and over-reaching.” And Herbert L. Roitblat, CTO of OrcaTec, wrote at his Information Discovery blog, “Having examined the patent carefully, I can say that this patent covers only a very narrow method of computing in predictive coding and is unlikely to have any impact on the ability of any other eDiscovery service provider to continue to offer this game-changing capability.”
Regardless of whether the patent stands or falls, some industry observers see a silver lining in this brouhaha. Katey Wood, an analyst at Enterprise Strategy Group, writes that any patent battle could have the effect of promoting the wider use and acceptance of predictive coding
among e-discovery professionals. “My hope is that a patent battle lends predictive coding more credibility in the legal market, and finally helps customers find religion where logical arguments haven’t succeeded,” she writes. And Barry Murphy, co-founder and principal analyst at eDiscoveryJournal, writes in a post there that this is, ultimately, all good for the industry. “One could say that Recommind is doing prospects a favor by throwing down the gauntlet and forcing competitors to transparently define exactly what ‘predictive coding’ capabilities they do/do not have,” he says.
What goes around comes around. Today, the company that gave rise to this controversy responded to it. In a blog post, Recommind CEO Bob Tennant digs in his heels, calling the response of competitors “logical–if somewhat disingenuous.” He staunchly defends the viability of the patent, asserting that it “rests on a foundation a decade in the making and affords us the protection of law in the defense of our property rights.”
Predicting what the future holds for this predictive coding debate would require a crystal ball. To my knowledge, no one has yet patented one of those.