Hacking the Xbox

Chapter 12 - Caveat Hacker 183
Also, one who tries to make a patented invention to satisfy scientific
curiosity may have an “experimental use” defense. Under U.S. law, this
defense is narrow and probably does not include research uses that may lead
to development of a patentable invention or a commercial product. 30
The clash between these three areas can be seen if we look again at the Sega
situation. Suppose Sega had a patent on an algorithm used in all of its
game programs. By disassembling Sega programs, Accolade arguably
“makes” or “uses” the patented algorithm, even if it did so inadvertently.
In short, the intermediate copying problem reappears in the patent context.
New Challenges for Reverse Engineers
The importance of reverse engineering has only grown with the rise of
commercial cryptography in mass-marketed products, because it is impossible
to make systems more secure without trying to break them. Ironically,
the growing use of encryption has contributed to laws against reverse
engineering. The entertainment industry, for example, now relies on
encryption and other technologies to protect digital information like music
on CDs and movies on DVDs against unauthorized copying.
Unsurprisingly, new laws have been enacted to prevent people from
“circumventing” encryption and other forms of security.
Legal encroachments to reverse engineering haven’t been limited to encryption.
In the 1970s and 1980s some states forbade the use of a direct
molding process to reverse-engineer boat hulls. 31 In the late 1970s and early
1980s, the semiconductor industry sought and obtained legislation to
protect chip layouts from reverse engineering to make clone chips. 32 A
29 See Pioneer Hi-Bred Int’l, Inc. v. DeKalb Genetics Corp., 51
U.S.P.Q.2d (BNA) 1797 (S.D. Iowa 1999) (enforcing a “bag tag”
prohibiting purchasers of PVPA-protected corn seed from using
the seed for breeding or research purposes).
30 See Roche Prod. v. Bolar Pharmaceutical Co., 733 F.2d 858,
858-63 (Fed. Cir. 1984) (defense does not permit “unlicensed
experiments conducted with a view to the adaptation of the
patented invention to the experimentor’s business,” as opposed
to experiments conducted “for amusement, to satisfy idle
curiosity, or for strictly philosophical inquiry”); Rebecca S.
Eisenberg, Patents and the Progress of Science: Exclusive
Rights and Experimental Use, 56 U. Chi. L. Rev. 1017, 1023
(1989).
31 These state laws were struck down by the Supreme Court in
Bonito Boats.
32 Semiconductor Chip Protection Act, Pub. L. No. 98-620, 98
Stat. 3347 (1984) (codified at 17 U.S.C. § § 901-914 (1994)). We
will not discuss this statute except to note that it contains a
specific reverse-engineering privilege that permits the copying of
protected chip designs in order to study the layouts of circuits,
and also the incorporation of know-how discerned from reverse
engineering in a new chip. Interestingly, reverse engineers must
engage in enough “forward engineering” to develop an original
chip design that itself qualifies for SCPA protection.