ass=”alignleft size-full wp-image-1626″ title=”amazon_crave” src=”https://www.patentspostgrant.com/wp-content/uploads/2010/03/amazon_crave.jpg” alt=”amazon_crave” width=”181″ height=”119″ />Various stories began appearing yesterday noting the recent termination of the ex parte reexamination Amazon’s famous “1 – click patent” (USP 5,960,411). This patent was the subject of a patent dispute between Amazon.com and Barnes & Noble.com. As most recall, B&N was subject to a preliminary injunction during the 1999 holiday season. The suit was settled in 2002, terms of the settlement remain confidential. Amazon appears to have been fairly successful in licensing the patent thereafter.
In 2006, a New Zealand actor appearing in such films as Lord of the Rings, decided to go on a quest to invalidate the 1- click patent (I’m picturing Frodo, I don’t know about you) requesting ex parte reexamination of all claims. The request for reexamination was granted with respect to the claims of the patent (1-26). Claims 6-10 recited a shopping cart component and were confirmed patentable over the submitted art of the request.
Not surprisingly, the shopping cart feature of the confirmed claims was later introduced by Amazon into rejected claims 1-5 and 11-26 by amendment. This amendment was submitted to the USPTO in 2007. It is unclear why the USPTO took so long to terminate the reexamination, however, the termination is not the least bit surprising as the writing has been on the wall for several years now. So, one would expect that the conclusion of this reexamination would be rather uneventful right?
Wrong
Yesterday the typical “sky is falling” stories began to emerge, some from the usual anti-patent suspects, decrying systemic failure, while others were from more informed legal commentators. It is especially disappointing to see more informed IP blogs identify this reexamination as “the poster child for patent reform.” I am left scratching my head at such statements. In fact, this reexamination worked EXACTLY as it should (amendment delay aside).
Don’t take my word for it, read what Frodo had to say about it, taken from the reexamination requestor’s blog:
On 29 November, Amazon have amended the claims as agreed to in their interview. In doing so (in particular, in their amendment to claim 11), they give up their absolute monopoly on the idea of one-click shopping.
The claim used to read:
11. A method for ordering an item using a client system, the method comprising:
displaying information identifying the item and displaying an indication of a single action that is to be performed to order the identified item; and
in response to only the indicated single action being performed, sending to a server system a request to order the identified item
whereby the item is ordered independently of a shopping cart model and the order is fulfilled to complete a purchase of the item.
Now it is restricted to items “purchasable through a shopping cart model”.
As I mentioned in my previous post, I think the “shopping cart model” is well past its use-by date so this kind of amendment is precisely what I was after.
While the Amazon patent was not invalidated, the broadest claims were amended. Let me say this again, THE BROADEST CLAIMS WERE AMENDED. While the uninformed, anti-software patent fringe only see the fact that the 1-click patent still exists, what is lost on them is that the broadest claims cannot be applied against infringers for past damages under the doctrine of intervening rights. In fact the amended claims will not even exist until published (likely late May 2010). In essence, reexamination worked for the broadest claims, the SNQs of the request were analyzed and claim scope was surrendered as a result.
Of course, critics will argue that the amendment adds a “trivial feature” that everyone uses, and that some claims were not amended. As can be seen from above, the requestor does not agree with respect to the amendment.
Moreover, all of this was public record for the last three years. How many new requests were filed to let the USPTO know about this alleged “trivial feature” or to submit stronger art against the confirmed claims?
Answer: ZERO
Patent reexamination is a cooperative exchange between the USPTO and the public, it is not a re-working of the original examination process. In other words, if the USPTO does not have the best art, they do not go looking (i.e., no searching) for it unlike typical examination (as reexamination is accorded special dispatch). Instead, the USPTO relies on the public to focus their analysis and request reexamination. In this case the submitted art was avoided by amendment, that is how the system works. To the extent anyone failed, it is the very people now complaining, not the USPTO.
Criticism on the timeliness of the Office is valid as the reexamination should have terminated in 2007. However faulting the Office for not killing the patent based on art it did not have or did not appreciate is beyond silly. Anyone at anytime could have filed, and still can file a new reexamination showing all of these claim elements (if indeed they are so well known) including use of the art already submitted if overlooked; yet the silence from the public has been deafening.
Every hobbit needs a good wizard. Unfortunately, the wizards seem content to simply complain on the Internet.