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Amazon Jungle K the “One-Click” Patent and Its Reexamination

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Amazon Jungle K the “One-Click” Patent and Its Reexamination early three Ndecades ago the U.S. Supreme Court, in Diamond v. Diehr K CASE COMMENT Claim 11 states: art. Nevertheless, he stated that claims 1 and reexamination helps the USPTO to A method for ordering an item using a 11 would be considered patentable if they compensate for the shortcomings of a purely client system, the method comprising: were amended to include a shopping cart ex parte examination process. displaying information identifying the model as an element of the claim. The history of the Amazon.com One-Click item and displaying an indication of a On November 29, 2007, Amazon.com patent reminds one of the authors of this single action that is to be performed to responded to the Office Action with proposed comment of his own experiences in dealing with order the identified item; and in response to amendments to claims 1 and 11. Amazon.com’s another controversial software patent, U.S. only the indicated single action being proposed amendment to claim 11 reads: Patent No. 5,241,671, issued to Compton’s performed, sending to a server system a A method for ordering an item using a Multimedia early in the digital age in 1993. request to order the identified item whereby client system, the method comprising: Shortly after taking office as Commissioner of the item is ordered independently of a displaying information identifying the the USPTO he faced a public furor over the shopping cart model and the order is item purchasable through a shopping cart issuance of this patent, which covered a wide fulfilled to complete a purchase of the item. model and displaying an indication of a swath of multimedia applications combining single action that is to be performed to computer sound, video and data on a computer Less than a month after the One-Click Patent order the identified item; and in response to disk. The New York Times quoted one prominent was issued, Amazon.com sued only the indicated single action being practitioner as stating that, “it’s unprecedented Barnesandnoble.com, Inc. (“BN”) for patent performed, sending to a server system a the amount of outrage it [the patent] has infringement, alleging that BN’s “Express request to order the identified item whereby generated.”4 That same Times article noted that Lane” feature of its website infringed the One- the item is ordered independently of [a] “many in the industry contend” that there were Click Patent, and moved for a preliminary the shopping cart model and the order is disqualifying commercial products on sale prior injunction. BN denied Amazon.com’s fulfilled to complete a purchase of the item. to Compton’s 1989 filing. allegations and counterclaimed that the One- In 1993 the ability of third parties to Click Patent was invalid. In December 1999, Amazon.com’s proposed amendments to claim initiate effectively reexaminations was more the United States District Court for the 1 are identical to those set forth in amended limited than today. As a result the author Western District of Washington granted claim 11. If the patent examiner allows initiated a Commissioner ordered Amazon.com’s motion for a preliminary amended claims 1 and 11, then it is likely that reexamination that would consider the prior injunction.1 On appeal, the United States Court he will allow the remaining 19 rejected claims, art that many had claimed had been of Appeals for the Federal Circuit vacated the all of which are dependent on claims 1 and 11. overlooked. This reexamination resulted in district court’s order and remanded the case for As of the writing of this article, the patent revocation of the patent. However, the patent further proceedings.2 The parties subsequently examiner has not yet ruled on Amazon.com’s was subsequently upheld in two court reviews, settled the dispute on undisclosed terms. proposed amendments. once in 1999 and later in 2001 when the Amazon.com’s One-Click Patent is a prime Court of Appeals for the Federal Circuit held Reexamination example of controversial patents that are often 10 of the original claims allowable. The validity of the One-Click Patent held up to ridicule in the popular press as Continuing applications based on the original remained unchallenged until February 2006, mistakes of the USPTO. Indeed, the dismay patent have continued to be filed as late as when New Zealand resident, Peter Calveley, expressed by many in the software and 2006. In the case of the Compton’s multimedia filed an ex parte request for reexamination of Internet business communities, and the patent, the result in the end was a refined the One-Click Patent with the USPTO. attendant publicity about this patent, may patent not a revoked patent. Both the Calveley, a performance artist and avid have been reasons for which Peter Calveley Amazon.com and Compton’s Multimedia blogger, filed the request in retaliation for chose to initiate his third party reexamination. cases demonstrate that controversial software what he described as “annoyingly slow book However, the apparent outcome of the and business method patents that may seem delivery” for an order he placed on reexamination illustrates the problem with by the public at large to have been clear Amazon.com’s web site.3 Calveley solicited his patents that – according to the popular press – mistakes, in fact have been based upon viable blog readers for donations to help defray the should never have been granted. In fact, in legal foundations. The reexamination process $2,520 reexamination filing fee, to which they most cases the USPTO’s original examination provides a method of determining whether obliged, and asked them to provide evidence decisions are not far off the mark. that public perception is justified – and of any prior art of which they may be aware. Calveley’s reexamination request did not, in refining the scope of the issued patent to more The USPTO granted Calveley’s request for fact, result in a revocation of the patent. accurately reflect the prior art record than an reexamination on May 12, 2006, ordering that Rather, it resulted simply in the narrowing of ex parte examination alone can accomplish. K all 26 of the One-Click Patent’s claims be the claims. After all the public furor, the One- reexamined. On October 9, 2007, the USPTO Click patent remains valid as long as it is Notes issued an Office Action rejecting two of the limited to a “shopping cart model”. That 1. Amazon.com, Inc. v. Barnesandnoble.com, Inc., independent claims (claims 1 and 11) and 19 Amazon.com agreed to limit the scope of its 73 F.Supp.2d 1228 (W.D. Wash. 1999). of the dependent claims on the grounds of claims in response to the examiner’s rejection 2. Amazon.com, Inc. v. Barnseandnoble.com, Inc. anticipation by prior art and obviousness. The demonstrates the wisdom of Congress in 239 F.3d 1342 (Fed. Cir. 2001). patent examiner confirmed as patentable five recent years in strengthening the right of third 3. See Peter Calveley’s November 13, 2005 blog of the original patent claims. parties to submit prior art to the Patent Office entry at http://igdmlgd.blogspot.com/ In his analysis, the patent examiner that had not been previously considered. 2005_11_01_archive.html. concluded that ordering items over the Given the time pressures on examiners 4. Markoff, J., “Patent Office to Review a Internet through a single action, such a and the difficulty of prior art searches in a Controversial Award”, New York Times, mouse click, were anticipated by the prior new and evolving technology, third party December 17, 1993. 22 | Patent World Issue # 200 | March 2008 www.ipworld.com.
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