Out-Law News | 23 Nov 2007 | 11:14 am | 2 min. read
In October, the US Patent and Trademark Office (USPTO) rejected 21 of the 26 claims of Amazon's famous patent after an Auckland patent enthusiast, Peter Calveley, produced evidence of prior art. The USPTO indicated at the time that two of the rejected claims could become patentable if they were narrowed. These claims, numbers 1 and 11, were the broadest claims in the patent.
Amazon had an opportunity to fight that decision but has now capitulated. In a conference call on 15th November with USPTO examiner Matthew Graham, Amazon lawyers agreed to amend both claims.
The changes "appear to place the claims in condition of patentability," according to Graham's report of the call. "Further review and search would be required," he wrote in his Re-examination Interview Summary (1-page, 48KB PDF).
Calveley did not take on Amazon for business reasons. He told OUT-LAW last month that he did it because he was bored, and funded his campaign with contributions from readers of his blog.
The prior art evidence that he presented included a patent for a system called DigiCash, filed one year before Amazon's. That patent describes a system where a user has access to electronic cash to purchase items electronically. The reason that five claims in Amazon's patent withstood the challenge of the DigiCash patent is that the DigiCash patent did not propose a shopping cart ordering component, whereas Amazon did. So the USPTO told Amazon in October that two other claims could survive if they were amended to refer to a shopping cart model.
The changes to claim 1 (1-page, 26KB PDF) and claim 11 (1-page, 15KB PDF) mean that the patent will no longer cover any system for purchasing an item "in response to only a single action being performed". If the amendments are approved the patent will cover only an item "purchasable through a shopping cart model". That means that a payment system that does not also offer a shopping cart will not infringe Amazon's patent.
Calveley wrote in his blog last night that the amendments, if made, "will free people to use pre-Amazon methods of 'one Click shopping' such as DigiCash-type systems" and will "allow people to implement new and exciting ways of shopping with one click, perhaps using new technologies that didn't exist in 1997."
Calveley called the shopping cart model "an old technology that needs to be put to bed." Amazon's original patent filing explained its shortcomings:
"If a purchaser is ordering only one item, then the overhead of confirming the various steps of the ordering process and waiting for, viewing, and updating the purchaser-specific order information can be much more than the overhead of selecting the item itself. This overhead makes the purchase of a single item cumbersome. Also, with such an ordering model, each time an order is placed sensitive information is transmitted over the Internet. Each time the sensitive information is transmitted over the Internet, it is susceptible to being intercepted and decrypted."
Calveley said, "If these amendments are made, then as far as I am concerned, it is mission accomplished."