Out-Law News | 17 Oct 2007 | 9:56 am | 3 min. read
There are 26 claims in Amazon.com's patent for Method and system for placing a purchase order via a communications network, better known as its 1-Click patent. Only five of the claims – numbered 6 to 10 – have been deemed "patentable and/or confirmed." Twenty-one others were rejected.
Peter Calveley from Auckland has previously told OUT-LAW that he has no business interest in revoking Amazon's most famous asset of intellectual property.
He worked as a motion capture performer and appeared as part of the evil armies in Peter Jackson's Lord of the Rings trilogy before he began his Amazon.com campaign over 18 months ago. He said at the time that it was a simply a hobby borne of an interest in patents and a frustration with an order for a book from Amazon that took too long to arrive.
Amazon applied for its famous patent in September 1997, naming founder and CEO Jeff Bezos as one of three inventors.
Only new inventions can be patented. An invention is not eligible for a patent if it has been described in prior art. Prior art includes any information that has been made available to the public in any form before the patent application is filed. Calveley submitted a 22-page list of evidence that he considered prior art.
Among Calveley's evidence was a patent filed in April 1994 that described a one-button ordering process for interactive TV. "When a viewer wishes to order an item, a button is pressed on the TV remote control. This button signals the client computer ... to solicit the information necessary to place the order," says the patent.
The USPTO noted that process and also that another part of that patent described generating an order to purchase a requested item for the purchaser using an identifier. "The client computer would not know which information to retrieve from the permanent memory or who to charge or send the item to unless an identifier was transmitted when the order was placed from the user's interactive TV," it said.
Another patent, filed more than one year before Amazon's, describes an On-line secured financial transaction system through electronic media. The USPTO noted that it "shows method for ordering an item using a client system … comprising: displaying information identifying the item and displaying an indication of a single action that is to be performed to order the identified item … The product may be purchased by clicking on a single action button 'BUY'"
Eight claims fell because of an article that appeared in Newsweek in 1995, The End of Money?, by Senior Editor Steven Levy. Levy's Newsweek article included this explanation:
“You’re cruising the net, hopping from link to link with your favorite browser. In a small window in the corner of your screen sits a ledger. ‘$100.00' it reads. As you land on a favorite web site, something strikes your fancy – an annotated bibliography of every article ever written about Sandra Bullock! Only five bucks. You click on a button, and the file is downloaded to your computer. That tiny ledger on your screen now reads '$95.00.'”
The USPTO noted: "Levy shows method for ordering an item using a client system (a computer and a Web site, … the method comprising: displaying information identifying the item (for example, an article on Sandra Bullock) and displaying an indication of a single action that is to be performed to order the identified item by clicking on a button."
Another of Amazon's patents, Secure method and system for communicating a list of credit card numbers, filed in 1995 and naming Bezos as inventor, undermined three other claims of the 1-Click patent.
Five claims in the 1-Click patent were upheld because the prior art did not cover a single-action ordering system that includes a shopping cart ordering component. The patents cited by Calveley related to a system called DigiCash, where a user has access to electronic cash to purchase items electronically.
"None of these DigiCash or electronic cash systems or the prior art contemplates or suggests a single action ordering system or component that includes a shopping cart ordering component."
The patent office concludes that two claims in Amazon's patent could become patentable if they were amended to refer to a shopping cart model.
In a blog posting last night, Calveley wrote: "Amazon has the opportunity to respond to the Patent Office's rejection, but third party requests for reexamination, like the one I filed, result in having the subject patent either modified or completely revoked about 2/3 of the time."
Amazon.com's 1-Click patent became famous when it sued rival bookseller Barnes & Noble.com in 1999. It alleged infringement for allowing B&N customers to make repeat purchases just by clicking on a product. B&N argued that the patent should be declared invalid but a court imposed an injunction, requiring it to change its shopping process. The companies later agreed settlement terms. Amazon.com has since licensed the patent to other retailers, including Apple.