Tuesday, March 13, 2007

The Empire strikes back

Amazon.com (well, the lawyers they have hired-a jolly unsporting move if you ask me!) have recently filed 167 documents weighing about 7kg in the reexamination of the “One Click Patent” that I requested . You can read some of them by going to the USPTO PAIR access site, choosing "Control Number" in the drop-down box, entering: 90/007,946 and pressing the "Submit" button.

You can't read 92 of these documents-they aren’t available online as they are NPL (non-patent literature) documents and the USPTO doesn't make them available.

Until now, I wasn’t able to see them either.

According to the Code of Federal Regulations Amazon.com are supposed to give me a copy of everything they file-but they have made a habit of not doing so (I don’t seem to be on their xmas card list either-but maybe last year it got lost in the mail :-) ).

I had to call the USPTO and persuade them to remind Amazon of the rules so finally Amazon mailed me a copy of the documents. Yay! A parcel from Amazon without the corresponding hole in your credit card!

So what are some of the highlights of this riveting collection?

Bizarrely, some of them are copies of documents I already filed with my reexamination request e.g. pages relating to archive.org, DigiCash etc. It seems entirely redundant to give them to the USPTO examiner twice but it does bulk up their filing I suppose.

Others include a definition of “client-server” taken from Wikipedia in 2006, and a definition of “shopping cart” taken from Wikipedia in 2004.

One would hope that these would not be taken as representative of how things were thought of when the patent was filed 10 years ago.

Even leaving aside general questions about the reliability of information on Wikipedia, and the fact that the references don’t date from the time period they would presumably be applied to, one hopes that the examiner will take time to think about the deeper implications of giving any weight at all to evidence on a website ANYONE CAN EDIT...

Hopefully my references will be taken to be more authoritative as to how things were defined in the 1990s: Encyclopedia of Computer Science, Third Edition, Ralston, Anthony, Edwin D. Reilly, eds. London, Chapman & Hall, 1993. Dictionary of Computer Terms New York, Barron’s Educational Series, Inc., 1995 Dictionary of Computing, Fourth Edition , New York, Oxford University Press, Inc. , New York, 1996 etc.

Amazon have also filed a number of documents attesting to the commercial effectiveness and advantages of “One click shopping”. Perhaps they are intending to make some of the old arguments along the lines of: “Nobody thought it would be successful –but it was-so it must be nonobvious!” and “Look how commercially successful it is-it must be nonobvious!” etc.

I thought they might try some of these tactics, so in my request for reexamination, I have already pointed out that:

(1) There were a lot of other reasons Amazon had commercial success-its customization features (for which Pinpoint Incorporated unsuccessfully sued Amazon for patent infringement), the number of books in stock, the general growth of the Internet and e-commerce etc.

(2) Any alleged benefits of the Amazon “One-click” system that were the same as the known benefits achieved by the DigiCash and other systems are evidence of obviousness of the “One-click” system.

"Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967),); Ex parte Blanc, 13 USPQ2d 1383 (Bd. Pat. App. & Inter. 1989).

Any long-felt need must not have been satisfied by another before the invention by applicant. Newell Companies v. Kenney Mfg. Co., 864 F.2d 757, 768, 9 USPQ2d 1417, 1426 (Fed. Cir. 1988). Any need for increasing impulse purchases was clearly achieved by the DigiCash system.

See also Orthopedic Equipment Co., Inc. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 217 USPQ 1281 (Fed. Cir. 1983) (Although the claimed invention achieved the desirable result of reducing inventories, there was no evidence of any prior unsuccessful attempts to do so.).

The DigiCash system (which had a "one-click purchasing" feature) not only achieved commercial success, but also was noted for its convenience and the fact that it enabled “impulse” purchases by consumers . Furthermore, it prompted a similar system to appear soon afterwards, the “Cybercoin” system promoted by Cybercash.

Below are quotes from some of the references in my reexam request that refer to the convenience of the prior art "one-click shopping" systems (there is a lot more along these lines in the request itself, but I don't want to put you to sleep..).

Thanks again to everyone who helped with the reexam fee! Let me know if you want more info on the docs Amazon have filed.

Note this isn’t legal or commercial advice, IANAL etc…

Gary Welz "New Deals" Internet World pp. 36-41 June 1995

”How can a Net surfer visit an electronic newsstand and make impulse purchases if the products sell for only $1 or $2? The answer is electronic cash, and several companies are developing it (see “Cashing In”, Feb IW).”

Peter H. Lewis "Attention Internet Shoppers: E-Cash is Here" The New York

Times p. D4 October 19, 1995 “Once established and widely adopted, DigiCash and other electronic cash systems would eliminate much of the cross-over between conventional banks and cyber banks, and allow spontaneous purchases that are cumbersome under other systems.”

Hapgood, Fred. “Sex sells” Inc [online]. Boston: 1996.Vol. 18, Iss. 17; pg. 45, 4 pgs “Converting to this kind of payment scheme may prompt extensive design changes for existing businesses. Whereas most current erotica sites attract subscribers through services like mass downloading, a site built around micropayment technology, which could allow not only per-image but even per-second pricing, would encourage impulse purchasing and could open up the market to people who don't want to use credit systems on the Net or who aren't interested in buying subscriptions.”

Gibbs, Mark “Piling up the virtual money”. Network World [online]. Framingham: Sep 11, 1995.Vol. 12, Iss. 37; pg. SS17, 3 pgs “Ease of use in on-line systems is crucial because a clumsy system is at odds with the expectations of customers conditioned to fast, frictionless sales. As any direct marketer will tell you, an obstacle, however small, to placing an order will cost you business.”

Relating to CyberCoin rather than DigiCash:

Rowley, Jennifer “Retailing and shopping on the Internet”. International Journal of Retail & Distribution Management [online]. Bradford: 1996.Vol. 24, Iss. 3; pg. 26 What attracts shoppers? Ellsworth says, "There are as many reasons as there are people, but most Net shoppers cite the speed of transaction, convenience, selection and price. Also attractive to on-line users is the immediate delivery of information and digital products that can be had from home, work, or on the road.

Anonymous. “Pay with a CyberCoin” Link – up [online]. Medford: Nov/Dec

1996.Vol. 13, Iss. 6; pg. 1, 2 pgs "CyberCoin fulfills a growing need for consumers to purchase lower-priced and impulse items on the Internet-especially digital goods and services that can be instantaneously downloaded to your computer, such as software, articles, research, games, and music," said Bill Melton, CEO of CyberCash. "Internet merchants must offer consumers the ability to make spontaneous, small denomination payments on the Internet to take electronic commerce to the next level……When a consumer wants to purchase an item on the Web, he or she simply clicks on the Coin icon next to the goods. The entire process takes only seconds.”

http://web.archive.org/web/20000603125102/cybercash.com/cybercash/compa ny/news/releases/1996/96sept30.html>. Online Shopping Made Easy With CyberCoin CyberCoin provides the consumer with the ease and simplicity that has been missing from the Internet shopping experience. When an individual on the Web finds an item that he or she would like to purchase, the consumer simply clicks on the Coin icon next to the goods. It's that simple. The entire process takes only seconds..”



Post a Comment

<< Home