By Jacqui Cheng | Published: October 17, 2007 - 12:14PM CT
The US Patent Office has dealt a blow to Amazon over its controversial “1-Click” shopping cart patent. The patent, which Amazon filed for in 1997, was used in Amazon’s case against Barnes & Noble in 1999, wherein Amazon accused the competing bookstore of patent infringement. Now, the USPTO has rejected 21 of the 26 claims in the patent, leaving only five as “patentable.”
The ruling came as part of a campaign against the patent by a disgruntled Amazon customer, Peter Calveley. The New Zealander and self-described patent enthusiast was burned by an Amazon order of his taking too long to arrive. The experience got him to think about Amazon’s 1-Click intellectual property, which in turn prompted him to start digging up prior art. One thing led to another and Calveley had a handful of prior art to submit to the USPTO for examination. WIth the help of donations from blog readers, he was able to come up with the required $2,520 fee to challenge the patent’s 26 claims. “I wasn’t frothing at the mouth to destroy them,” he told Out-Law. However, Calveley took the time to add, “They deserve to be smacked down.”
And smacked down Amazon was when the USPTO issued its decision yesterday. In the 17-page reexamination document, the USPTO rejected each claim one-by-one with examples of earlier patents that preempted them. Only five claimsâ€”claims 6-10â€”were upheld, as there was no prior art that described Amazon’s exact system as it applied to a web-based shopping cart. “The prior art fails to show or suggest the single action ordering system that includes a shopping cart ordering component as recited in claims 6 and 9,” wrote the USPTO. “Claims 7-8 are considered to be patentable due to their dependency on claim 6. Claim 10 is considered to be patentable due to its dependency on claim 9.”
The USPTO also advised Amazon to amend two of its claims to make them more specific to Amazon’s model. The claims could be patentable if they described a “shopping cart model that in response to performance of an add-to-shopping-cart action, sends a request to the server system to add the item to a shopping cart,” wrote the USPTO.
What now? As Calveley notes on his blog, Amazon has the option to respond to the USPTO’s rejection if it chooses. However, “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,” Calveley said. A modification of the existing patent could not only affect Amazon’s licensing deals with other companies (which includes Apple), but the company’s settlement with Barnes & Noble.
Hopefully, this is only the “start” of reversing some ridiculous patents granted by the USPTO. I have been directly involved in 2 of the “infringement” cases (not related to the shopping cart store). One for “streaming video” that was so “generalized” in description that (as we brought up in court) actually described and encompassed the fictional “beaming up” process from Star Trek.
Another one pending is the “use of popups” to deliver advertising.
(yes, there is actually a patent issued for the process of delivering advertising using a unique process of a popup page).
This was a nice example of a grass roots effort to reverse a ridiculous patent.