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."
