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Patent Office to reconsider Amazon's 1-Click patent

Kiwi lays down challenge to 'have some fun'

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The US Patent and Trademark Office ordered a re-examination of Amazon.com's controversial 1-Click patent on Friday following a New Zealander's discovery of what he believes to be prior art.

Peter Calveley is not an aggrieved inventor; he's just having fun.

The 35-year-old from Auckland is a fascinating individual. An interest in stage combat and Chinese opera led to work as a motion capture performer. Calveley wielded swords and axes for Peter Jackson's Lord of the Rings. CGI captured and cloned his movements, adding digital skins that brought him and some others to the screen as evil armies of orcs and elves. Yet despite countless roles in one of the most successful movies of all time, Calveley's name did not even appear in the closing credits. It only became known in the press, when he subsequently campaigned for recognition of motion capture performers.

Taking on the internet's most famous patent is his second public battle. "I'm not a pugnacious person," he is keen to point out. The Amazon.com challenge was simply borne of an interest in patents – "like some people are into vintage cars" – and an interest in "retro payment systems".

The interest in patents began many years ago. He completed a science degree and then a commerce degree. Then he sat a patent attorney exam – "for fun", he says. That was seven or eight years ago. He never became a fully-qualified patent attorney because he did not have a biochemistry degree, "which is what everyone seems to want", he says. But his interest in patents remained.

Jump forward a few years and a frustrating experience at Amazon.com (he ordered a book that took too long to arrive) got him thinking about the company's claim to fame in the world of intellectual property, the 1-Click Patent. In theory it gives Amazon.com a monopoly on highly-efficient online shopping, describing the ability to shop conveniently without having to enter your shipping and billing information each time you purchase.

In one of the most famous disputes of the internet age, Amazon.com sued rival bookseller Barnes & Noble.com in 1999, alleging infringement of its 1-Click business method patent by allowing its customers to make repeat purchases just by clicking on a product, a similar method to that described in its patent. B&N argued that the patent should be declared invalid, but a court imposed an injunction, requiring it to change its shopping process. The timing could not have been worse for B&N: the court order came during the Christmas shopping rush. The companies later agreed settlement terms and the patent has since been licensed to other retailers. Its highest profile use under licence is to ensure that customers at Apple's iTunes Music Store can buy music as quickly as possible.

But when Calveley examined the 1-Click patent's claims at the USPTO's website, he recalled a patent for Digicash filed in 1996, the year before Amazon.com's filing. The Digicash patent describes a process in which a purchaser has electronic cash in an account. The customer clicks on an item to buy using a single action; a sum is deducted from his account; and an item is sent to the user, perhaps as a download.

He saw an opportunity: some of the claims in Amazon.com's patent seemed very wide-ranging and overlapped, in his opinion, with the claims of the Digicash patent and other unpatented prior art, including a system that dials a number and delivers an item upon a single click, without user interaction.

"I wasn't frothing at the mouth to destroy them," he said. "I was mildly peeved. I have no ideological axe to grind; I just thought, 'this is interesting; I can have some fun here'."

He did his research and wrote about it in a blog. He invited readers to contribute to a fund for challenging the controversial patent. The USPTO fee was $2,520 but it was met with around 100 people chipping-in sums ranging from $1 to $300. Paying the fee is not an automatic right to a re-examination; it only takes place under an order from the USPTO.

"I'm not under any illusions that the claims will be removed," he said. But he can see them being narrowed – and that could give others an opportunity to work around the claims, perhaps implementing ecommerce systems that hitherto would have infringed Amazon.com's rights.

"They deserve to be smacked down," he laughed. But he's too modest to predict the implications. He hopes people will find a convenient way of shopping that no longer infringes Amazon.com's patent; but he's a modest man and reckons he's under-qualified to say what will happen. He did not want to speculate on what impact his challenge might have on Apple Computer's licence to use the 1-Click patent. "I'm aware of my limitations," he said.

Currently he's still involved in acting and fight arranging; but he's fascinated by the potential for a community approach to challenging other patents. He found the willingness to participate remarkable.

"We have this whole open source movement that would like to knock out a lot of patents," he notes. He suggests a form of peer-to-peer participation to perform the research and raise the funds for challenging patents. "I think of it as an extreme sport for the desktop," said Calveley. "Like big game hunting."

After deliberation, the USPTO agreed on Friday to re-examine the patent. Calveley does not know how long the process will take, nor will he predict its outcome. The nature of his application is such that only Amazon.com and the USPTO will discuss his challenge. He cannot participate – because the fee for a so-called inter parties process was too high.

OUT-LAW contacted Amazon.com's Seattle HQ.

"Amazon.com remains confident in the validity of its 1-Click patent," director of corporate communications Patty Smith said. "We look forward to working with the examiners in the Patent and Trademark Office, and we welcome the opportunity to re-validate what we believe is an important innovation in ecommerce."

A full explanation of the challenge is at Calveley's blog. An explanation of the re-examination process is at Patent Baristas.com.

See:

Copyright © 2006, OUT-LAW.com

OUT-LAW.COM is part of international law firm Pinsent Masons.

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