It has been eight years since Amazon.com secured allowance for its New Zealand patent application 503311 titled “Method and system for placing a purchase order via a communications network”. The application is better known somewhat inaccurately, as Amazon.com’s “one click patent” or “1-click patent”.
In my last blog post I covered the initial hearing dealing with an objection by the opponent to extensions of time and claim amendments. In this post I cover the full hearing on 10 June 2011. The decision is reported as Amazon.com, Inc v Patrick Ryan Costigan  NZIPOPAT 12 (21 July 2011). The opponent didn’t appear at the hearing.
The patent application
New Zealand patent application 503311 began as a PCT application filed 10 September 1998. The application claims priority from two US patent applications filed on 12 September 1997 and 23 March 1998 respectively.
There were 80 claims going into the hearing. Claim 1 for example read as follows:
1. A method in a client system for ordering an item, the method comprising:Prior publication
receiving from a server system a client identifier of the client system;
persistently storing the client identifier at the client system;
when an item is to be ordered,
displaying information identifying the item and displaying an indication of a single action that is to be performed to order the identified item; and
in response to the single action being performed, sending to the server system a request to order the identified item along with the client identifier, the client identifier identifying account information previously supplied by a user of the client system wherein the user does not need to log in to the server system when ordering the item; and
when account information is to be changed,
coordinating the log in of the user to the server system;
receiving updated account information; and
sending the updated account information to the server system
whereby the user does not need to log in to the server system when ordering the item, but needs to log in to the server system when changing previously supplied account information.
The opponent alleged all 80 claims were prior published (anticipated) but listed no documents and did not produce the “additional evidence” promised in his Statement of Case.
The Hearing Officer considered obviousness with regard to prior publication. Prior use was not considered because the opponent had provided no evidence to support this ground.
He followed the usual test for obviousness set out by Oliver LJ in Windsurfing International Inc v Tabur Marine (Great Britain) Ltd  RPC 59, slightly restated by the English Court of Appeal in Perzzoli SpA v BDMO SA  EWCA Civ 588;  FSR 37, and previously applied in New Zealand in Osmose New Zealand v Tim Tech Chemicals Limited  NZIPOPAT 22 (15 November 2010).
This involves the steps of:
- identifying the notional skilled addressee and the relevant common general knowledge of that person;
- identifying the inventive concept;
- considering the prior art;
- identifying differences between the prior art and the invention as claimed; and
- asking whether those differences would have been obvious to the skilled addressee armed with the common general knowledge.
The normally skilled but unimaginative addressee
The notional skilled addressee in this case was:
“a person involved in the design of an online ordering method and system, more particularly, an internet based e-commerce website, allowing customers to purchase items from merchants or vendors using the method or system”.The Hearing Officer went on to determine the relevant common general knowledge of the notional skilled addressee. He observed:
“It is clear … that in 1997 the field of e-commerce was fast-moving and most of the important developments in the field were made by private companies who kept them to themselves rather than publishing them or otherwise making them available to the general public. Thus few details of such developments would, it seems to me, have been part of the ‘common general knowledge’.”The inventive concept
The Hearing Officer observed that each of the independent claims defines a core inventive concept summarised as a system or method for ordering an item, having the following features:
- a server system providing to a client system a client identifier for identifying that client system, the client identifier being persistently stored at the client system;
- when an item is to be ordered, the client system displaying information identifying the item and displaying an indication of a single action that is to be performed to order the identified item; and
- in response to the single action being performed, the client system sending to the server system a request to order the identified item along with the client identifier, the client identifier identifying account information previously supplied by a user of the client system.
The opponent raised eighteen documents in support of the obviousness argument. The opponent relied entirely on the mosaicing of prior art documents and identified 12 different “prior art combinations”.
The Hearing Officer observed that the law is clear that mosaicing of prior art documents is only allowable if that is what the notional skilled person or team would do. He said it necessitates more than a mere “after the event” assertion such as “I would have combined the references”.
None of the documents individually came close to disclosing the inventive concept. The Hearing Officer concluded:
“It is quite clear to me, after reading the evidence of both parties, that in 1997, the priority date of the present application, e-commerce was in its reasonably early development with the most popular system being the 'Shopping Cart model'. This system, however, had two apparent drawbacks, a concern about security because information, such as credit card numbers, had to be transmitted over the Internet, and the 'transactional overhead' problem of too many steps causing buyers to give up part way through their purchasing process.
The present invention, it seems to me, went a long way to solving these problems, against the conventional wisdom, by simplifying the process to a one-click purchasing sequence and the innovative use of its particular client identifier. None of the eligible cited documents, as I understand it, came close to foreshadowing these features.”Not an invention
The opponent alleged that the method claims comprised “no more than a combination of known features and known steps all of which produce a known and expected result”. On the system claims, he said that “there can be no invention in a known system”. The claims are “a mere collocation of steps whose properties are well known with respect to the claimed invention, and from which collocation no surprising result is obtained”.
There were two basic questions here in assessing whether there was a “manner of new manufacture”. Is there a manufacture and, if so, is it new? The Hearing Officer said it was clear that the present invention was a “manufacture” as defined in section 2. The question of whether it was new had “already been covered under the above discussion of Obviousness and need not be considered again”.
None of the grounds were made out. The opposition was dismissed and costs awarded to the applicant. The application will now proceed to an issued patent.
Photo courtesy of author ambert under Creative Commons licence.