A lone blogger may have succeeded in getting Amazon’s 1-Click Patent cut short. The ‘411 patent, assigned to Amazon, is known as the 1-Click Patent for its claim on ordering items on the web by “clicking” just once. Based on material submitted by New Zealander and Lord of the Rings choreographer Peter Calveley, the USPTO ordered a reexamination of Amazon’s 1-Click Patent.

Specifically, the 1-Click patent claims:

Claim 11. A method for ordering an item using a client system, the method comprising: 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 only the indicated single action being performed, sending to a server system a request to order the identified item whereby the item is ordered independently of a shopping cart model and the order is fulfilled to complete a purchase of the item.

Citing a ‘substantial new question of patentability’ to claims 11, 14-17, 21 and 22 of U.S. Pat. No. 5,960,411, the Examiner now contends that U.S. Pat. No. 5,729,594, along with other non-patent references, suggest the use of a single action ordering system.

The ‘594 patent and all of the cited publications relate to one form or another of a Digicash system, also called E-cash, Cybercash, Cybercoin, etc. In such Digicash systems, a user has access to an amount of “electronic cash” available to purchase items electronically via phone lines or via the Internet. The purchaser may click on an item to buy using a single action. An amount of electronic cash is then subtracted from the user’s account and the item may be sent to the user, for example via an electronic connection in the case where the item is software or some other downloadable product. Therefore, the ‘594 patent and exhibits suggest the use of a single action ordering system. The Examiner notes that none of these Digicash or electronic cash systems contemplates the use of a shopping cart model. But, the Examiner points out tat the shopping cart model is not a positively recited element in claim 11.

In an Ex Partereexamination, either a challenger or patent holder may seek reexamination of a patent based on patents or printed publications. If the PTO orders reexamination, the patent holder is given the opportunity to file a statement concerning the new question of patentability, including amendments or new claims they want to propose (provided, however, that the claims may not be broadened).

If the patent holder files such a statement, the statement must be served on the person requesting reexamination, and the requester is given two months to file a reply to the patent owner’s statement. From that point on, the claims are examined without participation by the requester. Following the Ex Partereexamination, the PTO issues a certificate canceling any claim determined to be unpatentable, confirming any claim determined to be patentable and incorporating in the patent any new claim or amended claim determined to be patentable.

Whether to pursue patent reexamination, either Inter Partes or Ex Parte, involves the balancing of significant considerations. The major advantage to a patent challenger of the Inter Partes procedure over the Ex Parte procedure is that in the Inter Partes procedure the challenger has the right to participate throughout the process. Also, the challenger can submit arguments supporting the Examiner when the Examiner takes a position unfavorable to the patentee, and the challenger can submit declarations by technical experts concerning the patent and the prior art.

The challenger however, must consider certain disadvantages to the reexamination process. One important consideration is that the process gives the patentee the opportunity to amend its claims and add new claims. While the patentee may not broaden the scope of its claims, the patentee may amend the claims to (1) make them patentable in view of the prior art, including the new prior art cited by the challenger, and (2) make them more clearly cover the challenger’s allegedly infringing product. Another major disadvantage to the challenger, in the Inter Partes process, is that the challenger is estopped from challenging the patent in court, except in very limited circumstances. Thus, the Inter Partes challenger must be prepared to do its best job before the PTO because it is unlikely to get another opportunity if it fails to achieve the results it desires there.

Whatever the result of the 1-Click patent, this case is a good example of how it only takes one determined individual to bring down the mightiest patent.

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