Innocentive Solver Award

Seems I have just received an award for a $USD10,000 challenge to come up with new ideas for ways to charge lights.
Not sure what else I am allowed to say about it at the moment but it was a lot of fun!

Amazon amends

On 29 November, Amazon have amended the claims as agreed to in their interview. In doing so (in particular, in their amendment to claim 11), they give up their absolute monopoly on the idea of one-click shopping.

The claim used to read:

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.

Now it is restricted to items "purchasable through a shopping cart model".

As I mentioned in my previous post, I think the "shopping cart model" is well past its use-by date so this kind of amendment is precisely what I was after.

I only initiated the reexamination request because I believed that I had found evidence that directly anticipated claim 11 (the broadest claim) rather than relying on obviousness. I made obviousness arguments too, but these were supplementary.

Some of the narrower claims will likely remain as I am simply not expecting the USPTO to mount a serious attack on obviousness grounds, despite the evidence that has been provided.

So anyone hoping to simply clone the Amazon system might still have a few problems. But I think that direct copying would be an extremely boring thing to do, and in fact I am almost glad that some of the narrower claims are liable to remain.

I would much rather see a whole bunch of exciting and interesting retro DigiCash-style companies pop up (I am quite a fan of retro one-click shopping technologies by now) or surprising new ways to do one-click shopping.

So hopefully this will make the world a more interesting rather than a more boring place. That's the plan :-)

I should point out that none of this is legal or professional advice, I'm not a lawyer, in fact I am just a random guy off the street who found some prior art and passed a patent attorney exam in my misspent youth (which doesn't make me fully qualified). In particular, don't go off building a one-click shopping system without talking to a patent lawyer first who actually knows what he is on about.

Proposed amendments defeat Amazon's "One-click" monopoly

In May 2006, I requested a reexamination of the Amazon.com "one-click patent" based on some prior art I found.

The broadest claim (claim 11) of the patent seems to cover the very concept of shopping with one click.

Now Amazon have agreed to give up their monopoly on this idea.

In an ex parte reexamination interview conducted on November 15, some draft amendments were proposed to claims 1 and 11 ( the broadest claims of the patent) .

These amendments mean that Amazon's claims now only apply to “items purchasable through a shopping cart model”.

These amendments are exactly what I was aiming for. As I stated on May 16, 2006:

“I had only requested reexamination of claim 11 and some dependent claims, which in my opinion are the broadest and most restrictive claims in the patent. If Amazon can be made to narrow them, it could allow others to implement innovative and interesting ways of shopping with "one-click"

I believe that the shopping cart model is an old technology that needs to be put to bed, and that if these amendments are made, they will:

(a) free people to use pre-Amazon methods of "one Click shopping" such as DigiCash-type systems

(b) allow people to implement new and exciting ways of shopping with one click, perhaps using new technologies that didn't exist in 1997...

If these amendments are made, then as far as I am concerned, it is “mission accomplished”.

Note: To read the original documents, go to USPTO PAIR access site, choose the "Control Number" radio button, enter 90/007,946 and press the "Submit" button.

AMAZON ONE-CLICK PATENT REJECTED BY THE US PATENT OFFICE AS A RESULT OF MY REQUEST

In a recent office action, the USPTO has rejected the claims of the Amazon.com one-click patent following the re-examination request that I filed on 16 February 2006.

My review resulted in the broadest claims of the patent being ruled invalid.

In its Office Action released 9 October 2007, the Patent Office found that the prior art I found and submitted completely anticipated the broadest claims of the patent, U.S. Patent No. 5,960,411.

I had only requested the USPTO look at claims 11, 14, 15, 16, 17, 21 and 22 but the Office Action rejects claims 11-26 and claims 1-5 as well!

Amazon has the opportunity to respond to the Patent Office's rejection, but 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.

To read the original document, go to USPTO PAIR access site, choose the "Control Number" radio button, enter 90/007,946 and press the "Submit" button.

Huge thanks to everyone who helped out with the re-examination fee. You know who you are.

BTW we won the movie-making competition below too :-)

Update: Some people are sending me money -however I don't have any expenses right now so thank you very much but I can't accept it. If you want me to do some work for you though...

FXA World YouTube competition

Stumbled across a competition the other day to make a YouTube video for a company called FXAWorld-they do peer to peer foreign exchange. 6 minutes later I had written a script! We shot it over 2 mornings before everyone went to work and one evening.

KSR v Teleflex etc

Looks like everyone is on about the recent Supreme Court Decision of KSR v Teleflex. so I though I should put in my 2 cents worth too. The decision referred to Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U. S. 57 (1969) and Sakraida v. AG Pro, Inc., 425 U. S. 273
(1976), stating:

If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Sakraida and Anderson’s-Black Rock are illustrative—a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.

When I was writing the request for reexamination of the Amazon.com “one-click” patent I thought things might go the way they did in KSR v Teleflex so I did make some arguments using these cases in the request. On the other hand, given the way things have turned out, perhaps the amount of space I used to show a “teaching, suggestion, or motivation” to combine references may have been overkill? Time will tell. Everyone is squabbling over what it all means right now so I'll just sit this out. USPTO has issued some preliminary instructions though. Disclaimer, I am not a lawyer, this isn’t legal advice ,blah,blah…

Amazon tries to defend one-click patent using Wikipedia

Today I picked up another 13 kg of documents filed by Amazon.com on 28 March in the request for reexamination of their one-click patent that I filed. Added to the 7 kg they filed recently, and my original 5.9 kg filing, this brings the total weight of documents so far to about 26kg (58.5 lb).

According to Wikipedia, this is about the same weight as a Malkara missile warhead, a Denel NTW-20 anti-materiel rifle, or a Swedish military bicycle .

It is also similar in weight to a heavy female Eurasier

(Photo by Flickr user PartnerHund) “a wonderful companion that maintains his own personality, has a dignified reserve to strangers, a strong bond to its family and that is relatively easy to train.” It is also just as heavy as the world’s biggest Channel Catfish .


Apparently channel catfish have taste buds distributed over the surface of their entire body. Or so Wikipedia tells me. Wikipedia could say something different in 5 minutes, as I am free to edit it to say anything I like, for example that taste buds have catfish distributed over the surface of their entire bodies.

Of course, things become more dangerous when we are dealing with subtle nuances of meaning that could go unchallenged by the community but would have important repercussions elsewhere. The Wikipedia page on Digital Evidence says:

As compared to the more traditional evidence, courts have noted that digital evidence tends to be more voluminous, more difficult to destroy, easily modified…

In the case of Wikipedia, that is putting it mildly!

So should a website that anyone can edit be used as evidence of anything at all? Seems a bit silly, really. Apparently last August the USPTO took Wikipedia off its list of acceptable research sources.

In this light, is amusing that Amazon.com have decided to submit 32 Wikipedia articles (all from 2007-not 1997!) in this latest filing, in addition to the ones they submitted last time! We will have to wait and see what the examiner makes of this.

So what else did Amazon file this time? Well, out of the 39 US patents they have cited, one is being used by Cordance Corporation to sue Amazon for patent infringement.

Out of the 98 other non-patent docs, a couple are web pages made by Alexis Grandemange: "Business method" and "1 click analysis".

The background to this is that after I had filed my request, Alexis and I had a discussion about some additional prior art that could be perhaps be applied to claims other than the ones I had already attacked in my request. Then Alexis posted some pages about the things we discussed.

The funny thing here is that, clearly linked from the 2 pages above that Amazon submitted, is the page: “One Click prior art” that actually compares prior art with the claims. Strangely, Amazon’s lawyers didn’t think to submit this one as well. Funny that.

Update: The Register seems to have got the idea that Alexis is my lawyer (They have since updated this). Not only is he not my lawyer (I haven't used one), he is not a lawyer at all, and had no input into the reexamination request. I wasn't aware he existed until after I filed the request. Just thought I should make that clear.

The Empire strikes back

Amazon.com (well, the lawyers they have hired-a jolly unsporting move if you ask me!) have recently filed 167 documents weighing about 7kg in the reexamination of the “One Click Patent” that I requested . You can read some of them by going to the USPTO PAIR access site, choosing "Control Number" in the drop-down box, entering: 90/007,946 and pressing the "Submit" button.

You can't read 92 of these documents-they aren’t available online as they are NPL (non-patent literature) documents and the USPTO doesn't make them available.

Until now, I wasn’t able to see them either.

According to the Code of Federal Regulations Amazon.com are supposed to give me a copy of everything they file-but they have made a habit of not doing so (I don’t seem to be on their xmas card list either-but maybe last year it got lost in the mail :-) ).

I had to call the USPTO and persuade them to remind Amazon of the rules so finally Amazon mailed me a copy of the documents. Yay! A parcel from Amazon without the corresponding hole in your credit card!

So what are some of the highlights of this riveting collection?

Bizarrely, some of them are copies of documents I already filed with my reexamination request e.g. pages relating to archive.org, DigiCash etc. It seems entirely redundant to give them to the USPTO examiner twice but it does bulk up their filing I suppose.

Others include a definition of “client-server” taken from Wikipedia in 2006, and a definition of “shopping cart” taken from Wikipedia in 2004.

One would hope that these would not be taken as representative of how things were thought of when the patent was filed 10 years ago.

Even leaving aside general questions about the reliability of information on Wikipedia, and the fact that the references don’t date from the time period they would presumably be applied to, one hopes that the examiner will take time to think about the deeper implications of giving any weight at all to evidence on a website ANYONE CAN EDIT...

Hopefully my references will be taken to be more authoritative as to how things were defined in the 1990s: Encyclopedia of Computer Science, Third Edition, Ralston, Anthony, Edwin D. Reilly, eds. London, Chapman & Hall, 1993. Dictionary of Computer Terms New York, Barron’s Educational Series, Inc., 1995 Dictionary of Computing, Fourth Edition , New York, Oxford University Press, Inc. , New York, 1996 etc.

Amazon have also filed a number of documents attesting to the commercial effectiveness and advantages of “One click shopping”. Perhaps they are intending to make some of the old arguments along the lines of: “Nobody thought it would be successful –but it was-so it must be nonobvious!” and “Look how commercially successful it is-it must be nonobvious!” etc.

I thought they might try some of these tactics, so in my request for reexamination, I have already pointed out that:

(1) There were a lot of other reasons Amazon had commercial success-its customization features (for which Pinpoint Incorporated unsuccessfully sued Amazon for patent infringement), the number of books in stock, the general growth of the Internet and e-commerce etc.

(2) Any alleged benefits of the Amazon “One-click” system that were the same as the known benefits achieved by the DigiCash and other systems are evidence of obviousness of the “One-click” system.

"Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967),); Ex parte Blanc, 13 USPQ2d 1383 (Bd. Pat. App. & Inter. 1989).

Any long-felt need must not have been satisfied by another before the invention by applicant. Newell Companies v. Kenney Mfg. Co., 864 F.2d 757, 768, 9 USPQ2d 1417, 1426 (Fed. Cir. 1988). Any need for increasing impulse purchases was clearly achieved by the DigiCash system.

See also Orthopedic Equipment Co., Inc. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 217 USPQ 1281 (Fed. Cir. 1983) (Although the claimed invention achieved the desirable result of reducing inventories, there was no evidence of any prior unsuccessful attempts to do so.).

The DigiCash system (which had a "one-click purchasing" feature) not only achieved commercial success, but also was noted for its convenience and the fact that it enabled “impulse” purchases by consumers . Furthermore, it prompted a similar system to appear soon afterwards, the “Cybercoin” system promoted by Cybercash.

Below are quotes from some of the references in my reexam request that refer to the convenience of the prior art "one-click shopping" systems (there is a lot more along these lines in the request itself, but I don't want to put you to sleep..).

Thanks again to everyone who helped with the reexam fee! Let me know if you want more info on the docs Amazon have filed.

Note this isn’t legal or commercial advice, IANAL etc…

Gary Welz "New Deals" Internet World pp. 36-41 June 1995

”How can a Net surfer visit an electronic newsstand and make impulse purchases if the products sell for only $1 or $2? The answer is electronic cash, and several companies are developing it (see “Cashing In”, Feb IW).”

Peter H. Lewis "Attention Internet Shoppers: E-Cash is Here" The New York

Times p. D4 October 19, 1995 “Once established and widely adopted, DigiCash and other electronic cash systems would eliminate much of the cross-over between conventional banks and cyber banks, and allow spontaneous purchases that are cumbersome under other systems.”

Hapgood, Fred. “Sex sells” Inc [online]. Boston: 1996.Vol. 18, Iss. 17; pg. 45, 4 pgs “Converting to this kind of payment scheme may prompt extensive design changes for existing businesses. Whereas most current erotica sites attract subscribers through services like mass downloading, a site built around micropayment technology, which could allow not only per-image but even per-second pricing, would encourage impulse purchasing and could open up the market to people who don't want to use credit systems on the Net or who aren't interested in buying subscriptions.”

Gibbs, Mark “Piling up the virtual money”. Network World [online]. Framingham: Sep 11, 1995.Vol. 12, Iss. 37; pg. SS17, 3 pgs “Ease of use in on-line systems is crucial because a clumsy system is at odds with the expectations of customers conditioned to fast, frictionless sales. As any direct marketer will tell you, an obstacle, however small, to placing an order will cost you business.”

Relating to CyberCoin rather than DigiCash:

Rowley, Jennifer “Retailing and shopping on the Internet”. International Journal of Retail & Distribution Management [online]. Bradford: 1996.Vol. 24, Iss. 3; pg. 26 What attracts shoppers? Ellsworth says, "There are as many reasons as there are people, but most Net shoppers cite the speed of transaction, convenience, selection and price. Also attractive to on-line users is the immediate delivery of information and digital products that can be had from home, work, or on the road.

Anonymous. “Pay with a CyberCoin” Link – up [online]. Medford: Nov/Dec

1996.Vol. 13, Iss. 6; pg. 1, 2 pgs "CyberCoin fulfills a growing need for consumers to purchase lower-priced and impulse items on the Internet-especially digital goods and services that can be instantaneously downloaded to your computer, such as software, articles, research, games, and music," said Bill Melton, CEO of CyberCash. "Internet merchants must offer consumers the ability to make spontaneous, small denomination payments on the Internet to take electronic commerce to the next level……When a consumer wants to purchase an item on the Web, he or she simply clicks on the Coin icon next to the goods. The entire process takes only seconds.”

http://web.archive.org/web/20000603125102/cybercash.com/cybercash/compa ny/news/releases/1996/96sept30.html>. Online Shopping Made Easy With CyberCoin CyberCoin provides the consumer with the ease and simplicity that has been missing from the Internet shopping experience. When an individual on the Web finds an item that he or she would like to purchase, the consumer simply clicks on the Coin icon next to the goods. It's that simple. The entire process takes only seconds..”

How the European Patent Office tells humans from robots

Best CAPTCHA all day.

Amazon Appoints Attorneys (Accidentally Alliterating)

Or is it assonance? Anyway, Amazon has appointed Silicon Valley attorneys Fenwick & West to represent it in the "One-Click Patent" reexamination. I'm sure they'll have oodles of fun.

Correcting some misconceptions in “BLOGGING, D-I-Y REEXAMINATION, AND THE ONE-CLICK PATENT”

The “271 patent blog” aims at “Providing insight and analysis on patent law, patent portfolio management and patent litigation in the fields of electronics, software and computers.” Almost one year ago it commented on my reexam request.

What is kind of amusing is that in his post Chicago patent attorney Peter Zura has provided an image of ENTIRELY THE WRONG PATENT (I am including his image below as things tend to disappear on the web). This does set the tone for his following comment.

He goes on to state:

"It would be interesting to point out to him the prior art that Tim O'Reilly obtained during the BountyQuest days (and subsequently paid a $10k bounty on)."

It would be interesting to point out to Zura that I was already aware of the prior art that comes up in a superficial Google search. I didn't include it because:

(1) The prior art I found myself is better IMHO. He didn’t comment on the contents of my reexam request. Perhaps he requires an hourly rate to actually read the things he is blogging about.

(2) There is absolutely no style in simply regurgitating stuff others have found before. I know some people find this hard to comprehend.

An interesting approach to prior art

I've found quite a few examples of "one-click ordering" in computer games, and had a few emails from others about them too. An interesting question in this context is whether you are ordering an "item" when you buy something in the game. Amazon's specification says:

"The products can include items (e.g., music) that are delivered electronically to the purchaser over the Internet and items (e.g., books) that are delivered through conventional distribution channels (e.g., a common carrier)."

Leaving this question aside for the moment, I have had a couple of interesting emails from Jan Kechel. He brings up the subject of early browser games and points out that they very likely used identifiers at the client system-perhaps even a persistent identifier stored in a cookie.

If anyone has any hard evidence of a prior art game that combines one-click ordering with a client-side identifier (especially one stored in a cookie) I would like to hear about it!

Disclaimer: I am not a lawyer, this isn't legal or professional advice, etc, snore snore zzzz.....

United States Patent and Trademark Office Orders "One-Click Patent" Reexamination

On Friday the USPTO ordered a reexamination of all the clams of the controversial Amazon.com "One-Click" patent based on the request I filed using some prior art I found.

To view information on this request, please go to the USPTO PAIR access site, choose "Control Number" in the drop-down box, enter: 90/007,946 and press the "Submit" button.

I had only requested reexamination of claim 11 and some dependent claims, which in my opinion are the broadest and most restrictive claims in the patent. If Amazon can be made to narrow them, it could allow others to implement innovative and interesting ways of shopping with "one-click" (This isn't legal or professional advice- see the disclaimer below).

This will be the first time a decision will be made on the validity of this patent since it issued.

This is also the first time that I am aware of that this particular prior art has been raised.

A very big thank you to everyone who helped out with the reexamination fee. I really appreciate it. If it wasn't for your generosity we wouldn't have got this far.

The only ominous note is that the examiner stated:

"Klingman and all of the cited publications... relate to one form or another of a DigiCash system, also called E-cash, Cybercash, Cybercoin etc "

One wonders if he has truly grasped the differences between the different systems.

THE REEXAMINATION REQUEST IN A NUTSHELL
(some of this repeated from an earlier post).

The independent claim of the patent that I am challenging is:

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.

This seems to give Amazon a a monopoly on the very idea of "shopping with one click" (the other claims are narrower, claiming the use of cookies etc).

I used two different groups of prior art:

1. United States Patent Number: 5,729,594

ON-LINE SECURED FINANCIAL TRANSACTION SYSTEM THROUGH ELECTRONIC MEDIA

Inventor: Edwin E. Klingman























Fig. 9 of Klingman. Compare this with Fig. 1A of the Amazon patent (below).

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In the Klingman patent, clicking on a web page “BUY” button automatically downloads an item to the client computer, and automatically charges a user via an 0900 telephone billing system.

2. A number of references (including pages from the Wayback Machine) referring to DigiCash.

In the DigiCash method, clicking on a web page “payment link” causes the server to send a payment request to the client.

The client can optionally be configured to respond automatically to the payment request.

If the client has been configured to respond automatically, the requested item identified by the payment link (such as a downloaded file or access to a web page) is automatically delivered to the client and payment is made by the client.

Although there were a lot of interesting things about the DigiCash system, for our purposes a good summary comes from Steven Levy's "The End of Money?" Newsweek pp. 62-65 October 30 1995 :

“You’re cruising the net, hopping from link to link with your favorite browser. In a small window in the corner of your screen sits a ledger. ‘$100.00” it reads. As you land on a favorite web site, something strikes your fancy-an annotated bibliography of every article ever written about Sandra Bullock! Only five bucks. You click on a button, and the file is downloaded to your computer. That tiny ledger on your screen now reads “$95.00.””

QUOTES I LIKE

“An Open Letter From Jeff Bezos On The Subject Of Patents”

(which seems to have been removed from the Amazon website and now only lives on the wayback machine):

“I’ve been saying for 4 years now that, online, the balance of power shifts away from the merchant and toward the customer. This is a good thing.”

Another good quote that I do not include from a legal viewpoint but only as a way to put e-commerce patents in perspective comes from Atlantic Works v. Brady, 107 U.S. 192, 200 (1883):

“It was never the object of those [patent] laws to grant a monopoly for every trifling device, every shadow of a shade of an idea, which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufacturing . . .
Such an indiscriminate creation of exclusive privileges tends rather to obstruct than to stimulate invention. It creates a class of speculative schemers who make it their business to watch the advancing wave of improvements, and gather its foam in the form of patented monopolies, which enable them to lay a heavy tax upon the industry of the country, without contributing anything to the read advancement of the arts. It embarrasses the honest pursuit of business with fears and apprehensions of concealed lies and unknown liabilities to lawsuits and vexatious accountings for profits made in good faith.”

NOTES AND DISCLAIMERS

I make no warranty as to this request for reexamination, its validity or its consequences. It was drafted by me, and I am not a professional.

I am not a lawyer. This webpage and the materials available on it, including the request for re-examination, are not intended to and do not provide individual advice, including, without limitation, investment, financial, legal, accounting, tax or other professional advice or services.

Such advice should be obtained from a properly accredited professional in your jurisdiction. The material discussed is meant to provide general information, and should not be acted on without obtaining professional advice appropriately tailored to your individual needs.

I make no assertions of any kind about Amazon.com, Better World Books or any other company, individual or other entity, or the validity or any other aspect of any of Amazon.com’s intellectual property.

The book orders mentioned in previous posts were initially made by third parties on my behalf and on my instructions-however I did communicate directly with the vendor.

If Amazon.com, their employees, legal or other representatives or agents wish to contact me, then as consideration for accepting any communications, I reserve the right to publish their communications. Any such communications or disclosures will be treated as NON-CONFIDENTIAL.

Correspondence from the USPTO

I received some correspondence from the USPTO regarding my request for reexamination of the Amazon One-Click patent.

It states that the filing date of the request is 16 February 2006 (the day the filing fee was received) and that a decision on the request (whether to order a reexamination) will be mailed within 3 months of the filing date of the request.

The reexamination request was assigned to Art Unit 3993. A Control Number 90/007,946 has been assigned.

If anyone wants to provide additional prior art they should do so soon as the Manual of Patent Examining Procedure states "while citations of prior art may be filed at any time during the period of enforceability of the patent, citations submitted after the date of any order to reexamine will not be entered into the patent file until the pending reexamination proceeding has been *>concluded<"!

See my earlier entry for disclaimers etc.

Today I sent the rest of the fee to the USPTO

Many thanks to everyone who helped out with the funding and promoting the blog.

Please don't send any more money

(unless you want to contribute to my personal consumption ;-) ).

But please consider submitting any prior art you have found.

If everything goes to plan, this is what should happen next:

(1) The USPTO will receive the fee and assign a filing date to the request.

(2) Within 3 months of the filing date (but hopefully sooner) the USPTO will
decide whether to reexamine the patent.

If they do decide to reexamine, Amazon's lawyers will have had the luxury of an almost 6 month head start to prepare their counter-arguments, but that goes with the territory of having to assemble the fee from scratch.

I will keep this blog updated with developments.

Thank you again to everyone who helped get this far.

Couple of links

Nick Szabo has read and commented on the reexamination request.

Alexis Grandemange has created a page about gathering additional prior art to attack other claims and other Amazon patents in the "One Click" family.

So far, I have found Amazon "One-Click" patent descendents in Austria, Canada, Ireland, India, Japan, Australia, and New Zealand (as well as the well-known European and US ones). If anyone knows of any more, please email me!

Off-topic but interesting: Amazon's attempts to trademark "0-click" (!) and bust unions.

Perhaps I should point out here that I take no responsibility of any kind for any offsite links.

Evolution of Software Claims

Here are some software/computer/information-related patent claims I have stumbled across, with some thoughts on how they have changed over the years, and a sample claim of my own (not filed) that I think anticipates future trends.

Gregory A. Stobbs has, on a number of occasions (for example in his inventively-titled book “Software Patents”), argued that the first software claim was in a patent issued to Samuel Morse in 1840:

“I claim as my invention, the system of signs, consisting of dots, spaces, and horizontal lines, for numerals, letters, words or sentences, substantially as herein set forth and illustrated, for telegraphic purposes.”

However, most 19th century patents relating to information processing tended to have more hardware-oriented claims: Perhaps a typical example would be from one of the Hollerith punched-card patents, no. 395,781, issued in 1889:

6. As an improvement in the art of compiling statistics, the hereinbefore-described method for facilitating the classification of individual records and simplifying the process of computation, which consists in first assigning to each item entering into the proposed series of computations one or more designated points or spaces; secondly, forming a complete record of each individual or subject upon a single card by applying a circuit—controlling index point or points to each space appropriated to or indicative of each separate item in the given series which pertains to the individual or subject, and, finally, feeding said cards successively to an apparatus operated by the index-points on each card to designate the particular division to which it belongs, and depositing each card in a place or receptacle corresponding to the division thus indicated, substantially as described.

US patent 350,748 for a “Perforated Music Sheet” from 1886, allowed multiple instances of the same note to be played at once, claiming:

A perforated music-sheet for a mechanical musical instrument, having its upper or treble notes or perforations duplicated or triplicated, & co., and arranged above or below the regular scale of the music-sheet, for the purpose specified.

This is an interesting example of a patent for machine instructions encoded in a “read-only” memory medium.

Later we began to see claims that had a greater level of abstraction from the particular hardware. As an example, we can look at one of the claims of US Patent 1,244,447 to Patrick Delaney (1917):

5. The method of protecting the secrecy of a telegraphic message which consists in producing a series of signals similar in nature to but constituting reversals of the signals comprising said message.

Or the famous 1919 US Patent 1,310,719 to Vernam:

1. The method of enciphering signals where the characters are represented by a number of periods of different current values which consists in altering the normal code impulses of a character to be transmitted in accordance with a rule represented by some other character in a like code.

Another 1919 US Patent, no, 1,312,572 to R.D. Parker, “Secret Signalling System” claims:

1. In a signal transmitting system, a main line, sending apparatus at one end thereof, receiving apparatus at the other end there of, a ciphering device at the sending end for rendering the signals unintelligible, a deciphering device at the receiving end for reconverting the transmitted impulses into intelligible signals and means for sending impulses over the line for synchronizing the operation of said ciphering and deciphering devices, simultaneously with the transmission of the signal impulses.

Yet another 1919 US Patent, no, 1,320,908 to the same inventor, “Ciphering and Deciphering Mechanism” claims:

1.An apparatus for enciphering and deciphering messages comprising a group of elements adapted to represent successively the characters of the message, a second

group of elements adapted to represent successively a series of ciphering characters and means controlled by the joint effect of said groups of elements for indicating the characters of the enciphered or deciphered message .

and

4. A mechanism for enciphering or deciphering messages comprising means for representing the message characters by a series of sets of electrical conditions respectively representing the message characters in accordance with a predetermined code, means for concurrently representing a series of ciphering characters by a series of sets of electrical conditions and mechanism under the combined effect of successive sets of electrical conditions in said two series respectively for locally recording the resulting enciphered or deciphered message.

The well-known “ENIAC” patent to Eckhart and Mauchly (3,120,606) filed in 1947, claimed things in terms of “electric pulses” and “data pulses”:

1.Means for producing electric pulses in sequence, electronic means for alternately transmitting certain ones of all said pulses as recurrent differentiated groups, electronic means for selecting particular pulses from one of said differentiated groups to represent quantitative values, electronic means for selecting particular pulses from another of said differentiated groups to represent certain qualitative values, reading means responsive to pulses representing both the qualitative and quantitative values for reading data to he processed upon command of at least one of said qualitative pulses, storing the data thus read, and making the data available in the form of data pulses in response to at least one other of said qualitative pulses, and electronic means for receiving said data pulses and responsive thereto for performing electrical switching operations of a nature determined by selected ones of said qualitative values and of a degree determined by selected ones of said quantitative values.

Another candidate for the world’s “first software patent” was noted by Stobbs, patent number 2,552,629 from 1951:

1. In an information system employing equal length permutation code groups in which element values are characterized by one or the other of two possible signaling conditions, the improvement which comprises means for encoding information into single error-correcting code groups in which each of said single error- correcting code groups has element values differing from the element values of each of the other of said single error-correcting code groups in three or more element positions in a respective element position comparison of each of said single error-correcting code groups, and means for changing the value in any one of the element positions of each of said single error-correcting code groups so that the said element value difference created by said encoding means is maintained if no more than a single element error occurs in each of said single error-correcting code groups.

M.A. Goetz’s patent number 3,533,086 filed in 1969 has often been put forward as the “first software patent”. Claim 10 reads:

For use in a system for automatically controlling a computer having a storage, a processor, an output unit, and control apparatus for controlling the operation of said processor, storage and output unit to perform sequences of operations on blocks of data in the form of coded digital signals in a certain format stored in said storage and representing successive instructions of various types of a computer program including process. unconditional transfer and conditional branch instructions; a method for directing the operation of said control apparatus to process said data blocks sequentially and to produce a record of a flow chart representative of said program, said method comprising:

processing said data blocks successively included scanning predetermined fields of each of said data blocks to establish a flow chart symbol therefor or to reject said data block, respectively, in accordance with different coded signal groups in said fields;

allocating successive ones of said symbols forming a sequence of the computer program as an array and

allocating each of successive ones of said sequences as an array in a section of each of successive flow chart pages;

and producing a record of said symbol arrays in successive flow chart pages in accordance with the allocation thereof.

The Eckhart and Hoover patent number 3,623,007 (1971) has the following claim:

1. In a stored program data processing machine which returns to perform certain routine tasks after performing various other classes of work and which stores the requests to perform each of the various classes of work in hoppers, the improvement comprising means for measuring the time it takes

the machine to return to performing said routine tasks and means controlled by said measuring means for selecting a variable number of work-requesting items to be taken from any of said hoppers at any one time by said machine.

Patent number 3,633,176 from 1972 claims:

1. In a method of operating a digital computer in a network

with one or more user’s remote terminals, wherein a command entered at a terminal controls execution of an indexed file containing a program, the steps of controlling,

a reading of portions of the indexing data in a first file identified by the command,

a reading of data records referenced by said portions of indexing data,

a determination of whether each data record read contains a statement requiring that the statement be replaced by data located in a different file,

a replacement of said statement with the specified data located in said different file when said data record is determined to contain such a statement, and,

a repetition of said replacement step each time a data record is read from any file and determined to contain said statement.

Filed in 1988, David Chaum’s “Returned-value blind signature systems” patent 4,949,380 does not reference any hardware at all in its claim:

1. In a method for transferring value between parties that is based on public-key-digital blind signatures, the improvement comprising the steps of:

diminishing the value of a first blind signature by a first party from an original value to a diminished value;

communicating said diminished value of said first blind signature in a first message to at least a second party by said first party;

communicating a blinded second message to said second party by said first party;

checking the validity of said signature contained in said first message received by at least said second party;

forming by said second party of a second digital signature on said blinded second message received, and the type of second signature formed responsive to the type of signature checked on said first message, and where the relationship between the type of signature checked on said first message and the type of said second signature formed being such that a higher-valued signature checked corresponds to a lower-valued second signature formed; and

communicating by said second party said formed second signature to said first party.

Fast-forwarding to 2005 we find patent publication number 20050222903 “Rendering content-targeted ads with e-mail” (this is one of a large group of pending applications that don’t appear to be assigned to anyone at the moment, but have Google’s fingerprints all over them).

1. A method for facilitating the serving of advertisements with e-mail content, the method comprising: a) accepting a request for a document including e-mail content; b) generating a request identifier; c) serving the requested document in association with the request identifier; and d) obtaining at least one ad relevant to the e-mail content.

Inspired by these, here is a claim of my own :

1. A method of constructing patent claims designed to prevent insomnia, comprising:

(a) generating a database of words from a dictionary;

(b) presenting these words to a plurality of users;

(c) requesting these users to rank the words in order of their soporific effect;

(d) Selecting a subset of the most soporific words from the database;

(e) Inserting said subset in the claims of a patent application intended to result in an issued patent

(f) Upon issuance of said patent, creating a hyperlink to said patent; and

(g) Presenting the hyperlink to a subject, thereby to sedate, tranquilize, incapacitate, subdue, or stupefy said subject when said subject accesses said hyperlink.

I just hope that this technology doesn't end up classified as a munition.

Thank you for the donations

$1373.64 so far! only $1121.16 to go!

67 *anonymous* contributors.

4 named:

Patrick Davis

http://davideasterly.com/blog

Kristian Raue http://www.jedox.com/

http://temporaer.net/nova*/index.php/2005-12-08/fight-against-amazons-trivial-sw-patent.html

I have been very impressed by everyone's efforts over the last 24 hrs. You know who you are :-) If you're checking the maths, I managed to get in $25.20 when I sent the request to the USPTO. (any previous accounting glitches may have come from not factoring in Paypal transaction fees-hope it is sorted now-an early contributor used a credit card so I had to upgrade to a Premium account and pay the fees-sorry about that!) If anyone wants to give me a lucrative job, I could probably get it together even faster :-) (Adventurous jobs preferred!) I have set up a pledge at http://www.pledgebank.com/oneclick . It needs a few people to go there and sign up before it gets publicised. This would be an easy way to help spread the word!

Phone Call From the USPTO

This morning they said that my reexamination request had arrived, and that they wanted the rest of the reexamination fee.

I had been a little worried that Amazon would be able to file their own request before I could get the fee in and forestall me, but I don't think it would help them much because my request would already be in the file wrapper.

So now it is a matter of finding the fee. Hmm....