Cordance Wins JMOL in Amazon One-Click Patent Suit

Looks like local software company, Cordance may get a chance to have a jury determine the amount of damages Amazon owes for infringing certain patents covering aspects of the popular One-Click ordering system. In a case pending in USDC, District of Delaware, Cordance Corporation v. Amazon.com, Cause No. 06-491-MPT, a jury found late last year (among other things) that certain patents asserted by Cordance were infringed but invalid. The patents-in-suit are U.S. Patent Nos. 6,757,710; 6,269,369; 6,044,205; 5,862,325 and 6,088,717. Today, in a ruling issued by U.S. Magistrate Judge Thynge, JMOL was granted that (1) claims 7–9 of the ‘710 patent are not invalid for lack of written description; (2) claims 1, 2, 3, 5, and 7–9 of the ‘710 patent are not invalid as anticipated by Amazon's 1995-96 shopping cart system; and (3) claims 1, 3, 5, 7 and 8 of the ‘710 patent are not invalid under 35 U.S.C. 102(f).

A bench trial will commence on certain Amazon defenses, and if those do not succeed, Damages will likely need to be calculated, probably by another jury (separate from the one that had held these patent claims invalid).

In one interesting point of note, Judge Thynge passed on Cordance's invitation to eliminate the written description requirement of 35 U.S.C. Section 112, paragraph 1 in advance of the CAFC deciding Ariad.

"The court recognizes that the Federal Circuit has heard oral argument in Ariad Pharms., Inc. v. Eli Lilly & Co. and that the Federal Circuit’s forthcoming decision in that case may alter the scope and purpose of the written description requirement. However, this court, like the Informatica Corp. court, is constrained to follow existing standards under Federal Circuit law, and Federal Circuit precedent 'clearly recognizes a separate written description requirement.'" (internal footnotes and citations omitted)

Big Baboon Battles Bilski, Court Cites Morse Code

Debate over the patentability of process patents, particularly those having claims drawn to software inventions, continues to rage in the wake of the U.S. Supreme Court's decision to accept certiorari in Bilski.  The state of the law is in flux.  Portfolios of patents hang in the balance while patent lawyers across the U.S. extend time on pending applications, waiting to see what the Supreme Court will do in Bilski.  In Seattle, one can almost hear the wheels of software innovation screeching to a halt, as companies and investors decide whether it makes sense to invest in new software ideas, not knowing whether their investments will even be eligible for patent protection.

A particularly thorny issue raised by Bilski is the patentability of a process implemented by a machine, the so-called "machine prong" of Bilski's two-part test for patentability under 35 U.S.C. 101.  In application, "[a] claimed process involving a fundamental principle that uses a particular machine or apparatus would not pre-empt uses of the principle that do not also use the specified machine or apparatus in the manner claimed."  This begs the question, what software algorithm does not "pre-empt uses . . . that do not also use the specified machine or apparatus in the manner claimed?"  Put another way, what is it about the computer, computer network, system, or other "programed device," that makes software eligible for patent protection?

District Judge Stephen Wilson is wrestling with this issue in a case styled Big Baboon Inc. v. Dell, cv-09-1198 (USDC CD Cal.), where a small software company is pitted against Dell, HP, UPS, Fed Ex, Amazon, and others, alleging infringement of U.S. Patent Nos. 6,115,690 and 6,343,275, patents for "Integrated Business-to-Business Web Commerce and Business Automation."  At first glance, Claim 1 of the '690 patent seems to claim everything e-commerce: "[a]n automated end-to-end business process for product sales that uses a relational database management system, the process comprising the steps of  [inputting a payment record and generating an invoice] and qualifying user inputs using experiential constraints, based on the then-current state of the database as a whole."  Not so, says Big Baboon, which offers an interpretation of the claims that "incorporate[s] specially programmed computers using an integrated database structure ("schema") specifically programmed into a database management system."  This "integrated database management system," according to Big Baboon, is the "particular machine" that fully satisfies both section 101 and Bilski's machine prong.

Judge Wilson appears to be favoring Big Baboon's argument for now.  Recently, he asked for supplemental briefing, citing O-Reilly v. Morse, 56 U.S. 62 (1853), where the U.S. Supreme Court allowed Morse to patent his code as used via the telegraph.  In his original 1837 petition to the Commissioner of Patents, Morse described his fifth claim as "[a] dictionary or vocabulary of words, numbered and adapted to this system of telegraph." 56 U.S. at 82.  In an 1848 reissue, Morse's fifth claim changed to recite "the systems of signs, consisting of dots and spaced, and of dots, spaces, and horizontal lines, for numerals, letters, words, or sentences."  Id. at 86.  When the subject matter of Morse's fifth claim was challenged as not patent eligible, he responded by saying that it was "for telegraphic purposes; being an improved instrumentality in the art of telegraphing by electricity or galvanism."  Id.

Calling it a "remarkable body of dicta,"  Judge Wilson appears unpersuaded that "one may not patent a process that merely operates a piece of machinery."  See e.g. Boyden Power-Brake Co. v. Westinghouse, 170 U.S. 537, 557 (1898) ("where the process is simply the functionally or operative effect of a machine, the . . . cases are conclusive against its patentability.").

It will be interesting to see what develops. Suffice it to say that the Defendants take issue with Judge Wilson's description of this body of case law as "dicta," but it remains to be seen how this dispute over patent eligible software will be resolved.

Who Is Big Baboon Inc.?

A number of my readers have contacted me looking for information about Big Baboon, Inc. Here is what I know. According to its complaint filed against Dell, Amazon, HP, Fed Ex, Honda, and others, it owns 6,115,690 and 6,343,275, patents for "Integrated Business-to-Business Web Commerce and Business Automation." The drawing depicted here is one of over 300 contained in each asserted Big Baboon patent. According to Delaware corporate records, Big Baboon has been organized there since October, 22, 1999. Apparently, the technology claimed in Big Baboon's patents was invented by Charles Wong, "an individual [and] the owner of all stock in BBC." Mr. Wong allegedly created "highly automated methods of performing business functions to provide for the operation of e-commerce with reduced requirement for human interaction and increased access to real-time synchronized information via the Web." The web site www.manta.com states that "Big Baboon, Inc is a private company categorized under Computer software development and located in Sunnyvale, CA. Current estimates show this company has an annual revenue of $950,000 and employs a staff of approximately 10." Manta also lists the following contact information: 783 Palomar Ave, Sunnyvale, CA 94085, Phone:(408) 328-0230.

Claim 1 of the '690 patent is drawn to "[a]n automated end-to-end business process for product sales that uses a relational database management system, the process comprising the steps of:

a first user inputting a customer payment record to the database ...;

automatically generating a customer invoice;

a second user inputting customer payment record to the database ...;

automatically determining a status of the customer payment ...; and

during each of the foregoing inputting steps, qualifying user inputs using experiential constraints, based on the then-current state of the database as a whole."

I wonder what E.F. Codd would have to say about these claims?





Big%20Baboon%20Complaint.pdf

Cordance v. Amazon: Summary Judgment a Mixed Bag

Amazon recently lost its motion for summary judgment on several patent infringement claims brought by Cordance Corp. in the companies’ dispute over online purchasing technology. Cordance’s patents-in-suit are U.S. Patent Numbers 6,757,710; 6,044,205; 5,862,325; and 6,088,717. Amazon’s patent-in-suit is U.S. Patent Number 6,269,369.

In what was described as a classic “battle of the experts," Magistrate Judge Mary Pat Thynge of the U.S. District Court for the District of Delaware said in an opinion issued Monday that a trial was necessary to resolve Cordance infringement claims, but that a judgment of no willful infringement with respect to three Cordance patents would be issued in Amazon's favor. Overall, Judge Thynge denied Amazon’s motion for summary judgment of noninfringement with respect to two patents, and denied two attempts to invalidate a third.

In this patent infringement suit, Cordance alleges that Amazon’s “One Click” purchasing feature and other services on its retail site infringe several Cordance patents that relate to technology used to manage user information in online purchases.

The case is Cordance Corp. v. Amazon.com Inc., case number 06-cv-00491, in the U.S. District Court for the District of Delaware.

Patently Challenging Road for Amazon

By all accounts, Amazon.com is an innovator. It pioneered online commerce in the 1990s and it was an early adopter of aggressive IP strategies, including the much maligned "one-click" patent, which was unsuccessfully enforced against Barnesandnoble.com in 2000 and is still suffering through reexamination at the request of a part time actor from New Zealand.

Recently, Amazon was back on the offensive, asserting several patents against The Discovery Channel's online store. But as the company continues to expand into neighboring areas, including the delivery of online content through its popular Kindle product, it is increasingly finding itself defending patent litigation.

Last month, Amazon was sued twice, once for patent infringement and again for copyright. The patent case was filed by Actus, LLC, a company claiming ownership of U.S. Patent No. 7,328,189 ("the '189 patent") entitled "Method and Apparatus for Conducting Electronic Commerce Transactions Using Electronic Tokens." In this case, Amazon is a co-defendant with its former patent-rival, Barnesandnoble.com. Other defendants include Apple, Ebay, US Bank, and American Express. The '189 patent allegedly covers "a mall service provider server that communicates with [a] first web server and the second web server to facilitate electronic commerce" all using "electronic tokens."

The copyright case was filed pro se, by an individual, Rene Carranza. Ms. Carranza alleges that Amazon infringed copyrighted sound recordings in a song entitled "Turnbando Muros." In this case, Amazon is co-defending with Universal Music Group and Walmart.

Overall, Amazon is defending 13 IP suits filed since January. Eleven out of 13 are for patent infringement. That surpasses the number of patent suits Amazon faced last year (7 cases total), and it is also larger than the number filed in 2006 and 2007 combined (6 in 2007 and 3 in 2006).

These numbers will tend to sharpen Amazon's voice in the current debate over patent reform. But this is really nothing new. Jeff Bezos, while directing a company that accumulated hundreds of software and business method patents in the late 1990s and since 2000, supported patent reform before it was popular.

It will be interesting to see how Amazon navigates the patently challenging road ahead. It will certainly continue to accumulate IP assets as it moves into other spaces. And it will no doubt continue to aggressively protect its core business, as evidenced by the dispute with the Discovery store. Its voice in the debate over patent reform should be informative because out of all of the reformers, it has the longest history in the movement. Moreover, it understands the need for strong patent laws that encourage innovation by providing incentives. At the same time, it is increasingly a target for infringement. Congress and the public will be well-served if they listen closely to what Amazon has to say about patent reform.

Here is a list of Amazon's IP suits filed since January.

May 26, 2009
Actus, LLC v. Amazon.com, Inc. et al, (TX Eastern) Judge Ward Patent

May 20, 2009
Rene Carranza v. Lideres Entertainment Group et al (CA Central) Judge Wu Copyrights

May 15, 2009
Amazon.com Inc v. Discovery Communications Inc (WA Western) Judge Lasnik Patent

May 12, 2009
API Technologies, LLC v. Facebook, Inc. et al (TX Eastern) Judge Ward
Patent

Tune Hunter Inc v. Samsung Telecommunications America LLC et al (TX Eastern) Judge Ward
Patent

April 6, 2009
Parallel Networks, LLC v. Amazon.com, Inc. et al (TX Eastern) Judge Davis Patent

March 25, 2009
TQP Development, LLC v. Barclays PLC et al (TX Eastern) Judge Ward
Patent

March 23, 2009
Video Professor, Inc. v. Amazon.com, Inc. (D. CO) Judge Blackburn

March 20, 2009
YIP (Winnie) v. HALLMARK GIFT LAND et al (D. NJ) Judge Hochberg
Patent

March 17, 2009
Discovery Communications Inc. v. Amazon.com Inc. (D. DE) Judge Robreno
Patent

The Tobin Family Education and Health Foundation et al v Amazon.Com, Inc.
(D. FL Middle) Unassigned Judge
Patent

February 19, 2009
Big Baboon Corporation v. Dell, Inc. (D. CA Central) Judge Wilson
Patent

Shifferaw v. EMSON USA et al (TX Eastern) Judge Ward
Patent

The count

Amazon.com Strikes Back at Discovery Communications

Amazon.com asserted three patents against Discovery Communications, owner of the well known cable TV brand, the Discovery Channel, as well as other goods and services sold under the Discovery name and mark. The patents-in-suit are U.S. Nos. 6,006,225 ("Refining Search Queries by Suggestion of Correlated Terms from prior Searches"); 6,169,986 ("System and method for Refining Search Queries"); 6,266,649 ("Collaborative Recommendations Using Item-to-Item Similarity Mappings"); and 6,317,722 ("Use of Electronic Shopping Carts to Generate Personal Recommendations") All patents are asserted against Discovery through its use of the Discovery Store website.

In March, Amazon was sued by Discovery Communications in the District of Delaware under U.S. Patent No. 7,298,851 ("Electronic Book Security and Copyright Protection System"), a patent that, according to Discovery, covers Amazon's popular Kindle e-book product.

In a statement, Joseph A. LaSala, Jr., General Counsel of Discovery Communications, said: "The Kindle and Kindle 2 are important and popular content delivery systems. We believe they infringe our intellectual property rights, and that we are entitled to fair compensation. Legal action is not something Discovery takes lightly. Our tradition as an inventive company has produced considerable intellectual property assets for our shareholders, and today's infringement litigation is part of our effort to protect and defend those assets."

Amazon%20Compl%20%28WDWA%20Disc%20Comm%29.pdfAmazon%20%28Disc%20Comm%20Complt%2C%20DE%29.pdf

Seattle Patent Law Community Mourns the Passing of Lee Johnson

Friends, family, and local patent practitioners met yesterday to mourn the loss of Lee Johnson, a talented engineer and patent lawyer who spent over 35 years as named partner of one of Seattle's oldest IP boutiques, Christensen O'Connor Johnson Kindness (commonly referred to by the acronym COJK). Lee was an excellent lawyer and friend. Funeral services were held in Seattle's historic Plymouth Congregational Church and it was standing room only.

I had the pleasure of working with Lee for seven years at COJK and I try to emulate his dedication to this profession and his focus on client service. Lee was the ideal mentor for a young lawyer, bringing the same dedication and focus to this role as he did his legal practice. He introduced me to Seattle Rotary and led by exemplifying the Rotary motto of "service of above self." At age 65, he left us too soon after struggling with cancer for the last year.


Lee was born October 4, 1942 in Ames, Iowa and was raised in the small idyllic farming community of Avoca, Iowa. He graduated from Iowa State University in 1964 with a degree in chemical engineering and was accepted into the patent training program at The DuPont Company in Washington D.C. where he worked during the day and studied law in the evening at Georgetown University. In 1971, after working briefly for a law firm in Dallas, Lee accepted a job in Seattle with the small IP boutique Christensen & Sanborn. It was here that Lee joined Bruce O'Connor, a fellow Georgetown graduate. O'Connor and Johnson were later joined by Gary Kindness, and partnership of COJK was formed in 1976.

Over the years, COJK represented some of the Northwest's finest companies, including Microsoft, Boeing, Amazon, Nintendo, and Weyerhaeuser. Lee was instrumental in firm leadership, helping to grow the firm from 4 lawyers in the 1970s to over 50 attorneys in 2001-2, most with engineering or technical degrees.

Lee was an avid boater. He and partner Gary Kindness owned a 46 foot Grand Banks cruiser that they kept in the San Juan Islands. Named by combining their two last names Johnson and Kindness, "the Jokin" was an omnipresent guiding vessel for the annual COJK boat trip in the San Juans. The boat was always spotless too. Lee was aboard the Jokin, enjoying a vacation with his family in Desolation Sound just weeks ago.

Lee will be missed but not forgotten. He's left an important mark on my professional career, and lawyers will do well always if they only try and be more like Lee Johnson.

On Line Music Store Technology Targeted by Patent Licensing Company

Amazon joined Microsoft and RealNetworks in a fight for the right to maintain digital play lists. Two separate patent suits accuse about two-dozen technology giants, including Yahoo! and Motorola, of patent infringement. The plaintiff is technology licensing company Premier International Associates, LLC. Premier sued Apple Computer on these same patents last September, but that case has settled. The patents are U.S. Pat No. 6,243,725 and 6,763,345. I've attached them, along with the Amended complaint naming Amazon below.

premier%20amended%20complaint.pdf
US6243725.pdf
US6763345.pdf