16 June 2011

Delegate Tests Amazon's One-Click Invention

Case: Telstra Corporation Limited v Amazon.com, Inc. 2011 APO 28

Summary:  Opposition to grant – ecommerce ordering system – construction of claims – whether claims comply with s40 – whether meaning of “single action” clear – whether claims novel – whether claims lack inventive step.



The Specification

The specification related to “a computer method and system for placing an order and, more particularly, to a method and system for ordering items over the Internet”. This was recognised by the Delegate as the well-known “one-click” invention.

Claims 1 and 62 were the primary claims in contention.

Claim 1
“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 the indicated single action being performed, sending to a server system a request to order the identified item.”

Claim 62
“A method in a client system for ordering an item, the method comprising:
    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 Proceedings


Telstra contended that “single action” was unclear and so the specification did not comply with s40(2) or (3).

Telstra also contended that the invention defined in the claims lacked novelty and inventive step in the light of a number of prior art documents.

Person Skilled in the Art (PSA)


The Delegate agreed with the parties that a reasonable formulation of the PSA would be “a person or team of people working in the field of client-server systems and electronic commerce”. On the evidence, actual teams included a person with technical expertise in electronic ordering systems and commercial personnel familiar with the merchant’s products, its objectives for the ordering system and the likely preferences of its actual and potential customers.

Common General Knowledge

The Delegate cited Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited 144 CLR 253 at 292 – “The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products…”

Common general knowledge is a question of fact which must, in general be determined on the basis of evidence from persons whose background enables them to testify authoritatively as to the common general knowledge in the particular art.

The Delegate agreed with Telstra that two items of common general knowledge were:

  • The display of order or item information, or instructions or user inputs, for Internet ordering systems in the form of Web pages using HTML code, and the use of a web browser by the customer to access and interact with such displays
  • The use of the following means by a client system or device to select information or send instructions or requests to the server system, clicking a mouse button over a pre-defined area of displayed information, a sound generated by the user, use of a television remote control, depressing a key on a key pad, using a pointing device, and selection of a displayed indication.

Clarity

The Delegate said that “Action” still has a quality of vagueness which is underlined by the use of the word “something” in the Macquarie Dictionary definition. The Delegate thought it was reasonable to assume that the skilled addressee of the specification would be compelled to turn to the description for guidance as to the proper scope of this term.

The Delegate noted the following passage in the description: “Although a single action may be preceded by multiple physical movements of the purchaser …, the single action generally refers to a single event received by a client system that indicates to place the order.” In the Delegate’s view this gave a clear enough understanding to the skilled addressee of what would, or would not, infringe the claims.

This did not mean to say that “puzzles” would not occur. But such puzzles should be given little weight if they “would not, as a practical matter, cause difficulty for the skilled addressee or manufacturer wishing to satisfy himself that what he proposes to do will not infringe the patent” (Glaverbel SA v British Coal Corp [1994] RPC 443 at 495).

Novelty

The test for determining whether the invention lacks novelty is the “reverse infringement test” as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228. In that case it was held that “generally one can properly ask whether the alleged anticipation would, if the patent were valid, constitute an infringement.”

Infringement occurs when “each and every one of the essential features” of the claim has been disclosed by the alleged anticipation (Rodi and Wienenberger AG v Henry Showell Ltd [1969] RPC 367 at 391)
In one of the prior art citations, the Delegate found that a “single ordering action” was all that was required to effect an order where prior arrangements had been made for payment. He said that this anticipated claim 1 and a number of other claims.

Inventive Step

The application was filed before 1 April 2002 so lack of inventive step could only be established on the basis of the common general knowledge, or the common general knowledge considered together with prior art information made publicly available in a single document or through doing a single act, or made publicly available in two or more related documents or through doing two or more related acts.

The parties agreed that an appropriate methodology was the so-called “problem-solution” approach.

However, the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2007] HCA warned that such an approach may be particularly unfair to an inventor of a combination, or to an inventor of a simple solution, especially as a small amount of ingenuity can sustain an Australian patent. The High Court also warned against the impermissible use of hindsight.

As far as claim 1 was concerned, the Delegate said that there appeared to be nothing that was not merely common general knowledge except for the feature relating to the “single action”. He said that it seemed “very plain” and a “matter of simple logic that one way to do this is to reduce the number of actions, with the ideal scenario being just one action.” He said that there “would seem to be practically no doubt that the PSA would have been directly led to the present solution to the problem, particularly bearing in mind that it is the job of PSAs in this technical field to think logically”.

However, it seemed to the Delegate that the use of “cookies” (the server-provided client identifiers of claim 62, for example) may have involved an inventive step. Cookies had only been known for a short time prior to the relevant date. In particular, it seemed to the Delegate that the use to which server-generated client identifiers were put in the invention was both an elegant and inventive way of achieving one action ordering functionality. He considered that any of the claims having this integer fulfilled the requirement of s18(1)(b)(ii) of involving an inventive step.

Comments

This case was well delivered by the Delegate.

One particular lesson for practitioners is the importance of making sure all the integers in the claims are properly and clearly defined in the description. In this case, Amazon was perhaps spared from refusal by providing a clear description of was what was meant by “single action”.

The approach to an inventive step question was clearly illustrated by the Delegate. The PSA is identified and the ambit of the common general knowledge properly understood before the prior art is considered.

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