While we’re on the subject of patent re-exam lately, I received a letter from a plucky individual that has decided to file a request for ex parte reexamination of Amazon’s “One-Click” patent (US Patent 5,960,411), using some prior art that he found.
It turns out that New Zealander Peter Calveley is one of the actors who provided the motions for computer-generated elves and orcs in Two Towers. He also has been laid up of late due to an accident (I can relate). He has now put his free time to use taking on a David and Goliath effort against Amazon.
From his web site, the sequence of events appears to be as follows:
October 04, 2005: Ordered a book from Amazon and it never arrived.
October 09, 2005: Got out of hospital and the book finally arrived (very late).
November 13, 2005: Mailed a request for re-examination for the Amazon “One-Click” patent.
You can view the request in PDF form here and, as you’ll see, it is very impressive and quite thorough. Clearly not the average work of a pro se litigant (i.e., not in crayon).
I have to admit, I was quite intrigued by the whole affair given that a Request for Re-Exam is not something average citizens take on in their spare time. After some correspondence, we spoke by telephone briefly — since I was unwilling to write about his efforts if this was all a scam. I found that Calveley is extremely bright and has his own inventions and understands computer patents and procedures quite well. He has the time and will to do this even if it won’t bring him a direct benefit.
The request focuses on one of the broadest claim in the patent, claim 11, along with the dependent claims 14, 15, 16, 17, 21 and 22, relying on two different groups of prior art:
1. United States Patent No. 5,729,594; and
2. A number of references (including pages from the Wayback Machine) referring to DigiCash.
Keep in mind that anyone can file a written request asking the USPTO to reexamine any claim of an issued patent on the basis of prior art consisting of patents or printed publications that the person believes had a bearing on the patentability of any claim of the issued patent. The USPTO reviews this submission and initially determines whether the submitted prior art raises a substantial new question of patentability. If yes, then the patent undergoes an ex parte reexamination. However, beyond the initial request, a third party’s involvement in the reexamination ends, and the patent goes through an examination process that is similar to the regular examination process for pending patent applications. Thus, ex parte reexamination has the risk for a third party of bringing to the USPTO’s attention a potentially damaging prior art document that the patent owner will survive the challenge and obtain new, stronger claims.
There is also the possibility of using inter partes reexamination provisions which apply to any patents issuing from original applications filed in the United States on or after November 29, 1999. Substantively, the inter partes reexamination procedure tracks the ex parte reexamination procedure, in that the reexamination request must set forth a “substantial new question of patentability” based on a prior art document. Further, as with ex parte reexamination, the patent owner cannot expand the scope of claims but can present narrower claims in view of any prior art cited in the reexamination. Under this reexamination procedure, however, third party requesters can participate in a much more meaningful way. For example, they can respond within 30 days to all papers filed by the patent owner and can comment on positions taken by the examiner in Office Actions.
Given that this is not his profession, Calveley is asking for donations to cover the filing fee with the USPTO. The fee for requesting reexamination is $2,520 and he has so far raised $62.92. Besides donations, he is soliciting comments and criticism.
