Software and business method patents – Re-examination
After the final order and opinion, on August 20, 2003 eBay filed a notice of appeal with the United States Court of Appeal for the Federal Circuit, raising again issues of invalidity. At the time of writing (October 2004) the decision is still pending or not yet public.
This is impossible to talk about this appeal without mentioning the tape. This story was reported by Forbes (Phyllis Berman) on September 9, 2004. "The tape, narrated by former newsman Edwin Newman, was made by New York gallery owner Ken Nahan in 1994 for his company Hanicorp. Nahan hoped the investors who saw it would back his patent to tie together art inventories across the world, allowing customers to view art via computer." This tape was used in the trial though the way eBay obtained it is unclear: "[I]n a deposition to be used in oral arguments in the appeal, Nahan says he told the lawyers that the tape was never publicly distributed to anyone prior to 1996 and thus that it could not be considered prior art to the Woolston patents. It was not as...eBay has asserted...an infomercial, i.e., a public advertisement, Nahan says. What's more, Hanicorp required anyone who viewed the tape to sign a confidentiality agreement and since that was still in force, Nahan declined to give the tape to the eBay lawyers."
In March 2004 eBay filed requests for the re-examination of 5,845,265, 6,085,176 and 6,202,051. These re-examinations were assigned the following control numbers (which look like application numbers in Pair):
The three requests for re-examination were granted. I analyze now the re-examination stories. For background information about re-examination look at the Examination page. Here I would like to explain how a re-examination differs from a trial. In a trial for patent infringement the alleged infringer has the burden of proving:
A re-examination works like an examination. An examiner examines the patent with the prior art submitted by the requester that was not properly considered in the original prosecution (substantial new questions of patentability.) The burden of proof is on the examiner to show why the invention does not deserve patent protection.
The examiner can make re-examination non-final or final actions, which are like non-final and final rejections and that the patentee can amend its claims.
This re-examination takes place with a control number 90/006,956.
In the re-examination files I found an amendment in response to an office action mailed on October 16, 1997, so after the second Non-Final Rejection and just before the 5,845,265 issuance (Notice of Allowance mailed). The amendment contained:
I understand that the examiner made the second Non-Final Rejection because he
We learn here that the 5,285,383, 5,283,731 and 4,789,928 references used by eBay in the re-examination request were already considered by the examiner.
In its request eBay asked for the re-examination of claims 1, 4, 5, 7, 8, 10, 11, 13-15, 17, 18, 20-23 and 26-29. eBay found that:
eBay analyzed the prosecution files of MercExchange patents and found that the examiner rejected claims based on 5,664,111 for 6,202,051 and 6,266,651 but not for 5,845,265 though all these MercExchange patents are based on the same common disclosure. eBay found no evidence that 5,664,111 had been considered in the prosecution of 5,845,265.
eBay also found that, to the opposite of 5,845,265:
I present now the patents cited by eBay except 5,424,944 that is presented above.
5,664,111 was invented by Ken Nahan and others and assigned to Hanicorp. So 5,664,111 and the tape mentioned above have the same origin. 5,664,111 was filed on February 16, 1994. The abstract of 5,664,111 shows that the subject matter of 5,664,111 is close to the subject matter of 5,845,265:
"The present invention includes a system and method of electronically executing transactions with a preprogrammed main computer having data and image storage and retrieval equipment. A plurality of electronic images of works of art which are for sale are created by at least one listing dealer and stored on the storage equipment associated with the main computer. Data is input about each stored image and input data is associated with each corresponding stored image. A plurality of preprogrammed intelligent terminals each having data storage and retrieval equipment, at least one display screen and at least one input device, located at at least one listing dealer location and at at least one buying dealer location communicate with the main computer. Search criteria are input through the intelligent terminals for selecting at least one of the stored electronic images for review. Selected images and corresponding data are communicated to the intelligent terminals and at least a portion of the selected electronic images are displayed. A reservation on at least one of the displayed electronic images can be made to prevent the completion of a sale transaction involving the artwork corresponding to the selected reserved electronic image. An indication of the reserve status of the work is displayed in conjunction with the display of the reserved work on any of the intelligent terminals. A buy order can be input on the intelligent terminals to transact a purchase of the artwork corresponding to the electronic image subject to the buy order. Instructions to complete the purchase are automatically generated and communicated to the intelligent terminals corresponding to the appropriate listing dealer and the appropriate buying dealer."
Claims of 5,664,111 have limitations close to the limitations of 5,845,265. However 5,664,111 (like BidBroker) lacks two elements:
6,049,785 was invented by David Gifford and assigned to OpenMarket. This patent was filed in 1998 but is a continuation of application Ser. No. 08/563,745, filed Nov. 29, 1995 (now U.S. Pat. No. 5,724,424) which is a continuation of application Ser. No. 08/168,519, filed Dec. 16, 1993 (now abandoned).
6,049,785 is entitled "Open network payment system for providing for authentication of payment orders based on a confirmation electronic mail message" whereas 5,724,424 and 08/168,519 were entitled "Digital active advertising". The description of 5,724,424 already describes an online payment means with seven methods to authenticate users, one of them using the network address. Both patents describe essentially a network payment system for transferring funds having real monetary value from a sender to a beneficiary, so a means to establish a seller’s account.
5,285,383 was invented by James D. Lindsey, Charles D. Hutton, Joe W. Tubb, Carol L. Shipman and Albert S. Kyle III and assigned to the Plains Cotton Cooperative Association. This patent was filed in 1991 but is a continuation-in-part of application Ser. No. 582,551 filed Sep. 14, 1990, now U.S. Pat. No. 5,063,507.
5,285,383 is entitled "Method for carrying out transactions of goods using electronic title" and describes a "commodity trading system having a centralized computer and data base. Each commodity, such as a bale of cotton, or a block of bales, is represented in the data base as a file having all the information unique to such bale, including a title flag." Its first claim claims an electronic trading system:
"A method for carrying out computerized trading of goods, comprising the steps of:
The preferred embodiment uses IBM mainframes, an SNA network, and the CICS transaction manager, so a close equivalent to the MercExchange inventions, including the trusted network and the identification of participants with their terminal IDs, but without multimedia means.
4,789,928 was invented by Masataka Fujisaki and assigned to Flex Japan Inc. and Aucnet Inc. This patent was filed in 1987 but claims the priority of a Japanese patent filed on February 17, 1986.
4,789,928 is entitled "Auction information transmission processing." 4,789,928 describes a conventional electronic auction system of 1986 in the following way "an auction system by which articles such as used cars can be auctioned automatically is available and includes an auction data processor installed at the auction site for processing predetermined data relating to the used cars to be presented at the auction, as well as data relating to the registered members of the auction group, display units installed at prescribed locations of the auction site for displaying various items of auction information, and bidding buttons also available at these locations so that they can be operated by those participating in the auction. A participant presses the bidding buttons while observing the auction information that appears on the screen of the display unit, thereby issuing a bid-up signal that is then processed by the auction data processor. In this manner a successful bidder can be determined automatically." 4,789,928 aims to address two drawbacks of this auction system:
4,789,928 uses a hierarchical computer network and laser disks containing "the necessary auction data, such as the auction starting time, name, external appearance, year, model, evaluation and distance traveled of the automobiles to be exhibited" delivered by mail.
5,283,731 was invented by James E. Lalonde and Terry R. Dettmann and assigned to EC Corporation. This patent was filed in 1992 but is a continuation-in-part of 07/819,484 filed on Jan. 19, 1992.
5,283,731 is entitled "Computer-based classified ad system and method." The 5,283,731 system comprises a data processor with an "ad database comprising a plurality of ads, each ad containing text data describing an item to be made available through the system", means for receiving profile data describing an item sought from others through the system, and for comparing the profile data to the ads and for generating text output data when matches are found. Similar apparatus are commonly used today on Internet.
The prior art is "the well known classified ad system used in most newspapers, [in which] a seller may place an ad offering an item for sale. The ad includes a description of the item, and a phone number or other information permitting a potential buyer to contact the seller. The ad then appears in the classified ad section of one or more editions of the newspaper, indexed according to the nature of the item offered for sale, e.g., real estate, automobile, etc. A potential buyer can read the classified ads in the newspaper, and then contact the sellers of any items that appear to match the buyer's need. This system is used not only for buy-sell transactions, but also for the leasing of real estate, for employment, for services offered, and for miscellaneous other matters." 5,283,731 discloses a system allowing the potential buyer to use phone to find relevant ads.
eBay further found that market claims 8, 15, 26 and posting terminal claims 1 and 23 were based on subject matter that was added to the application on November 7, 1995, whereas eBay is online since September 1995. I checked the original application 08/427,820. It has continuity data of interest:
08/427,820 was filed on April 26, 1995. I found the prosecution history of 08/427,820, which notably contains:
So I cannot confirm that market claims 8, 15, 26 and posting terminal claims 1 and 23 were based on subject matter that was added to the application on November 7, 1995. I further think that the question is not whether eBay went online September 1995. The question is to know when eBay made public its system. Remember the sentence from the eBay site: "eBay was founded in Pierre Omidyar's San Jose living room back in September 1995." Even if Pierre Omidyar did not create eBay to please his girlfriend as says the legend there was just no time to design and implement something substantial. The case is close because there is also almost no substance in 5,845,265. So a newsgroup posting like BidBroker or a HTML page can anticipate 5,845,265.
I found the decision of the board of appeal for the 08/427,820 application. This was a decision on appeal from the examiner’s final rejection of claims 6-28, which were all of the claims pending in the application [I read that the BPAI used the original claim numbering and that MercExchange cancelled claims 1-5]. The examiner considered the 4,789,928, 5,283,731, 5,285,383 and 5,526,479 patents in his decision. [We learn here that the 4,789,928, 5,283,731 and 5,285,383 references used by eBay in the re-examination request were considered by the examiner.] The examiner rejected:
Claim 6 is the first independent claim. It reads:
"A method for creating a computerized market for used goods and collectibles using a computer, a database and a plurality of participant terminals comprising the steps of
This claim claims nothing related to the posting terminal [5,845,265], to the consignment network [6,085,176] and to auctions [6,202,051]. It is therefore wider than independent claims of 5,845,265, 6,085,176 and 6,202,051.
The BPAI reversed the indefiniteness rejection of claims 16-20 and affirmed the rejection for obviousness of claims 6-28 [all claims]. In its reasoning the BPAI considered:
In his rejection the BPAI notably said that MercExchange failed to establish that there was a long felt need for an "electronic settlement that allows participants to speculate on used and collectible goods without taking physical possession of their goods themselves."
The USPTO agreed that the references provided by eBay raised a substantial question of patentability as to claims 1, 4, 5, 7, 8, 10, 11, 13-15, 17, 18, 20-23 and 26-29 and granted the re-examination request.
This re-examination takes place with a control number 90/006,957.
The re-examination request teaches us the reason for a rejection in light of the centralized search technique of the 4,992,940 patent (whose inventor was Ross E. Dworkin), which occurred in the prosecution of 6,085,176: "Dworkin discloses a computer, or equivalent; which is linked to a database containing information about products and services and the vendors that supply them. [...] Dworkin discloses the present system that enables the user to shop for products and services having particular specification, and having the lowest price. [...] The user can quickly and easily find the product or service having the lowest price, and having the required specification. [...] The system displays a template of technical data pertaining to the product selected. These criteria are used by the system to limit the search for products."
To overcome this rejection MercExchange amended pending claims, adding sentences like "the search request is transmitted from the first electronic market to a plurality of other electronic markets." eBay understands that "MercExchange explicitly limited 6,085,176 to a distributed search system.
4,992,940 was invented by Ross E. Dworkin and assigned to H-Renee, Incorporated. This patent was filed on March 13, 1989.
4,992,940 is entitled "System and method for automated selection of equipment for purchase through input of user desired specifications." It describes a system for assisting users in locating and purchasing goods or services sold by a plurality of vendors: "The system includes a programmed computer which is linked to a database. The database contains information about a large number of different products and/or services, arranged in various categories. For each product or service, the database contains information on price, vendor, specifications and/or availability. In operating the system, the user first indicates the general type of product or service desired. The system responds by displaying a template giving specifications for the type of product or service selected. The user then fills in one or more blank spaces in the template, to tell the system the minimum desired specifications for the product or service. The computer then searches the database to retrieve all products or services, within the product or service category selected, having the specifications required by the user."
The background refers to the CompuServe Consumer Information Service provides a computerized shopping service known as the "Electronic Mall" and allows a user to select a category of merchandise, and to place an order for certain items, listed on the system, within that category. I described the "Electronic Mall"when I analyzed the re-examination of 6,289,319. This was a Videotex service that already allowed sellers to create offers but did not include a search facility as disclosed in 4,992,940.
In its request eBay asked for the re-examination of claims 1, 5, 6, 29, 31, 32 and 34-39. eBay found that:
According to eBay each of these references teaches a computer-implemented method of searching for an item in a plurality of electronic markets connected by a computer network, each electronic market having a data repository.
"A Smart Catalog and Brokering Architecture for Electronic Commerce" describes a method of searching for an item in a plurality of virtual catalogs connected by a computer network, each catalog having a data repository.
The following figure illustrates the architecture "used to permit users, accessing the system via the Internet from computers equipped with Mosaic browsers, to dispatch software agents [catalog agents] to search for items in the product data repositories of various catalogs and receive back the search result in HTML format."
5,402,336 was invented by Steven Spiegelhoff and Joseph Kraetz and assigned to SS&D Corporation. This patent was filed on January 15, 1993.
5,402,336 is entitled "System and method for allocating resources of a retailer among multiple wholesalers." 5,402,336 describes a system that "receives an input request from the orderer for a retailer [such as a grocer], of searching selected wholesalers, and of then comparing these wholesalers to one another so as to provide a desired allocation of resources among these selected wholesalers. The system is preferably capable of searching both the warehouse of a primary wholesaler and the warehouses of a number of secondary wholesalers and of allocating resources so as to meet designated ordering criterion or constraints for the warehouse of the primary wholesaler. The search may be performed, for example, on the basis of net price per unit item or on the basis of net price per unit weight or per unit volume."
5,402,336 aims to permit a permit a retailer to optimize its resources among a plurality of wholesalers, which implies to perform searches on wholesalers’ databases, to compare their prices and to fulfill the obligations of contracts that retailers usually have with wholesalers (weight or volume constraints, or other criterion to obtain a designated minimum or maximum amount of goods.) Inventors recognize the existence of prior art: "Some computerized systems are currently available for permitting comparison among various suppliers. [...] For instance, U.S. Pat. No. 4,992,940, which issued to Ross E. Dworkin on Feb. 12, 1991, discloses an automated system permitting consumers to compare the goods being offered by one or more vendors and to obtain a listing of various information about price and availability of the product. U.S. Pat. No. 5,063,506, which issued to Brockwell et al. on Nov. 5, 1991, discloses a similar system for permitting a manufacturing facility to optimize its cost when ordering parts from various suppliers. U.S. Pat. No. 5,060,165, which issued to Schumacher et al. on Oct. 22, 1991, discloses a computerized system for optimizing mail processing by matching publisher and printer entities."
"Software agents will make life easy" was published on January 24, 1994 in Fortune.
Here is an excerpt from this article: "General Magic has invented a software language, Telescript, that can be used to create and dispatch so-called software agents. Like disembodied servants, they will travel all over regular and cellular phone circuits to just any type of computer database and carry out tasks on the user’s behalf." The article describes software agents that can search for an item in a plurality of independent retailers and report back the best deals.
This publication is called the CSTR/Dienst publication in the re-examination request. "A protocol and server for a distributed digital technical report library" is a Technical report published by the Computer Science Department of the Cornell University in April 1994 by James R. Davis and Carl Lacoze.
"A protocol and server for a distributed digital technical report library" describes a system that provides "Internet access to a distributed, decentralized, multi-format document collection. The collection is distributed and decentralized in that documents are indexed and stored on many different machines across the net, sometimes with more than one administration on each site" and "the ability to perform parallel searching of multiple document indices via a a server-to-server communication."
The CSTR/Dienst publication was discussed in the MercExchange litigation. MercExchange explained that this publication was not relevant prior art because it disclosed searching for documents and not for items can be bought and sold.
The USPTO agreed that the references provided by eBay raised a substantial question of patentability as to claims 1, 5, 6, 29, 31, 32 and 34-39 and granted the re-examination request.
This re-examination takes place with a control number 90/006,984.
The claims of 6,202,051 originally had a wider scope. Notably claim 17 [original numbering, presumably claim 1 of the patent] read:
"A method for auctioning a uniquely identified item with a computerized electronic database of data records comprising:
The examiner found the first claims obvious, referring to the following prior art:
This is to overcome this rejection that MercExchange added the "seller’s account" that "can be charged a fee based on an amount of the high bid."
eBay noticed that "while the MercExchange was pending, MercExchange sought additional Internet auction claims with the same "seller’s account" feature in a 09/253,014 co-pending application. [On February 19, 1999 MercExchange filed four applications claiming the benefit of its original 08/427,820 application, 09/253,014, 09/253,015 that was abandoned, 09/253,021 that was issued as 6,202,051 and 09/253,057 that was issued as 6,266,651.] 6,202,051 (then 09/253,021) and 09/253,014 were assigned to different examiners. The examiner of 09/253,014 found prior art (presented in the next section) that was not identified by the examiner of 6,202,051:
In its request eBay asked for the re-examination of all claims (1-52). eBay found that:
5,383,113 was invented by Peter J. Kight, Mark A. Johnson, Tamara K. Christenson, Regina Lach, Philip Pointer and Kenneth Cook and assigned to Checkfree Corporation. This patent was filed on July 25, 1991.
5,383,113 is entitled "System and method for electronically providing customer services including payment of bills, financial analysis and loans." 5,383,113 discloses a "computerized payment system by which a consumer may instruct a service provider by telephone, computer terminal, or other telecommunications; means to pay various bills without the consumer having to write a check for each bill. The system operates without restriction as to where the consumer banks and what bills are to be paid. The service provider collects consumers' information, financial institutions' information and merchant information and arranges payment to the merchants according to the consumers' instructions based on a financial risk analysis."
The method of 5,383,113 includes:
5,383,113 describes and only describes an electronic payment facility.
5,592,375 was invented by Bardwell C. Salmon, John D. Borgman and Thomas O. Holtey and assigned to Eagleview, Inc. This patent was filed on March 11, 1994.
5,592,375 is entitled "Computer-assisted system for interactively brokering goods or services between buyers and sellers." 5,592,375 discloses a system "for brokering transactions between sellers and a buyer of goods or services, including a database, a seller interface, and a buyer's interface. The database contains information, including multimedia information, descriptive of respective ones of the goods or services. The seller interface enables the sellers to interactively enter information, including multimedia information, into the database." 5,592,375 has both a buyer and a seller interface and include an approximate-comparison system "for presenting to the buyer, goods or services that approximately match selection criteria entered into the Buyer's Interface."
5,592,375 maintains a action log, which is according to eBay an account for buyers and sellers. The action log is presented in this way:
"The Action Log also is the basis for billing for system services. In general, both buyers and sellers would pay a subscription fee for access to the system. Charges could also be made for connect time, communications costs, database storage and other system services. Each match that results in a completed transaction could also incur a charge to the buyer or seller depending upon the application."
[I do not agree with eBay on this point. The action log allows billing per use and not to charge a percentage of the sale to the seller. Logging the actions of logged-in users is not considered by people of the art as the same as defining accounts and recording for said accounts the paid amounts.]
The USPTO agreed that the references provided by eBay raised a substantial question of patentability as to claims 1-52 and granted the re-examination request.
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