It has been several weeks since we’ve seen a good bout in the Apple vs Samsung patent war. Fortunately, this cavernous gap in our lives has been filled, at least for a little while, by Amazon’s escapades before the EPO’s Opposition Division this week.

The case is a long one (If you’ve a lot of time to spare, you can check out the EPO register entry here), so IPcopy is here to give you a whistle-stop tour.

Back in 1998, Amazon filed a European patent application for its ‘Gift Order’ system. The more high-tech gift-giving readers of IPCopy may already be familiar with Amazon’s Gift Order system, but just in case you prefer to do your Christmas shopping the old-fashioned way, the idea is simple: when purchasing an item on Amazon, a user can select a “This will be a gift” option before checking out. Amazon will then send the item fully gift wrapped with a heart-warming message to your chosen recipient.

Claim 1 of the application as filed covered this broad method of gift ordering. During prosecution, the claim was narrowed to a method in which the purchaser provides only the e-mail address of the gift recipient, and Amazon liaises with the gift recipient to arrange delivery. As an interesting aside, does Amazon UK offer this delivery option? A member of the IPCopy team ordered a gift recently but didn’t see this option available.

The patent granted in 2003, and Claim 1 as granted read as follows:

“A method in a computer system for ordering a gift for delivery from a gift giver to a recipient, the method comprising:

receiving (1401, 1404) from the gift giver an indication that the gift is to be delivered to the recipient and an electronic mail address of the recipient; and

sending (1409) to a gift delivery computer system an indication of the gift and the received electronic mail address,

wherein the gift delivery computer system coordinates delivery of the gift by:

sending (1501b) an electronic mail message addressed to the electronic mail address of the recipient, the electronic mail address /sic, obviously “message” is intended/ requesting that the recipient provide delivery information including a postal address for the gift; and

upon receiving the delivery information, electronically initiating (1701-1708) delivery of the gift in accordance with the received delivery information.”

So far, so patentable.

Three parties launched opposition proceedings: Fleurop-Interflora European Business Company (CH), Gesellschaft für Informatik e.V. (DE) and the Förderverein für eine Freie Informationalle Infrastruktur e.V. (DE) (No, I hadn’t heard of the last two either).

Oral proceedings were held on 7 December 2007, and there were two points particularly worthy of note in the decision.

Firstly, the Opposition Division considered that the feature of a ‘postal address’ was not supported by the application as originally filed, and hence Claim 1 as granted included added subject-matter.

Secondly, the Opposition Division considered that the problem solved by the invention was “making e-commerce gift ordering easier, more comfortable and more secure”, and that this was not a technical problem. Thus, the Opposition Division found that Claim 1 lacked an inventive step.

The amended versions of Claim 1 in Amazon’s auxiliary requests were also considered to fall foul of one or both of the above.

So, just in time for the Christmas rush, the Opposition Division revoked the patent in its entirety on the basis of added subject matter (Article 123(2) EPC) and a lack of inventive step (Article 56 EPC).

Amazon filed an Appeal, and the oral proceedings were held on 11 November 2009 (T1616/08).

Contrary to the Opposition Division, the Appeal Board considered that the feature of a ‘postal address’ was supported by the application as filed. However, the Appeal Board agreed with the Opposition Division that Claim 1 as granted lacked an inventive step.

The Appeal Board went on to consider the Claims of Amazon’s auxiliary requests. The Board made it through the first two auxiliary requests, in which only minor amendments were made to Claim 1, and found that the amendments did not confer an inventive step on Claim 1.

When the Appeal Board reached auxiliary request 3, it was faced with something of a monster-claim:

“A method in a client computer system for ordering a gift for delivery from a gift giver to a recipient, the method comprising:

receiving from a server system a client identifier of the client system;

persistently storing the client identifier at the client system;

displaying information identifying an item and displaying an indication of a single action that is to be performed to order the identified item;

selecting by the gift giver the displayed item on a website during a browser session by the indicated single action and sending to a server system the single action order to order the identified item and automatically sending the client identifier whereby the gift giver does not input identification information when ordering the item;

wherein said single action results in buying the item as a gift,

receiving (1401, 1404) from the gift giver an indication that the gift is to be delivered to the recipient and an electronic mail address of the recipient; and

sending (1409) to a gift delivery computer system an indication of the gift and the received electronic mail address,

wherein the gift delivery computer system coordinates delivery of the gift by:

sending (1501b) an electronic mail message addressed to the electronic mail address of the recipient, the electronic mail address /sic, obviously “mail message” is intended/ requesting that the recipient provide delivery information including a postal address for the gift; and

upon receiving the delivery information, electronically initiating (1701-1708) delivery of the gift in accordance with the received delivery information,

wherein when the recipient does respond to the electronic mail message, the delivery information is automatically extracted from the electronic mail message /sic, obviously “from the recipient’s reply message” is intended.”

Clearly Amazon wasn’t concerning itself with the Hand Test at this point.

Since it was approaching lunch time, a considerable number of new features had been added, the Appeal Board took the very sensible view that some of the features probably hadn’t been searched, and that the case should be returned to the Opposition Division.

Which brings us to the most recent round of oral proceedings, back in front of the Opposition Division again, on 15 January 2013 – almost fifteen years from the filing date, and with just over five years of the patent term left to go.

Details won’t be available for a while yet, but we know the patent was revoked because the Opposition Division found that, despite the number of features added to Claim 1, the monster-claim™ lacked an inventive step.

Amazon can, of course, appeal the decision. If it’s lucky, it might even get a decision for the Appeal Board before the patent term expires.

In the meantime, we thought Amazon might enjoy receiving this, fully gift-wrapped and accompanied by a heart-warming message…

Emily Weal    18 January 2013