Call it patent karma.
Ten years ago, Amazon.com riled the tech world when it sued Barnes & Noble with a patent on "1-click" buying. Critics cried that clicking once to order a book wasn't really an invention -- and certainly not worthy of a patent. And it became the poster child for a patent system gone overboard.
Now, Amazon is defending itself against Cordance Corp., a company that claims it filed for its patent on 1-click ordering before Amazon's application. The case, filed in 2006, is set for trial on Aug. 3 in Delaware -- and Fenwick & West's Lynn Pasahow, the Palo Alto, Calif.-based lawyer who worked to enforce Amazon's 1-click patent, will now play defense for the online bookseller.
Jason Schultz, an IP lawyer who's the acting director of the Samuelson Law, Technology & Public Policy Clinic at UC Berkeley School of Law, said Cordance's Internet commerce patent on an "object-based online transaction infrastructure" is "just as suspect" as the Amazon 1-click patent, entitled a "method and system for placing a purchase order via a communications network."
"This is the hard lesson that Amazon learned and that a lot of software companies learn," Schultz said. "You think these patents are great when you own them, but really it's a minefield." Even more ironically, it may help Amazon's case that its 1-click patent was the target of so much criticism a decade ago. At the time, tech-industry publisher Tim O'Reilly led the vocal opposition to the bookseller's patent, calling it "an attempt to hoodwink a patent system that has not gotten up to speed on the state of the art in computer science." O'Reilly even put out a $10,000 bounty for anyone that could come up with prior art -- information or technology that was already public -- to prove it wasn't an invention and bust the patent. Although angry techies turned up a mountain of prior art, they couldn't invalidate the patent, though it is now being re-examined by the U.S. Patent and Trademark Office. However in Amazon's suit against Barnes & Noble, the Federal Circuit U.S. Court of Appeals overturned an injunction Amazon had won, saying that Barnes & Noble had "raised substantial questions as to the validity" of the 1-click patent.
Observers say that Amazon can now use all the prior art used against it to take down Cordance's patent.
And indeed, one of the main pieces of prior art that Amazon's lawyers at Fenwick are arguing invalidates Cordance's patent is from a company called First Virtual Holdings, which came up with a virtual PIN that allowed online customers to buy things with a single click. Although it's not clear whether that prior art was officially used against the Amazon patent, it was mentioned in Web forums by techies trying to invalidate it.
Fenwick's Pasahow declined to comment on the case, and an Amazon spokeswoman said the company doesn't comment on pending litigation. Michael Albert of Boston's Wolf Greenfield is representing Cordance. Albert said Amazon's lawyers have yet to make a strong argument using any prior art.
"At the outset of the case, they told us, 'We know everything about this case because of all this prior art.' But they haven't really been able to produce anything."
The Amazon case is also part of a trend of defendant tech companies taking more patent cases to trial instead of just settling. Apple and Yahoo both recently took patent cases to trial for the first time in years -- and both lost. The trend is being driven by more favorable defense rulings as well as tech companies' frustration with the number of patent cases they are facing.