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Amazon Again

Canadian patent CA 2246933 was issued on January 17, 2012 for the Amazon 1-Click claim. Aaron Edgar and Grant W. C. Tisdall, in "Amazon.com’s Canadian ‘one-click’ Patent on the Threshold of Issuance" (gowlings.com, January, 2012), have written:

On December 23, 2011, barely a month after the Court’s ruling, the Commissioner himself approved Amazon’s application and a Notice of Allowance was sent out. On December 28, 2011, Amazon’s patent agents submitted the required issue fee and the Canadian Intellectual Property Office (CIPO) then promptly processed the fee as paid. Given the recent speed at which CIPO processed allowance of Amazon’s application, we expect the Canadian ‘one-click’ patent to issue shortly.

According to Michael Ladanyi, in "Cipo Allows Amazon.com 1-Click Patent" (heenanblaikie.com, January 5, 2012):

CIPO does not provide reasons when issuing a Notice of Allowance….

That’s disappointing, because I’d love to see their explanation.

Patent or Trade Secret?

I’ve been following this case because I know a little bit about how web servers and web sites work. Perhaps a few of you read "Reducing the 1-Click Patent Claim" (slaw.ca, December 10, 2010). I thought that the patent application, and any additional documentation submitted in the the course of the claims dispute proceedings, would disclose the particulars of Amazon’s process (sometimes dubbed a "business method"). Following the case has indeed been quite a revelation for me, but not in the way I expected. The surprise was that reading the claims and description on the Canadian Intellectual Property Office website turned out to be such a waste of time. It may look like detail to someone who knows little or nothing about web sites, but to me it’s all abstract and generic. There are some very general outlines of an algorithm or two, and some high level flow diagrams. There’s no mention, however, of the operating system or the hardware Amazon was running it on; no mention of the web server software; no mention of the database software; no mention of any particular programming language or compiler; only the vaguest references to relevant internet protocols; no acknowledgment of any code that might have been borrowed; and certainly no disclosure of a line of original coding. There were some charming references to what "one skilled in the art would appreciate". I appreciated that Amazon wasn’t giving me any of the particular information I was hoping to find. I wanted a detailed description of Amazon’s actual process as implemented (the "practical embodiment" if you like), not an abstract vision-statement.

Maybe all this detail is somewhere else in the application, and I’m just too ignorant of the patent application process to know where to look for it. I hope so, I guess. All I know is that I took the risk of embarrassing myself when I posted last year, and nobody has so far suggested that Amazon gave the Patent Office (or, ultimately, the curious public) any of the information I’ve referred to.

Federal Court of Appeal

I’m not going to repeat everything I wrote last year. When I got this latest news, I was just planning to write about November’s Court of Appeal decision: Canada (Attorney General) v. Amazon.com, Inc., 2011 FCA 328 (CanLII)(FCA), [2011] F.C.J. No. 1621, 2011 CarswellNat 4865. I think it’s a pretty good decision. The Court of Appeal agreed with the Trial Division that the Commissioner needed to have another look at the application. That, I thought, was obviously right. Paragraph 50 of Amazon.com Inc., Re or Kaphan Patent Application No. 2,246,933, 75 C.P.R. (4th) 85, 2009 CarswellNat 982, 2009 LNCPAT 2 (QL), had sealed it for me:

Neither the Applicant nor the Examiner made submissions with respect to identifying the notional skilled technician. Based on the disclosed invention, the Board considers that the skilled technician would be knowledgeable in any subject matter to which the claims are directed, such as the fields of online retailing models or techniques, e-commerce, Web development, marketing, and consumer psychology.

Funny the Commissioner didn’t mention magic too. Shouldn’t the Commissioner, I thought, have made some serious effort to find out how the thing actually worked before making a decision?

The Court of Appeal (Sharlow J.A., with the concurrence of Trudel and Stratas, JJ.A.) said:

[72] In my respectful view, it was not appropriate for Justice Phelan to undertake his own purposive construction of the patent claims on the basis of the available record in this case. … [73] Anyone who undertakes a purposive construction of a patent must do so on the basis of a foundation of knowledge about the relevant art, and in particular about the state of the relevant art at the relevant time. For the Commissioner, that assistance comes in the form of submissions from the patent applicant and, I assume, from staff at the patent office with the appropriate experience. Courts, however, generally require the expert evidence of persons skilled in the art …. [74] … In this case, Justice Phelan did not have the benefit of expert evidence about how computers work and the manner in which computers are used to put an abstract idea to use.

Exactly.

Purposive Construction

The Court of Appeal said a lot about purposive construction, as one would expect. In this context, the Court noted (para. 20) the bargain between the inventor and the public:

The inventor is granted, for a limited time, the exclusive right to exploit his or her invention. In return, the inventor must disclose the invention to the public so that when the term of the patent expires, the invention may be exploited by anyone. The object of the Commissioner’s examination of a patent application, understood in its broadest possible sense, is to determine whether the terms of the bargain are met.

Later (para. 44), the Court added:

Purposive construction will necessarily ensure that the Commissioner is alive to the possibility that a patent claim may be expressed in language that is deliberately or inadvertently deceptive. Thus, for example, what appears on its face to be a claim for an "art" or a "process" may, on a proper construction, be a claim for a mathematical formula and therefore not patentable subject matter. …

Schlumberger

The Court gave Schlumberger Canada Ltd. v. Canada (Commissioner of Patents), [1982] 1 F.C. 845, 56 C.P.R. (2d) 204, 1981 CarswellNat 138, [1981] F.C.J. No. 176 (C.A.); leave to appeal refused [1981] S.C.C.A. No. 56, 1981 CarswellNat 815, as an example of such a case. In Schlumberger, a patent was refused for “a process whereby the measurements obtained in … boreholes [were] recorded on magnetic tapes, transmitted to a computer programmed according to the mathematical formulae set out in the specifications and converted by the computer into useful information produced in human readable form.” Pratte J. (Ryan J. and Kerr D.J. concurring) said (para. 5, F.C.J.) that “mental operations and processes” were not included in the definition of invention. “[T]he mere fact that the use of computers is prescribed to perform the calculations prescribed in the specifications” did not “have the effect of transforming into patentable subject-matter what would, otherwise, be clearly not patentable.” Anyone who knows what trivial operations a computer processor actually performs appreciates the implications of this.

Shell Oil

Even better, the Court of Appeal had this to say about Shell Oil Co. v. Canada (Commissioner of Patents), [1982] 2 S.C.R. 536, 1982 CanLII 207 (S.C.C.), [1982] S.C.J. No. 82, 1982 CarswellNat 487:

[46] The Attorney General of Canada also cited Shell Oil as an example of a case in which a patent was granted for claims that in form were claims for a substance consisting of a combination of known and unpatentable ingredients, but were found to be claims for a new, useful and unobvious use for the claimed compositions as a plant growth regulant. I do not read Shell Oil as a case in which the substance of the claims prevailed over its form. As I read Shell Oil, Justice Wilson (who wrote for the Court) adopted an approach that was consistent with Free World Trust and Whirlpool, decided several years later. She construed the claims purposively and, on the basis of that construction, concluded that the subject matter of the claims was a new and useful art.

Shell Oil is a very important case. As the Court of Appeal comments illustrate, however, it needs to be read very carefully. Again, you’ll thank me for not repeating everything I wrote last year. For my present purposes, I’ll just note that Wilson J. (Ritchie, Dickson, Beetz, and McIntyre JJ. concurring) did two important things: (1) she carefully differentiated invention and use; and (2) she casually differentiated liberal arts and useful arts. Before expanding on this, I need to review a few key sections of the Patent Act, R.S.C., 1985, c. P-4 (justice.gc.ca).

Inventions Building on Other Inventions

Section 2 says that an "invention" is "any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter". Section 32 says: "Any person who has invented any improvement on any patented invention may obtain a patent for the improvement, but he does not thereby obtain the right of making, vending or using the original invention, nor does the patent for the original invention confer the right of making, vending or using the patented improvement." Section 42 says that what is granted by a patent is "the exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used." Suppose Albert invents and obtains a patent for a new chemical composition. Suppose Beth develops and patents a new, less costly process for producing large quantities of Albert’s chemical composition. Suppose Charles, because of the wonderful properties of Albert’s new chemical composition, is able to use it to invent and obtain a patent for a new machine. Suppose Diana then obtains a patent for an improvement to Charles’ machine. Albert has the exclusive right to make his composition, but Albert can’t make his own composition using Beth’s process without paying royalties to Beth. Albert has the exclusive right to use his composition, but Albert can’t use his own composition to make Charles’s machine without paying royalties to Charles. Beth can’t make Albert’s composition without paying royalties to Albert. Charles can’t use Albert’s composition to make his machine without paying royalties (directly or indirectly) to Albert. Edward can’t make the best machine at the lowest cost without paying royalties (directly or indirectly) to Albert, Beth, Charles and Diana.

Point 1 from Shell Oil: Invention and Use

What seems to confuse some people who read Shell Oil is that there was no patent holder for "the old compound". It had been around for years before anybody could think of any use for it. No use, no patent. And later, of course, no novelty. The invention in Shell Oil was "the composition", namely a particular mixture of "the old compound" and "the adjuvant". Were "the old compound" and "the adjuvant" compositions of matter? Of course they were. "The composition", however, unlike the old and new compounds, was patentable because there was a use for it. Did you need to use "the old compound" to make "the composition"? Of course you did. If someone had held a patent for "the old compound", the inventor of "the composition" would have had to pay royalties for its use. The point is that neither would the holder of the compound patent, because of the composition patent, have been able to use the old compound to make the composition without paying royalties to the holder of the composition patent. One patent holder would have the exclusive right to make and use one composition; another patent holder would have the exclusive right to make and use a different composition. Everything’s hunky dory. It would be just like the situation with Albert, Beth, Charles and Diana in my example. That’s how the Canadian Patent Act keeps all the various rights straight when one invention builds on another. The one thing the Court couldn’t do, however, without getting into a logical tangle, was to grant a patent for a use of "the old compound". Section 42, as noted, gives a patentee the exclusive right to all the uses. Careless readers think that the Supreme Court in Shell Oil said there could be a patent for a use. It said no such thing. It is an interesting question whether the Patent Office fully appreciated the subtlety of the decision. The patent subsequently issued is CA 1160073. Also, as I noted last year, the U.S. legislation handles this differently, which is probably another reason why people get confused. In any event, Wilson J. said (p. 548, S.C.R.)

The appellant’s discovery in this case has added to the cumulative wisdom on the subject of these compounds by a recognition of their hitherto unrecognized properties and it has established the method whereby these properties may be realized through practical application. In my view, this constitutes a ‘new and useful art’ and the compositions are the practical embodiment of the new knowledge.

At pp. 547-8:

Other compounds having the same chemical structure have been produced by the appellant and are therefore new compounds. They are per se an "invention" of the appellant and the respondent acknowledges that they are patentable. The appellant, however, has withdrawn its claim for patent on those and seeks instead a patent on compositions formed by mixing them with appropriate adjuvants.

Finally, at p. 553:

If I am right in my earlier conclusion in relation to the compositions containing the old compounds, namely that there is inventive ingenuity in the idea of using compounds having this particular chemical structure as plant growth regulators, then the appellant’s invention in the case of the new compounds did not stop with the creation of the compounds and the patenting of the compounds would not give it protection for its idea. The mixture of the compounds with the appropriate adjuvants was necessary in order to embody the idea in practical form.

And so, evidently, the claim on the new compounds was withdrawn because there was no demonstrated use for them apart from the adjuvants. Wilson’s emphasis was thus on the embodied art (the compositions), and not on the praxis (or poiesis) of the artist. Of course, if someone else invented another new and useful process for manufacturing the composition, there could be another patent holder for that invention.

The point of this discussion? It’s all about asking what was the "practical embodiment" of Amazon’s process. It has to be the whole configuration of deployed hardware and software. This must surely, one imagines, be sufficiently complex that there is ample room for improvement. If there isn’t sufficient disclosure of the whole practical embodiment in the patent, other inventors will not have a fair shot at inventing improvements. Even more seriously, other programmers won’t even be able to tell whether a process which achieves the same results is the same as Amazon’s process or a different one. You shouldn’t be able to get a patent while at the same time treating the process as a trade secret.

Point 2 from Shell Oil: Liberal Arts and Useful Arts

The second significant thing that the Shell Oil case did was, briefly and somewhat cryptically, to acknowledge (p. 554, S.C.R.) that there continued to be a rough division between copyright law (for the liberal arts and "professional skills") and patent law (for the useful arts practised in "trade, industry and commerce"). For a bit of history, see Robert I. Coulter, "The Field of the Statutory Useful Arts", Journal of the Patent Office Society 34(6):417-435 (June 1952) (Hein), 34(7):487-507 (July 1952) (Hein), and 34(9):718-738 (September 1952) (Hein).

My point here? As I argued at length last year, the author of an abstract literary work, Harry Potter and the Deathly Hallows, practises a liberal art. The makers of a Harry Potter and the Deathly Hallows codex practise useful arts, such as papermaking, printing and binding. The makers of kobos, nooks, kindles and so on practise other useful arts. Whether, in this digital age, we conceive of Harry Potter and the Deathly Hallows as text or a number or as software, it’s an abstract work. It doesn’t matter that there are a number of practical embodiments. The appropriate protection is copyright, not patent.

Conclusion

There’s no doubt that the 1-click epiphenomenon can be created, in various ways, using just software and ordinary computers. I said last year that I doubted that a disclosure of further particulars by Amazon would reveal a different “business method” of doing so. Now, it seems, we’ll never know. So I’m a little sad to see the end of the Amazon case. Clearly, though, we’re not finished with the issues it raised.

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