Earlier this month, the U.S. Patent and Trademark Office (PTO) (PDF) following a re-examination of newly-submitted prior art (via ).�� This re-examination sheds light on the difference between the novelty and obviousness tests, and why the real issue lies with business method patentability.

Novelty vs. Obviousness
First, the PTO's re-examination seems to be limited to analyzing the novelty -- and not the obviousness -- of the 1-Click patent.�� The difference between novelty and obviousness is this: The novelty test asks whether the invention has been done before, whereas the obviousness test asks whether it actually required inventiveness.�� The is that failing the novelty test says that, "Your invention, although clever, was already known", whereas failing the obviousness test says that, "Any fool could have done that."

1-Click and Prior Art
As mentioned earlier, the PTO's re-examination focused on novelty, and not obviousness.�� In order to invalidate a patent for lack of novelty, you have to find a single document that describes all that is being claimed by the patent.

In Amazon's case, their claim involved a number of features, including: (1) a single-action purchase system, (2) that uses pre-stored payment information, (3) to generate and fulfill an order.�� Additionally, Amazon has since amended the patent to include a fourth criterion: (4) the aforementioned system exists with a traditional shopping cart system.�� In order to invalidate Amazon's patent, a challenger would have to produce a single document describing an invention with all four of these features.

I have summarized the PTO's re-examination in the chart below.�� As can be seen, none of the alleged prior art�� describes all four features:

For the novelty analysis it is irrelevant that, for example, Franklin and Polnerow might be "combined" to produce all four features: The test requires that all features be described in a single document.�� Since the test was not met here, the patent was deemed novel.

1-Click and Obviousness
"Obviousness" is the other test that relates to "prior art."�� The obviousness of the 1-Click patent was not analysed in the re-examination, but it bears some consideration as it seems to be one of the main objections made online.

Obviousness speaks to the inventiveness of the alleged invention: the invention must be non-obvious in order to be patentable.�� Unlike in the novelty analysis, the obviousness analysis does combine the elements of the "prior art" to determine the "state of the art."�� So the fact that Franklin and Polnerow, taken together, described many of the key features of the 1-Click patent might be relevant.�� However, this is not the only factor considered.�� If a particular combination of features was non-obvious at the time the patent was filed, the patent might still be granted.

In the that upheld the 1-Click patent, the judge held that the patent was valid because it marked a departure from "conventional wisdom", maximized the number of completed transactions while minimizing consumer anxiety, and was hailed by industry analysts as "legendary" and "seductive innovation" (paras. 34, 35, 41).�� Moreover, both sides' technical experts acknowledged that they had never conceived of the invention (para. 36).�� In other words, 1-Click was non-obvious because the business community recognized the 1-Click system as such.

It should be noted that the inventiveness in the 1-Click patent was not the technology per se.�� That is, the inventiveness did not lie in the use of cookies to pass an identifier to a server that stored the shopper's personal information.�� Rather, the inventiveness lied in the method of doing business in that way in the first place.�� Indeed, when the 1-Click patent the Canadian Patent Appeal Board held that "the 'single action ordering' aspect of the inventive concept would not have been obvious", even though "there is nothing inventive about the particular use of the cookie or identifier, as claimed" (para. 101).�� However, the Board ultimately rejected the patent because business methods are generally considered unpatentable in Canada (para. 140).

The Real Issue: Business Method Patents
The real issue, then, lies with the patentability of business methods.�� As mentioned, the 1-Click patent was rejected in Canada because business methods are generally not considered patentable subject matter.�� U.S. decisions indicate that business methods are patentable, but that may change with the Supreme Court's upcoming decision in .�� The Canadian decision suggests that the technological aspect of the 1-Click patent is already obvious, while the business method aspect is not.�� Thus, if the court in Bilski holds that business method patents are invalid, then the American 1-Click patent would likely be invalidated for obviousness.

The post Real issue with Amazon's 1-Click patent is business method patentability, not prior art appeared first on IPOsgoode.

When you give your email address to a website, do you expect that site to offer it to anyone who asks for it? How much privacy do you expect? A recent case heard by the Ontario Superior Court of Justice , suggests we all have a very low expectation of privacy online.

After reading Adrienne Ng's excellent on the case, I wanted to offer my thoughts on the court's problematic assertion that users of web forums have “no expectation of privacy.”

The Facts
The facts of the case as as follows. Eight defendants posted allegedly defamatory statements on a web forum at . In order to try to identify these John Doe defendants, the plaintiff asked the forum's owners to disclose their email addresses and IP addresses. The owners refused. The plaintiff sued both the Does and the owners, requesting the Does' information be disclosed.

Duty to Disclose
The court used a two stage analysis. First, they determined the appropriate test for disclosure, then they considered whether there were any policy reasons to counter that test. In the first stage, the court distinguished prior decisions which suggested that a prima facie or bona fide case was required before disclosure could be made. Instead, they held that “the obligation is on the Defendants to disclose.”

I don't want to comment much on this aspect of the case, other than to point out that the plaintiff's identities are irrelevant to establishing a case of defamation. The plaintiff already has access to the allegedly defamatory statements; it should be possible to make a prima facie or bona fide case without learning the plaintiff's identities. If there is any expectation of privacy online, then it is difficult to see why the court would not require at least a bona fide case to be made before disclosing personal information.

“No Expectation of Privacy”
But in considering policy reasons in the second stage of the test, the court held that the forum users had “no reasonable expectation of privacy,” and ordered their information be disclosed. The decision relied on obiter in . The court in Wilson held that there is no reasonable expectation of privacy given that the information sought for disclosure (an individual's name and address) was available “in a public directory” and was not “information one expects to be kept private from the state.”

First, it's not clear that the reasoning is Wilson is correct. It's true that names and addresses can be found in a public directory, but this information is not linked to IP addresses. When names and addresses are linked to IP addresses, anything traced to that user's IP address can be traced to that individual. Their anonymity is severely threatened. Indeed, eight days after Wilson was decided the same court held in that there was a privacy interest in such information (as Michael Geist ).

However, the courts in both Vasic and Wilson held that the individual's agreement with their ISP allowed for disclosure in spite of any expectation of privacy. Such an argument was not relied on in Warman, likely because the forum's makes no mention of disclosure. Since the obiter in Wilson might not be valid, and since there was no contract allowing for disclosure, there likely was an expectation of privacy.

But even if the obiter in Wilson is valid, Warman can be distinguished. In Warman, the information sought by the plaintiff was the users' IP addresses and email addresses. This information is not available in a public directory, unlike the names and addresses in Wilson. In fact, most web forum software keeps this information private from everyone except the administrators by default.

Furthermore, Wilson dealt with disclosure to the state, but in Warman the disclosure was to a private party. Even if the personal information sought were analogous in both cases, it isn't clear that the users would expect it to be disclosed to anyone other than the state.

Conclusion
The court's decision in Warman significantly restricts privacy rights online. In filing a lawsuit, a private individual could gain access to email addresses and IP addresses without proving any case against the defendants. Thankfully for those who value online anonymity, the latest news is that .

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