A Discussion of the Pinpoint vs. Amazon Case

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Introduction

Pinpoint, a company that says it holds several e-commerce patents, sued Amazon.com on Thursday for allegedly violating its business-method patents. The suit, filed in the United States District Court in Chicago, also named six of Amazon's affiliated retail partners, including Borders Group, Target, Toys "R" Us and CDNow. The lawsuit claims that Amazon violated Pinpoint's personalization technology patents--a service popularized by Amazon that allows e-commerce retailers to recommend related products or newer items to shoppers based on their purchase history at the site. [News.com]

Details

The earliest of the Pinpoint patents used in this lawsuit was filed on November 29, 1994 and the rest are continuations-in-part derived ultimately from that one. Further details can be obtained by by purchasing "file wrappers" of the prosecution history of the patents.

Amazon has been doing collaborative filtering for a number of years. In fact I had a few conversations with Jeff Bezos about it around 1995 because I thought Amazon might be interested in licensing my own CF technology, but not much later they made a deal with Net Perceptions to supply CF. If anyone has any dates on when specific recommendation-related features were added to the Amazon site, and/or the sources of those features, please let me know. I will be collecting information on the case and posting updates here. My impression is that Amazon is now building its own CF technology in-house. Update: One of the people commenting on this piece on Slashdot is Patrick Tuft, who apparently is responsible for Amazon's "customers who shopped for this item also shopped for ..." technology.

In order to be useful against Amazon in U.S. court of law, the patentees must have an earliest provable date of invention earlier than Amazon's, or earlier than that of whoever may have licensed the technology to Amazon.

The concept of "earliest provable date of invention" is a bit complicated. In the U.S., it isn't the date on which the application was filed. It goes back, under ideal circumstances, to the date the invention was conceived of. But several things have to line up properly. After concieving of the idea, the inventor must have been diligent in "reducing the invention to practice." This term refers either to "actual reduction to practice," which means building and testing the invention, or "constructive reduction to practice" which takes the form of simply filing a patent application.

Under some circumstances is possible to keep an invention secret for years after an actual reduction to practice and before filing a patent application, and still keep the date of conception as the date of the invention, as long as the patent is applied for within one year of the invention becoming public.

Given all the above, it may be impossible to determine from publicly available documents, including the file wrapper, what actual date of invention Pinpoint will claim. That may only by determined in court, when the parties involved in a lawsuit put all their cards on the table in order to make their cases.

However, there is some prior art that is very highly likely to come before any date of invention they will be able to claim. First of all, there is my own 212-ROMANCE project from the mid-1980's. That project used techniques that seem fundamentally the same as the basic principles used in the Pinpoint patents. For instance consider claim 1 of the '939 patent

  1. A method for providing a user with access to selected ones of a
     plurality of target objects and sets of target object characteristics that
     are accessible via an electronic storage media, where said users are
     connected via user terminals and data communication connections to a
     target server system which accesses said electronic storage media, said
     method comprising the steps of:
       automatically generating at least one user target profile interest summary
         for a user at a user terminal, each of said user target profile interest
         summary being indicative of ones of said target objects and sets of target
         object characteristics accessed by said user; and
       storing said at least one user target profile interest summary in a memory.

Also, the Hey patent could be easier prior art to make use of in court than the 212-ROMANCE service, at least for the claims it applies to, because no one can possibly argue that the filing date wasn't the one on the patent. In contrast, someone might argue that someone doctored the file creation dates on my disks, or argue that that feature wasn't in the live 212-ROMANCE at the time it was in the software (admittedly an improbable argument), etc. The latter is relevant because it doesn't matter what software someone had in his computer at a given date if it wasn't publicly used. It's the public use that makes it prior art. (Actually, the CTO mentioned above pointed out that he found in his own research that there's yet another complication -- if it was publicly used, but the technology was a trade secret, that may not count -- the case law isn't fully resolved on the issue. 212-ROMANCE's collaborative filtering wasn't a trade secret, but this is another fuzzy area.)

One fact that I find highly interesting is that the Pinpoint patents don't list the Hey patents as references. This leads me to the conjecture that the patent examiner didn't find them in his prior art search. If that is the case, the broad aspects of the Pinpoint claims may fall apart as soon as Hey's patents are mentioned in court.

Now, I am not saying that these items of prior art would completely invalidate the Pinpoint patents. But that's not necessary in any case. The inventors associated with these patents have a right to patent whatever unique (and unobvious) ideas they have come up with. And they have plenty of technology described in those hundreds of pages; some of it is, no doubt, unique. But based on what I've seen of the patents so far, and based on my knowledge of CF technology in general, it does not seem likely in the light of the prior art that these patents would be defensibly broad enough to include Amazon's recommendations technology. That is, when awareness of the prior art causes the legal system to cut out the broader claims, the claims that are left may not be enough to be a problem for Amazon. I am basing that tentative judgement on the visible aspects of Amazon's technology, which could be accomplished any number of ways under the covers.

I should mention a major caveat with respect to the above discussion. At present we do not know exactly what infringement Pinpoint is claiming against Amazon. That makes it impossible to make any conclusive statements. And even once that information is out, there is always a random element to the legal system that makes it impossible to know how things will turn out.

The larger fear, of course, is that Pinpoint will go on to sue other companies in the CF space. Luckily, Amazon has been sued first, and has deep enough pockets to defend itself quite effectively. Hopefully, the Amazon team will be very aggressive and seek to have the Pinpoint patents overturned as being overly broad.

However, there is a danger we should be aware of. Pinpoint may have the following strategy in mind: Amazon can afford to pay a relatively small license fee without breaking into a sweat, so maybe it will just do so rather than fight. The financial details, of course, would not be made public. Then, the precedent of having appeared to be able to force a settlement out of Amazon would give Pinpoint a psychological edge when they subsequently go after smaller practicioners in the CF field, who do not have Amazon's resources to defend themselves.

From a purely business sense, Amazon would the following reason not to go along with the strategy above: if it settles in this case there may be hundreds of other companies and individuals "waiting in line" to sue (as one lawyer who emailed me regarding this article put it). Alternatively Amazon could go a step further and simply purchase Pinpoint and its patent portfolio. I don't need to descibe the danger of a company with Amazon's resources having such patents in its back pocket. Even if the prior art mentioned above would be a powerful weapon in combating lawsuits based on those patents, small companies may simply not have the financial resources to avoid simply being overwhelmed by Amazon's legal resources.

Update: someone on Slashdot mentioned Ringo. The problem with Ringo as prior art is that Upendra Shardanand's paper, like the earliest Pinpoint patent, is also from late 1994, and as discussed above, the filing date is not the same as the invention date. The invention date will be earlier, and that is what counts in U.S. patent law. So, at this point the question of whether Ringo can serve as prior art is unknowable.

Full disclosure: I have a couple of patents of my own in the CF space. However, these patents are for highly specific mathematical techniques and are of no interest to anyone using different mathematical techniques, of which many are freely available. Update: there have been some comments of Slashdot about these patents. One person read the Abstract and thought it looked like one of those ridiculously broad mindless patents the PTO keeps awarding. I admit that that the Abstract does look exactly like that -- I had other things I needed to do and let the lawyer put in some meaningless gobbledegook because it had no legal relevance, and I didn't care and had no reason to think the patents would ever be examined by anyone without a strong interest in the very specific underlying mathematics. These are EXTREMELY narrow patents when you look at the claims and specifications. They will not effect anybody's work unless they want to use my particular brand of arcane statistical mathematics, which took a very long time and a lot of effort for me to work out. BTW, if you have an interest in looking at them for some reason, only look at the later one, beginning at column 20, line 59. The rest was written while I was still trying to figure stuff out, but stuff starting in column 20 is pretty good IMHO. :) Also, suggestions were made that a) these patents of mine could serve as prior art to Pinpoint (unlikely due to being later than the root of Pinpoint's continuations) and b) that my 1980's prior art should invalidate my own patents (not true because my later patents are very narrow and do involve substantial mathematical improvements over my 1980's work).

Comments on specific Pinpoint patents

5,754,939: SYSTEM FOR GENERATION OF USER PROFILES FOR A SYSTEM FOR CUSTOMIZED ELECTRONIC IDENTIFICATION OF DESIRABLE OBJECTS

5,758,257: SYSTEM AND METHOD FOR SCHEDULING BROADCAST OF AND ACCESS TO VIDEO PROGRAMS AND OTHER DATA USING CUSTOMER PROFILES

6,088,722: SYSTEM AND METHOD FOR SCHEDULING BROADCAST OF AND ACCESS TO VIDEO PROGRAMS AND OTHER DATA USING CUSTOMER PROFILES

5,835,087: SYSTEM FOR GENERATION OF OBJECT PROFILES FOR A SYSTEM FOR CUSTOMIZED ELECTRONIC IDENTIFICATION OF DESIRABLE OBJECTS

		© Copyright 2006 Gary Robinson. Last update: 1/30/06; 2:48:13 PM.