Discovery v. Amazon: A lawsuit with legs

As described in an article by CNET's Greg Sandoval yesterday ("Discovery hits Amazon with Kindle patent suit"), the parent company of the Discovery Channel (Discovery Communications) has filed a lawsuit against Amazon.com, claiming that the Internet retailer's Kindle e-book reader infringes Discovery's U.S. patent 7,298,851, titled "Electronic book security and copyright protection system".

I read through this patent in some detail, and honestly, it looks formidable. It was filed in 1999 as a "continuation in part" from patent applications dating back to 1992. Among the prior-art disclosures listed are 52 U.S. patents or applications, 34 foreign patents or applications, and 15 nonpatent publications. It has 171 claims, three of which are independent. Those are all signs of a strong patent.

Just some of the logos of the 100-plus broadcast networks owned by Discovery Communications.

(Credit: Discovery Communications, Inc.)

I'm inclined to believe that the eight years of pendency and all that prior art is evidence of a mighty battle between the inventors and the U.S. Patent and Trademark Office--a battle that Discovery Communications eventually won when the patent was granted.

Claim 1 in the Discovery patent is long but reasonably straightforward:

1. A method for encrypting, sending, and receiving electronic books upon demand, comprising: creating a list of titles of available electronic books; transmitting the list of titles of available electronic books; selecting a title from the transmitted list of titles; communicating the selected title to an electronic book source; supplying a selected electronic book corresponding to the selected title to be encrypted; supplying an encryption key; encrypting the selected electronic book using the encryption key; supplying the encrypted selected electronic book; supplying a decryption key; and decrypting the encrypted selected electronic book using the decryption key.

For this claim to cover the Kindle, each step in this process has to be performed by the Kindle, Amazon's servers, or the Kindle's user (as appropriate). There are many steps, but most of them are necessary, or implied by other steps, so the total complexity of this claim isn't really that bad.

I could quibble about some of this claim language, but it does seem to describe the process used by Amazon and other e-book sellers. If that's true (and only Amazon can really say for sure, at this point), Amazon's best hope to invalidate this claim may be to find some as-yet unnoticed e-commerce patent or publication that describes the same process, as applied to some other kind of electronic content, then base an obviousness claim on that, uh, discovery.

The real issue here isn't so much whether this method is or isn't obvious; I think it is. It's that the patent has been examined in light of so much prior art that it has acquired a reasonable presumption of novelty and nonobviousness. Amazon would find it very difficult to say anything in the listed prior art invalidates this patent because the Patent Office has already said it doesn't.

The vast majority of the dependent claims built on Claim 1 are not relevant, and if Claim 1 were invalidated, I doubt that they'd matter. Claims 96 and 129, the other independent claims, are weaker than Claim 1, and it seems less likely to me that they are being infringed, but as always, courts can make unexpected decisions.

I bet we'll be hearing a lot more about this suit because it's going to affect a lot of companies that haven't actually been sued yet, including at least Adobe Systems and Sony, both which seem to use something like this process. Sony sells e-books for its Reader, and Adobe's Digital Editions software may be covered by this patent.

And I'm sure that there must be other companies that should be concerned, though the precise manner in which e-books are sold is crucial in this case, and different companies have different implementations.

One of my quibbles with the patent's Claim 1 is that it doesn't describe the situation in which the e-book itself is pre-encrypted, and the only thing that happens at the time of purchase is encrypting the book's decryption key. That distinction could become a major issue in the lawsuit.

Another quibble is that the claim seems to require that the whole e-book be encrypted with a single key, which may not always be the case. The patent's specification does mention cases in which only a portion of the book is encrypted or decrypted; these mentions, though minor, may also prove significant.

Comments on Sandoval's article point out that e-books and e-book readers were on the market before the 1999 filing date of the Discovery patent application, but that doesn't mean that they used any of the methods described in the patent's claims. For example, they may not have encrypted the e-books. It's also possible that some of those older patent applications, going back to 1992, might establish an earlier priority date for the Discovery patent's claims, though that's less likely.

At any rate, I'll be keeping my eye on this one.

[admoore]

A patent lawsuit over a copyright protection scheme. Gets a bit crazy after a while.

[karpenterskids]

I'll be keeping my eye on this case...very interesting!

[-fjtorres-]

Its more than Sony and Adobe that are at risk with this patent claim; also Barnes&Noble, most of the big publishing houses, and pretty much every single online ebook vendor worldwide (most of which rely on either Amazon's Mobipocket, Adobe's adept DRM, or Microsoft's alternative) and the public libraries offering up DRM'ed ebooks could get slaughtered if Discovery gets to tax DRM use on ebooks.
Depending on the interpretations of the encryption/decryption claims pretty much every ebook reader could be affected.
Might be worth it for some enterprising investigator to look into the process at the Patent Office that led to the thing getting approved. Wouldn't be shock if some politician was involved in "nudging" the agency.

[TJ Spyke]

In 1999 the concept of "e-books" was still pretty new, so I am not shocked that they got the patent.

[SantaFeDave]

Once again the Patent Office screws up and another patent approved that shouldn't have been. In my past our small company had to fight an infringement suit over software we had developed and used for years before some sleazey lawyers patented the process. They never produced anything but a patent and should never have been granted a patent. We won, but it cost us. This seems the same story. Companies are patenting ideas all day long waiting to sue other companies that actually produce a product. Something has to change in this process. Now we will probably see the price of ebooks rise to pay Discover undeserved royalties and possibly kill a fledgling business. Why didn't they bring this suit before ebook readers actually started becoming popular? I don't really have to answer that, do I? We all know. Courts should have the power to throw out such suits when it's obvious they have waited until they could make a lot of money from the suit (and others' hard wok) and didn't care about the infringement until then. Then the patents should be rescinded.

[Peter Glaskowsky]

No, it doesn't work that way. Unless you can point to invalidating prior art, you're just leaping to a conclusion. Discovery's patent certainly describes in great detail how to design and operate secure e-book readers. The political purpose of the patent system is to encourage inventors to publish their ideas in return for legal protection. If this patent is valid and Amazon is infringing it-- and I don't know if that's true-- it's entirely appropriate for Discovery to file this suit. This is exactly the purpose of the patent system.

[highfreq]

Continuation and divisional applications are always given the priority of their parent. It is only the first link in the chain, a continuation-in-part, where there is a question. The prior art would have to at very least predate the 1993 application.

It does show that even with continuations expiring 20 years from the earliest application, there is still room for some pretty effective submarine patenting, especially with the pace of modern technology.

[Peter Glaskowsky]

Hmm. Is that right? I was taught that in a CIP, there's both old material and new material. If a claim is supported by the old material, it gets the older priority date. All we know for sure is that the 1999 filing must have supported these claims. Whether they're supported by the 1992 filing is, I think, an open question, and since that filing was apparently for a very different kind of thing, I doubt it's relevant here.

[gjl229]

Maybe it's time to turn to another model: loser pays winner's legal costs in the event that the case is settled by judicial or administrative (Patent Office) decision. This would discourage some small businesses from taking legal action but would certainly encourage others who don't have the deep pockets to persist even when they're certain they will eventually prevail.

I may have missed something here. Anyone?

[jc364]

Because the Kindle looks so much like Discovery's e-book reader... Oh wait, does Discovery even have an e-book reader? Come on, this patent was filed 10 years ago. If Discovery had a working model on the market already, I could understand this lawsuit. But as it stands now, this case is just another example of how our patent system is in need of a serious overhaul.

[v6789]

From the perspective of a patent lawyer, much of what you have written is inaccurate. For example, let's go right to what you said at the top of this article:

"I read through this patent in some detail, and honestly, it looks formidable. It was filed in 1999 as a "continuation in part" from patent applications dating back to 1992. Among the prior-art disclosures listed are 52 U.S. patents or applications, 34 foreign patents or applications, and 15 nonpatent publications. It has 171 claims, three of which are independent. Those are all signs of a strong patent."

Er. One cannot make such conclusions on those basis.

"The real issue here isn't so much whether this method is or isn't obvious; I think it is. It's that the patent has been examined in light of so much prior art that it has acquired a reasonable presumption of novelty and nonobviousness. Amazon would find it very difficult to say anything in the listed prior art invalidates this patent because the Patent Office has already said it doesn't."

Also wrong. It is evident that you have no idea what makes a patent obvious nor non-obvious, or for that matter novel. It is often the situation that a patent is found anticipated or obvious as a result of one or more of the prior art listed in the patent itself.

[Peter N. Glaskowsky]

You're a patent lawyer? Really?

Really?

First, I said "signs of". That isn't exactly "conclusive".

And you're just plain wrong about the significance of prior art cited in a patent application. The fact that it's there shows that the examiner believes it doesn't invalidate the granted claims. Yes, that isn't conclusive either, but it certainly does raise the bar for later challenges.

[krosafcheg]

"...creating a list of titles of available electronic books;" FTW? You can get a patent for making a fregging list? This is insane!

If Discovery wants a patent on their encryption method, I'm willing to entertain the possibly of patenting an algorithm. If they are looking for a patent on how they transmit the data to the e-book, I'm willing to consider a protocol patent.

But this looks like another business model masquerading as a patent to me (probably, to Amazon, to. Didn't they try to patent "Buy it now with One-Click"?)

To return to my original point? Getting a patent for making a list? Do they also check it twice? Sounds like prior art to me!

[TJ Spyke]

Amazon didn't "try" to patent the 1-click system. They got the patent in September 1999 and have licensed it to companies like Barnes and Noble and Apple. Also, creating a list of books is only part of the process. That alone can't be patented, it's the whole process put together which is patented.

[daveshax]

Isn't it awful when people patent ideas before they're able to make them?

Amazon did the work here, they actually MADE a device that did it. Unless Discovery can show they were working on something, it should be thrown out.

Patent trolls. Grr.

[Peter N. Glaskowsky]

An invention is not, in fact, patentable unless the applicant can describe how to practice the invention. If I describe a really cool automobile based on anti-gravity rays, I still can't get the patent.

Contrary to your claim here, every step in the Discovery patent claims was fully practical in the year the patent was applied for.

If you believe that nobody should be able to get a patent without actually building and selling a product, you are effectively arguing that big businesses should get all the good patents, and individual inventors should get nothing.

That's not only contrary to the Constitutional justification for the patent system, it's just plain dumb.