Patently Challenging Road for Amazon

By all accounts, Amazon.com is an innovator. It pioneered online commerce in the 1990s and it was an early adopter of aggressive IP strategies, including the much maligned "one-click" patent, which was unsuccessfully enforced against Barnesandnoble.com in 2000 and is still suffering through reexamination at the request of a part time actor from New Zealand.

Recently, Amazon was back on the offensive, asserting several patents against The Discovery Channel's online store. But as the company continues to expand into neighboring areas, including the delivery of online content through its popular Kindle product, it is increasingly finding itself defending patent litigation.

Last month, Amazon was sued twice, once for patent infringement and again for copyright. The patent case was filed by Actus, LLC, a company claiming ownership of U.S. Patent No. 7,328,189 ("the '189 patent") entitled "Method and Apparatus for Conducting Electronic Commerce Transactions Using Electronic Tokens." In this case, Amazon is a co-defendant with its former patent-rival, Barnesandnoble.com. Other defendants include Apple, Ebay, US Bank, and American Express. The '189 patent allegedly covers "a mall service provider server that communicates with [a] first web server and the second web server to facilitate electronic commerce" all using "electronic tokens."

The copyright case was filed pro se, by an individual, Rene Carranza. Ms. Carranza alleges that Amazon infringed copyrighted sound recordings in a song entitled "Turnbando Muros." In this case, Amazon is co-defending with Universal Music Group and Walmart.

Overall, Amazon is defending 13 IP suits filed since January. Eleven out of 13 are for patent infringement. That surpasses the number of patent suits Amazon faced last year (7 cases total), and it is also larger than the number filed in 2006 and 2007 combined (6 in 2007 and 3 in 2006).

These numbers will tend to sharpen Amazon's voice in the current debate over patent reform. But this is really nothing new. Jeff Bezos, while directing a company that accumulated hundreds of software and business method patents in the late 1990s and since 2000, supported patent reform before it was popular.

It will be interesting to see how Amazon navigates the patently challenging road ahead. It will certainly continue to accumulate IP assets as it moves into other spaces. And it will no doubt continue to aggressively protect its core business, as evidenced by the dispute with the Discovery store. Its voice in the debate over patent reform should be informative because out of all of the reformers, it has the longest history in the movement. Moreover, it understands the need for strong patent laws that encourage innovation by providing incentives. At the same time, it is increasingly a target for infringement. Congress and the public will be well-served if they listen closely to what Amazon has to say about patent reform.

Here is a list of Amazon's IP suits filed since January.

May 26, 2009
Actus, LLC v. Amazon.com, Inc. et al, (TX Eastern) Judge Ward Patent

May 20, 2009
Rene Carranza v. Lideres Entertainment Group et al (CA Central) Judge Wu Copyrights

May 15, 2009
Amazon.com Inc v. Discovery Communications Inc (WA Western) Judge Lasnik Patent

May 12, 2009
API Technologies, LLC v. Facebook, Inc. et al (TX Eastern) Judge Ward
Patent

Tune Hunter Inc v. Samsung Telecommunications America LLC et al (TX Eastern) Judge Ward
Patent

April 6, 2009
Parallel Networks, LLC v. Amazon.com, Inc. et al (TX Eastern) Judge Davis Patent

March 25, 2009
TQP Development, LLC v. Barclays PLC et al (TX Eastern) Judge Ward
Patent

March 23, 2009
Video Professor, Inc. v. Amazon.com, Inc. (D. CO) Judge Blackburn

March 20, 2009
YIP (Winnie) v. HALLMARK GIFT LAND et al (D. NJ) Judge Hochberg
Patent

March 17, 2009
Discovery Communications Inc. v. Amazon.com Inc. (D. DE) Judge Robreno
Patent

The Tobin Family Education and Health Foundation et al v Amazon.Com, Inc.
(D. FL Middle) Unassigned Judge
Patent

February 19, 2009
Big Baboon Corporation v. Dell, Inc. (D. CA Central) Judge Wilson
Patent

Shifferaw v. EMSON USA et al (TX Eastern) Judge Ward
Patent

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