Internet & Social Media Law Blog

Th US Supreme Court issued a ruling today that overruled a relatively narrow test adopted by the Court of Appeals for the Federal Circuit, known as the machine-or-transformation test. The Supreme Court found:
i) The machine-or-transformation test is not the sole test for patent eligibility under §101. The Court’s precedents establish that although that test may be a useful and important clue or investigative tool, it is not the sole test for deciding whether an invention is a patent-eligible “process” under §101;
ii) Section 101 similarly precludes a reading of the term “process” that would categorically exclude business methods. The term “method” within §100(b)’s “process” definition, at least as a textual matter and before other consulting other Patent Act limitations and this Court’s precedents, may include at least some methods of doing business; and
iii) because petitioners’ patent application can be rejected under the Court’s precedents on the unpatentability of abstract ideas, the Court need not define further what constitutes a patentable “process,” beyond pointing to the definition of that term provided in §100(b) and looking to the guideposts in Benson, Flook, and Diehr. Nothing in today’s opinion should be read as endorsing the Federal Circuit’s past interpretations of §101. See, e.g., State Street, 49 F. 3d, at 1373. The appeals court may have thought it needed to make the machine-or-transformation test exclusive precisely because its case law had not adequately identified less extreme means of restricting business method patents. In disapproving an exclusive machine-or-transformation test, this Court by no means desires to preclude the Federal Circuit’s development of other limiting criteria that further the Patent Act’s purposes and are not inconsistent with its text.

This is relevant to virtual worlds in that it expands the scope of patentable subject matter that can be protected for software based processes and the many novel business models that are emerging in virtual worlds, mirror worlds, augmented reality and other social media applications.

On June 15, 2010, Amazon was awarded U.S. Patent No. 7,739,139 entitled “Social Networking System.” Some have said this relates to fundamental aspects of “friending” and data sharing in social networks. If the patent is truly as broad as some say, what impact might this have on Facebook and other social networking sites?

Here is a copy of claim 1 to read for yourself:

1. A computer-implemented method, comprising:
receiving and storing personal data of a first user of a computer-based service, said computer-based service accessible to users over a network, said personal data specified by the first user;
providing a user interface for users to establish contact relationships with other users of the service such that each user can have one or more contacts, said user interface enabling a user to identify other users of the service, and to selectively initiate the generation of requests to establish contact relationships with the identified users;
receiving a request from a second user of the service to establish a contact relationship with the first user, said request submitted to the service over a network via said user interface;
sending a notification of the request to the first user over a network;
providing an option, in connection with said request, for the first user to grant permission for the second user to view at least some of the personal data of the first user; and
in response to the first user granting said permission, providing the second user access to at least some of the personal data of the first user via a contact information user interface of the service, such that the second user is provided access to data that would not otherwise be accessible to the second user via the service;
wherein the method, including receiving and storing the personal data, providing the user interface, receiving the request, sending the notification, providing said option, and providing the second user access, is performed by a server computer system.

As such, the ‘139 Patent appears to be related to invitations between users that establish a contact relationship in which an invitation also includes an option that is selectable by a receiving user to provide enhanced access to personal information of the receiving user for a requesting user.

An obvious question that people ask whenever an apparently broad patent is issued is whether the patent is valid. The Amazon patent is part of a chain of applications and patents dating back to 1997. These patents include U.S. Patent No. 7,386,464 (“the ‘464 Patent”) entitled “Network-Based Crossing Paths Notification Service”, U.S. Patent No. 7,194,419 (“the ‘419 Patent”) entitled “Network-Based Personal Contact Manager And Associated Methods”, U.S. Patent No. 6,714,916 (“the ‘916 Patent”) entitled “Crossing Paths Notification Service”, and U.S. Patent No. 6,269,369 entitled “Networked Personal Contact Manager”. The chain also includes two pending U.S. patent applications that have not yet been examined substantively by the U.S. Patent and Trademark Office. These applications have been published as U.S. Patent Application Publication No. 2009/0282120 (“the ‘120 Publication”) entitled “Social Networking System”, and U.S. Patent Application Publication No. 2009/0282121 (“the ‘120 Publication”) entitled “Social Networking System”. The patents and applications in this chain generally describe many features of social interactive media that are now common. Some of these features include:automatically proposing meetings for contacts based on travel plans and/or home locations; presenting users with other users they may be interested in forming contact relationships (based, e.g., on contacts in common, affiliation with common organizations, and/or other parameters); and controlling the types of personal information to which individual contacts have access.

Many argue that “software patents” describing systems and methods such as the ones described in the Amazon family of patents are not practical because this technology moves too quickly. This family of Amazon patents demonstrates how timely filing of patent applications early on in the development of a technology can continue to bare fruit that is relevant to ongoing technological developments for over a decade after the original filing.

As yet, Amazon has not brought any law suits based on this family of patents. Pillsbury’s Virtual Worlds and Video Game team has previously prepared an article that discusses some of the reasons a portfolio like this one can be valuable to a company even if they are not used to bring law suits for patent infringement, a copy of which can be found here.