Amazon Patents Annotating Books, Digital Works

theodp writes "On Tuesday, the USPTO granted Amazon a patent on its Method and System for Providing Annotations of a Digital Work, which covers 'receiving an annotation of the digital work, storing the annotation, and providing the annotation to a user.' This includes annotations received in a graphical or handwriting format, as well as highlighting of text." I think I smell at least one example of prior art.

Comments

Okular Is Not the Best Example

[eldavojohn]

I think I smell at least one example of prior art.

Ughhhh, Unknown Lamer, you're making defend an Amazon patent. The earliest timestamp I can find for Okular is August 27th, 2006 while the patent in question was filed a year and a half earlier on January 19th, 2005. I'm not saying that there is no prior art, I'm just saying I couldn't find any hard evidence of Okular being conceived prior to Amazon's patent. Now I have to go take a shower ...

Re:Okular Is Not the Best Example

[GameboyRMH]

Yeah I would have mentioned the annotation features in Word, Excel and Adobe Reader.

Re:Okular Is Not the Best Example

[arth1]

Barnes & Noble should be able to squash this one.
Their Reader, formerly Fictionwise ereader, formerly Palm Reader, formerly PeanutPress has annotation with highlighting (on both DRM'ed and non-DRM'ed content).

I used it to annotate stuff back in the late 90s, and I still use it.

Bogus summary

[dtmos]

. . . which covers 'receiving an annotation of the digital work, storing the annotation, and providing the annotation to a user.'

No, it does not. It covers A PARTICULAR METHOD of 'receiving an annotation of the digital work, storing the annotation, and providing the annotation to a user.' Specifically,

A computer-implemented method for providing an annotation of a digital work, comprising:
--under control of instructions that are executed by one or more computing devices:
          --receiving multiple annotations from different authors for particular content in a digital work;
          --storing the annotations in association with the digital work;
          --providing a list of abbreviated versions of the annotations to a user desiring to access one or more of the annotations, wherein the list presents the annotations in an order determined by reference to a criterion;
          --receiving an authorization credential from a user desiring to access one or more of the annotations; and if the authorization credential is valid,
          --providing a full version of one or more of the annotations of the digital work to the user in context with regard to the digital work.

The patent covers a method that includes all five of the listed elements (receiving, storing, providing, etc.). Your favorite method must include all five of these elements, and be published before the filing date (19 January 2005) to be classified as disqualifying prior art. Not include one (or more) of these elements? Then it's not disqualifying prior art. (I'm speaking in generalities here, and ignoring other independent claims, apparatus claims, and lots of special cases. See your attorney if it matters to you.)

The Okular annotation method, while no doubt earlier and better in every way, seems not to include many of these elements, and so would not be disqualifying prior art.

Can we become better educated on patents -- maybe just a little -- so that we can not panic every time somebody patents something? By that I mean, can we start quoting Claim 1 in the summary, instead of the abstract?

I note in passing that the Patent Examiner reviewed (approximately; I counted by hand) 184 US patents and patent applications, 6 foreign patent documents, and 80 other references, looking for art, and that the examination process took more than seven years to complete. Whatever else one may say about this patent, it wasn't rubber-stamped.

Re:Bogus summary

[jabuzz]

Sure but it should have failed the "obvious to someone skilled in the art" test.

Re:Bogus summary

[betterunixthanunix]

Can we become better educated on patents -- maybe just a little

OK, let's start here:

http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2106_02.htm

Then here:

https://en.wikipedia.org/wiki/In_re_Bilski

Then here:

https://en.wikipedia.org/wiki/Church-turing_thesis

Then, if we are all still paying attention, we can ask how any software patent is valid.

Re:Bogus summary

[fuzzyfuzzyfungus]

It strikes me that the available prior art might hinge on whether you think that the distinction between the 'annotations' and the 'work' is terribly relevant(from the perspective of the patent, obviously the distinction between text and margin notes is relevant to the user).

If it is relevant, the only real possibilities are the document markup features in some of the PDF/publishing related stuff, or Office and similar.

If the distinction isn't materially relevant, practically any revision control system going back to the dark ages provides a superset of the features described:

Support for multiple users and multiple devices, with authentication and permissions? Check.

Stores 'annotations' in association with the digital work? Storing revision information in relation to the digital work being revised is only the entire point of revision control systems...(the revision control use case assumes that most changes checked in will be changes rather than comments; but, architecturally, comments and annotations are a proper subset of the sorts of revisions one can check in, and programmers certainly do check in code comments as well as changes to the 'work'

Provides abbreviated versions? Any of the 'friendly-display' mechanisms for a revision controlled repository will provide for some sort of 'here be diff by user Foo. click to expand?' function.

Access control? Yup, revision control systems do that as well, some only to file level of granularity, some more.

Provide full version of one or more annotations? Check out SVN checkout...

For my information(since I'm honestly not too much up on patents), does the expected use case of a tool count as a suitably weighty factor in determining validity? In this case, it is certainly fair to say that the expected use cases of Amazon's "digital margin notes" patent places it firmly in the same camp as other text annotation systems from Adobe, MS, and some more specialty vendors. Architecturally, though, the 'invention' is essentially 'partial re-implementation of a revision control system under the assumption that the base file(s) will always be treated as canonical, and the diffs as merely incidental'. Their implementation is likely to be a better fit than a straight revision control mechanism if you are, in fact, highlighting your way around an etext; but the underlying architecture will be equivalent to, or a mere subset of, revision control...

Re:Bogus summary

[Epimer]

I have to start with a disclaimer: it depends from jurisdiction to jurisdiction, and I'm much more familiar with European and UK standards of obviousness.

The brief answer is that there has been precedent to suggest that identifying a technical problem to solved can itself be inventive. Put very broadly, something like "I want to make product X be better" isn't an objective technical problem to be solved, it's a desired outcome. But identifying a way in which to make product X better, followed by a means to implement it, may be non-obvious. The larger contribution in that case might well have been the identification of the problem, but that itself could have been inventive ("inventive" and "non-obvious" are used more or less interchangeably).

My favourite example is the Anywayup Cup (Google it - also a great example of how patents can be enormously beneficial to the little guy). Anyone who's had a child (I'm told!) knows that kids spilling juice is a problem. The Anywayup Cup is a sippy-cup which, essentially, has a valve flush with the sipping portion. If you framed that problem as "I want a way to stop liquid from leaking out of the apperture in a sippy-cup" then that's an obvious solution. But that wasn't the objective technical problem to be solved; the problem to be solved was "I want a way to stop kids making a mess when drinking juice", and identifying the technical means to do so was the lion's part of the inventive step there.

(there was more to this particular case than that - for example, there's the "long-felt want" argument here, because kids making an unholy mess with juice isn't exactly a new problem, so why hadn't a solution been presented before? This is not enough to demonstrate inventiveness, but it may contribute depending on the circumstances.)

Both the UK and the European Patent Offices have pseudo-objective tests for assessing obviousness - the Pozzoli/Windsurfing test and the Problem and Solution approach, respectively. Common to both is ensuring that the problem to be solved is identified, the relevant skilled person is identified, and - arguably most importantly of all - the avoidance of hindsight. Nearly everything's obvious in hindsight.

Digital Handwriting?

[nurb432]

My newton did this decades ago.

If you want a more current example of handwritten annotation on existing PDF documents, look at the now defunct 'entourage' tablet products.

This Patent is About Receiving and Serving

[eldavojohn]

Yeah I would have mentioned the annotation features in Word, Excel and Adobe Reader.

Hmmm, I wasn't aware that these products allowed you to connect to a centralized server for storing/receiving annotations as far back as 2005. Are you sure you're not confusing the functionality to store them on the documents themselves? The first line of the patent summary reads:

Methods and systems for receiving and distributing annotations of a digital work include receiving an annotation of the digital work, storing the annotation, and providing the annotation to a user.

Emphasis mine. I remember being able to save notes and annotations on documents in Word but if those are changed or updated or added to, they wouldn't get these changes until they got my new version of the document.

Re:Does Prior Art Still Matter?

[Epimer]

NO!

This is another of those hugely common misconceptions on Slashdot around how patents work (right up there with what the term "prior art" actually means).

The only difference between a "first to file" and "first to invent" system is what happens when two (or more) parties come up with the same invention (near-)simultaneously. Under "first to invent", you would enter into costly interference proceedings and the rights would be awarded to the person who demonstrated that they were the first to conceive of an invention and reduce it to practice. This is not straightforward to do, and can be complicated by issues of due dilligence in reducing the idea to conception.

Under "first to file", you ignore that question and simply refer to who was the first person to file an application. Interference proceedings are gone.

It has ABSOLUTELY NO EFFECT on prior art; an invention must be new, involve an inventive step, not be excluded subject matter (although this is narrow in the US) and be capable of industrial applicability (very low threshold test, but mentioned for completeness' sake) to be patentable.