Amazon Did Not Infringe Patent for Computerized On-Demand, Retail, Single Copy Book Printing

Case: On Demand Machine Corp. v. Ingram Industries, Inc., Lightning Source and Amazon, No. 05-1074, 05-1075, 05-1100 (Fed Cir. 3/31/06)

The One Sentence Summary: A patent for providing computers to customers who could select and print single copies of books in a retail setting could not be interpreted to bar Amazon from providing book information over the Internet that was used to order books, even if those books might be printed on demand.


What They Were Fighting About: Plaintiffs had a patent for providing customers with computers with book sales information allowing the customer to select a book that would be printed on site. Lightning Books sometimes printed single copies ordered by customers of Amazon. A jury found against defendants.

Federal Circuit Holdings:

• The district court erred in construing a claim limitation requiring that "sales information" about the book should be provided. The specification made clear that "sales information" was more than just identifying information, but was rather promotional information that helped a customer choose a book. Because the book printer used by Amazon, Lightning, did not receive any promotional "sales information" in printing the book, a jury could not find infringement under the correct claim construction.
• The district court erred in not limiting the term "customer" to a customer at a retail store when the specification clearly used the term in this context.
• Defendants did not provide computers to customers for reviewing book information. Amazon's providing of information about books was not the same as providing a computer at a retail outlet.
• The district court erred in construing the claim phrase "printing on paper pages" to include a factory process where printing occurs on large sheets that are later cut into pages.
• A preamble limited the claim to high speed manufacture of a single copy of a book after a customer selects it.
• The individual phrases of the claim must be interpreted together in the context of the overall invention described in the specification.
• Joint infringement could not be found even though Amazon provided information to customers who could select books that might be printed as single copies. The invention was providing computers for customers to select books and have them printed rapidly on site, not for delivery a week later.
• The district court had authority to deny an injunction and rather award future royalties, but that issue was not considered because it was moot in light of the panel's finding of non-infringement.