On May 13, 2011, developers of iOS apps began reporting receipt of demand letters via FedEx related to the use of in-app purchase in their apps.  James Thomson, developer of DragThing and PCalc, and Patrick McCarron, developer of MobileAge apps, are amongst them.

Based on the small amount of information available, this appears to be another case where a patent holder is using a joint or contributory infringement theory combining the iOS developer's app, iOS, and Apple's processes.  H-W Technologies filed suit against Apple and 31 others, mostly providers of apps, since the iPhone itself would not meet all of the limitations of the patent claims.

 

According to Gigaom:

The company behind the patent suit threats is apparently Lodsys, a patent holding firm which has held patent no. 7222078 (the one which is claimed to have been violated) since 2004. Lodsys cited the same patent, along with several others, when it filed suit against a number of major printer companies in early 2011, according to MacRumors.

US7,222,078 has a curious pedigree:

 

Continuation of application No. 09/370,663, filed on Aug. 6, 1999, now abandoned, which is a continuation of application No. 08/934,457, filed on Sep. 19, 1997, now Pat. No. 5,999,908, which is a continuation of application No. 08/243,638, filed on May 16, 1994, now abandoned, which is a continuation-in-part of application No. 07/926,333, filed on Aug. 6, 1992, now abandoned.

 

The patent was assigned from Daniel H. Abelow to Ferrara Ethereal, LLC on 12/10/2004, then to Webvention LLC 11/16/2009, then to Lodsys, LLC on 8/31/2010. [USPTO PAIR]  Nilay Patel reports that Ferrara Ethereal is an Intellectual Ventures shell company.

Coincidentally, Sterne Kessler, a firm listed on many Apple patents, handled prosecution.

Claim 1 of US7,222,078:

 

1. A system comprising:

• units of a commodity that can be used by respective users in different locations,
• a user interface, which is part of each of the units of the commodity, configured to provide a medium for two-way local interaction between one of the users and the corresponding unit of the commodity, and further configured to elicit, from a user, information about the user's perception of the commodity,
• a memory within each of the units of the commodity capable of storing results of the two-way local interaction, the results including elicited information about user perception of the commodity,
• a communication element associated with each of the units of the commodity capable of carrying results of the two-way local interaction from each of the units of the commodity to a central location, and
• a component capable of managing the interactions of the users in different locations and collecting the results of the interactions at the central location.

 

 

Figure 2 from US7,222,078.  The relation to in-app purchase within an RPN calculator app is not quite apparent.

 

Note: This post was delayed due to the extended blogger.com outage

 

Related Coverage:

• Lodsys: Mark Small, Champion of Invention?
• Lodsys v. Apple Devs: The First Social Patent Defense?
• Lodsys v. Apple Devs: FUD for the App Store Era?
• Lodsys Targets Small iOS Developers
• H-W v. Apple: Read the Claims, Not the Complaint
• H-W v. Apple et al. NDTX

The characterization of a patent's coverage in a Complaint is not always representative of the final reality of the issued patent.

As I mentioned in an update to my previous post, the complaint in the NDTX H-W v. Apple (+ 31 others) case is a bit loose in its description of the invention covered by the '955 patent.

The complaint:

The ‘955 Patent is generally directed to novel, unique and non-obvious systems and methods of using a multi-convergence device, including phones commonly referred to as “smartphones”, which are able to converge voice and data within a single terminal, and which allow users of such devices via domain specific applications to receive information and offers from merchants and to complete a transaction with one of said merchants without having to generate a voice call.

Setting aside whether smartphones were contemplated or are covered, that leaves out some very important claim limitations that were added by Examiner's amendment after an interview with prosecuting attorney Ruben DeLeon on 9/8/2008.

The actual published method claim, like the other independent claims, is far narrower, with the last amendments shown in bold:

9. A method for performing contextual searches on an Internet Phone (IP) phone comprising the steps of:

• receiving a command to perform a contextual search;

• receiving search criteria from a user of said IP phone;

• submitting said search criteria to a server coupled to said IP phone; and

• receiving from said server a list of merchants matching said search criteria and information regarding each of said merchants in said list;

• wherein said information received by said user comprises a variety of offers, wherein said user selects one of said variety of offers associated with said one of said merchants listed, wherein said selected offer is transmitted to said one of said merchants listed electronically; and

• wherein said user's contact and payment information is not transmitted to said one of said merchants listed, wherein said user's contact and payment information is available to said one of said merchants listed.

This is far different than simply completing a transaction without a phone call.

Always read the claims.

 

Note: The clause "wherein said user completes a transaction with at least one of said merchants listed without the need to generate a voice call," strangely enough, appears to have been lost in a clerical error in between the Examiner's amendment of prosecution claim 12 and its publication as published claim 9.

 

Source: 11/082/361 File History and Interview Summary of 08 September 2008.