One sometimes wonders what the US Patent Office is thinking when it issues patents. There have recently been two US patent cases that demonstrate this clearly. A small Missouri company, On Demand Machine Corporation (ODMC), secured a patent entitled "System and method of manufacturing a single book copy" and promptly sued Lightning Source, probably the largest on-demand publisher of books, its parent company Ingram, and giant Internet bookseller Amazon.

ODMC never even brought its product to market. Yet on March 3, it was awarded a $15m judgment by a federal jury. At the time, Harvey Ross, who secured the patent, was deceased, and the patent was reportedly the only remaining asset of the company. According to an AP report, Ross' idea was that a customer could enter a bookstore kiosk, key a book title into a computer and access a synopsis, sales and other consumer information before clicking on a command that would produce a printed, bound and covered book within minutes.

The defendants appealed the decision, and Lightning Source continued to ply its trade, approaching the cumulative publication of 25m on-demand books since it opened its doors. On 31 March, the lower court decision was overturned. A telling line in the decision was this: "No reasonable jury could find infringement on the correct claim construction." This leaves further appeal activity in serious doubt.

The second patent case was filed by RR Donnelley on 17 January, claiming that Creo and Quark infringed on four RR Donnelley patents in the area of digital print processes. More specifically, two patents relate to assembly of books by specifying pagination information, including an indication of whether a page is to be selectively included in a book, and two patents specifying an apparatus and method for reproducing master and variable information, including variable graphics information, on a display device such as a computer network or a printer, using templates. Examining the patent filings reveals a methodology that is probably being used by just about everyone doing variable data printing, and the ramifications could be large if RR Donnelley wins this suit.

ODMC was a small company with few resources. Although it won the first round, it lost the battle in the end. The damage on this one was relatively limited. The RR Donnelley story might be different ... the $8bn printing giant has the resources to see this through, and while Quark might struggle a bit with resources, Creo, now owned by Kodak, certainly has the resources to fight the battle. While it is important for companies to protect their intellectual property, it seems to me that the US Patent Office should seriously rethink its patent granting process.

Cary Sherburne
Senior editor
WhatTheyThink.com
cary@sherburneassociates.com