Patent Hawk's Wings Clipped; Editable Toolbar Patent Is Invalid

from the too-bad,-so-sad dept

A couple of years ago, we wrote about a patent infringement lawsuit filed by a guy named Gary Odom, who is better known in the patent blogging world as the Patent Hawk. He's an... aggressive supporter of all things patent, and has a way with words, often shown off in his inimical insult-to-backuppable-statement ratio, seen at times here in the Techdirt comments. The "patent" (7,363,592) was on editable toolbars in software. What's amusing in our post on the initial lawsuit is to see the usual crew of defenders insisting that the patent likely is valid, in part because of Odom's job as a prior art searcher, suggesting he would clearly know of any prior art that would invalidate the patent. We were also told that Odom's "expertise" on the subject was something we should learn from. A few months later, Odom used the same patent to sue 28 more companies.

Odom also talked a big, big game about the lawsuits and the patents (referring to himself in the third person!) on his own website:

Odom thoroughly searched the prior art before asserting his tool groups patent. He's filed accelerated examination (AE) continuations. AE requires a fairly exhaustive search of the prior art, and identification of how the claims are supported in the specification, as well as mapping the closest prior art to the claims.

Odom filed '592 in late 2000. Seven years later active tool groups burst into the commercial marketplace, introduced, and actively promoted, by Microsoft. It has spread like wildfire as a new user interface standard. Belated infringement coupled with commercial success is itself an indicator of non-obviousness.

As an aside, punters, who have commented that Odom's claims are Bilskied out, don't know what they are talking about. The CAFC has been concerned about overreaching business method patents. Bilski required, for software patents, that claims transform the subject matter, and have tangibility (according to one interpretation), i.e., representational of non-computer existence. Odom's tool groups are like containers in a toolbox, and his claims alter the condition of those groups.

The case took a weird turn when Microsoft first countersued Odom, pointing out that he had been working under contract for Microsoft at the time he filed the patents, and his contract stipulated that he wouldn't file for certain patents or file patent infringement claims against Microsoft.

Odom also made fun of reporter Joe Mullin's reporting on that twist in the case, but then quickly deleted his post, though it was preserved elsewhere. The response showed the level of cocky attitude we've come to expect from Odom, in which he insisted that "there is drama afoot in this case," and that "time will tell whose hands are clean."

I don't know exactly whose hands are clean, but I am pretty sure that Odom has now lost this case badly. We had seen the news a few months back about how first Odom's attempt to file the case in East Texas (despite living in Oregon and Microsoft being in nearby Seattle) failed as the case was shifted to Oregon. Then we saw how Odom's own lawyer had tried to get out of the case, and Odom tried to prevent him from doing so. Later, after the lawyer was allowed off the case, and Odom couldn't find anyone else willing to take the case (odd if the case were really strong), he finally decided to drop it. Of course, Microsoft had already filed the counterclaims, and the court went forward on that... and didn't just rule that Microsoft didn't infringe, it invalidated Odom's patent as (oops!) having prior art that made the claims obvious to those skilled in the art. In fact, the court seemed to find the "obviousness" of the patent... well... quite obvious:

However, the court held that the asserted claims presented “one of the clearest” cases of obviousness that had come before it because Odom had simply “cob-bled together various pieces of what was already out there in a manner . . . that would have been obvious to anyone skilled in the art at the time of the invention.”

Odom appealed, challenging the claim construction, the question of whether or not Microsoft infringed and about the invalidity of his own patent. He also claimed that the district court was "biased" against him. The Federal Circuit appeals court (CAFC) has now ruled and once again rejected the claims of our friendly Patent Hawk (pdf, found via Mike Wokasch).

The court goes through a discussion on the obviousness of editable toolbars... which should drive any real programmer nuts. The fact that lawyers and a court had to waste all this time debating the patentability of editable toolbars is just crazy. The key point, however, is that there was a previous patent that more or less beat Odom to the punch on pretty much everything in his patent. That's extremely embarrassing for Odom, since his entire job is supposedly his ability to find prior art for people. If he can't do it for himself...

Those same concepts are claimed in the ’592 patent except that the groups of tools are on a single toolbar. That is an insignificant advance over Kavalam. KSR Int’l Co., 550 U.S. at 417 (“If a person of ordinary skill can implement a predictable variation [of a prior art work], § 103 likely bars its patentability.”). Kavalam explains that although its invention has been described in the context of a web browser, employing collections of buttons and toolbars that are relevant to that application, a person of skill in the art would appreciate that the inven-tion can be adopted to other applications where a different arrangement or combination of tools may be desired. Kavalam, col.15, l.63–col.16, l.12. The district court thus did not err in determining that the manner in which ’592 patent divides up toolbars into groups and claims manipu-lation of tool groups would have been a common sense variation of Kavalam for a person of skill in the art. Likewise, it would have also been a trivial change for a person of skill in the art designing such alterable tool groups to add an indicator that could indicate any altered condition of the tool group.

The court then, piece by piece, dismantles the claim of "judicial bias" that Odom made, as it finds no such evidence. All of this couldn't have happened to a nicer guy, really.

Filed Under: gary odom, patent, patent hawk, toolbar

Patent Hawk Files Supreme Court Brief On Behalf Of All Oregon; Oregon Officials Say 'Who?'

from the good-work! dept

You may recall that a guy named Gary Odom, who refers to himself often in the third person as "Patent Hawk," has been known to stop by here every so often to insult us without ever, you know, backing up a point. His day job is helping companies do patent/prior art searches. Last year, he made a bit of news by suing Microsoft for a patent he held on "editable toolbars" (exciting stuff). Microsoft later accused him of violating a contract, in that Odom (whoops) had worked for Microsoft, and had an agreement about not filing for certain types of patents, or asserting them against Microsoft.

Now, with the Supreme Court agreeing to hear the Bilski case, which could have a big impact on the patentability of software and business models, a bunch of folks have been dutifully filing their amici briefs attempting to convince the Supreme Court one way or the other. These latest briefs more or less reflect what was in the original briefs filed prior to the CAFC ruling. Still, there was one interesting one: Odom and a buddy filed their own brief (which Odom, again in the third person praised his own brief as being "cogently potent in its brevity and conservatism" -- nothing like patting oneself on the back).

The brief itself is fine (though I believe a bit misleading in what it leaves out... but that's what these briefs tend to do). However, what stood out, was the odd claim on the brief that it was filed on behalf of the State of Oregon (where Odom resides). That's quite a claim... and it appears the State of Oregon, in the form of its Attorney General, doesn't agree with Odom that this represents the state:

Tony Green, a spokesman for the Oregon Attorney General, said no one in his office had heard of Odom's purported statewide representation before [Joe Mullin at The Prior Art] called. "It is our preference that people accurately convey who they're writing an amicus brief on behalf of," says Green. "We neither authorized this or had any knowledge of it."

Of course, Green also points out that the Supreme Court figured out that Odom's claim to represent the State of Oregon was backed up with about as much weight as his typical insults, and properly filed the brief as just being from Odom and his friend, rather than the state of Oregon.

Filed Under: bilski, gary odom, oregon, patent hawk

Did Patent Hawk Violate Contracts In Suing Microsoft?

from the integrity? dept

During the summer, we wrote about how Gary Odom, perhaps better known as The Patent Hawk for his patent consulting business, had sued Microsoft over a patent on user-configurable toolbars. Odom has been known to comment here, using a style all-too common among some of our critics: insult liberally while refusing to offer any actual points. Joe Mullin has turned up a lot more details on this particular case, including the fact that not only was Microsoft a former client of Odom, but as part of his contract he promised not to file for certain patents himself or file patent infringement lawsuits against the company. On top of that, while working for Microsoft, he had access to confidential Microsoft info, including the company's patent strategy.

Odom, not surprisingly, disputes Microsoft's version of the events -- and points out that whatever contracts he signed are no longer relevant, since he has not worked with Microsoft in years. However, there are some questions concerning when he filed this particular patent, and whether or not he disclosed that activity to Microsoft or the law firm that he worked for during some of this period. Interestingly, Odom also is perfectly happy to admit that he thinks Microsoft came up with their toolbar version totally independently (which, again, some of us believe should be proof of obviousness).

Even if we grant Odom's version of the story, you have to wonder if the long-term results of this case will come back to haunt him. Given the facts laid out here, I would think that an awful lot of companies that might use Odom's services as a patent researcher will now be rethinking him as a potential consultant.

Filed Under: contracts, greg odom, patent hawk, patents
Companies: microsoft, patent hawk

Microsoft Sued Over User Editable Toolbar Patent

from the don't-bother-creating-software,-you'll-just-get-sued dept

If you follow the patent world, you know of Gary Odom, who is known as The Patent Hawk. To say he's a big supporter of the patent system would be something of an understatement. He's been known to comment here on occasion, employing the style seen all-too-often among patent system apologists commenting on Techdirt posts: insult repeatedly and broadly, offer no actual points, refuse to actually counter anything we say, provide absolutely no evidence and (for good measure) insult again. However, as reader Jon has pointed out to us, Odom recently received a new patent (he's got a bunch) on tool group manipulations and he's now suing Microsoft for the way its toolbars work in Office 2007.

I won't comment on the patent itself and whether or not its obvious -- read the claims and judge for yourself. However, I will question just what sort of patent system we've created when simply putting a toolbar in your software that can be changed and manipulated by the end user can get you sued for patent infringement. With patents and lawsuits like this flying by every day, it almost seems as if software companies are better off not doing any actual innovation, because it's only likely to get them sued. Have an idea on how to make a toolbar function better? Don't bother unless you're willing to pay a tax. At some point you have just sit back and look at the system as a whole and wonder how we got from the vision of Thomas Jefferson to here.

Filed Under: editable toolbar, gary odom, microsoft office, patent hawk, patents, toolbar
Companies: microsoft