Patent Law

27

By Gary Odom and Jordan Kuhn

Gary Odom was a software developer for 20 years, and had some patentable ideas beginning in the late 1980s, but lacked the resources to patent them. When he got a chance to work in the patent field, he jumped on it. Months after going to work for a patent boutique in Portland Oregon, he started filing, pro se, patents of his own inventions, starting with modular software construction, then web personalization. Looks like his third patent family might worth something. Odom invented active tool groups, which Microsoft popularized with its Office 2007 Ribbon. In an ongoing licensing campaign, having previously filed suit against Microsoft and Autodesk, today Odom filed against 27 other infringers.

Old-style toolbars had a listing of tools. There was the appearance of grouping, but that was only cosmetic: vertical separator bars between groupings. Active tool groups (e.g. 7,363,592) is the concept of making a toolbar group of tools an operational entity unto itself.

The most common usage, as in the Microsoft Office 2007 Ribbon, is a button to show more tools for a tool group. Autodesk infringes even more claims, by dragging and dropping tool groups.

All kinds of toolbar configurations were in the prior art before '592, including tabbed and stacked toolbars, which is what the Ribbon is. But no one had considered making toolbar tool groups functional before Odom.

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 27 sued today include GE Fanuc, BAE, Siemens, Attachmate, and Mindjet. Many infringers are CAD and draw program vendors, where lots of tools are used, so active tool groups is especially helpful.

As Patent Prospector readers already know, this entry is first person, written in the third person, as Gary Odom is aka Patent Hawk, patent technical consultant. Prior art search is Odom's bread-and-butter business, and his practical knowledge of case law and the patent business is extensive.

Odom seeks a reasonable royalty, and is optimistic that many of the less pig-headed parties will come to realize that fighting this one is a losing game. Odom:

The patent is solid, and the idea was a bit ahead of its time. To my knowledge, the next time the concept was put before the patent office was when Microsoft filed a patent in 2004 for its Ribbon, claiming active tool groups, three-and-a-half years after Odom.

All the work on these litigations is in the can, including claim construction, and compelling counter-arguments against the inevitable invalidity defenses. Calling me confident on this one would be an understatement.

As Patent Hawk, I've worked in patent litigations nearly a decade now, and am a patent validity specialist. I couldn't have stayed in business as long as I have, with a small clientele of repeat business for litigations, if I were not very good at what I do.

By reputation, Judge Mossman in Portland is a smart judge, very well respected. I seriously doubt smoke-and-mirror arguments are going to work here. After all, this is a simple patent, the claims are readily understood, and very visible. No abstraction whatsoever. It's the perfect kind of patent case to take before a jury.

I have a licensing program in place. I'm looking forward to talking with each of the parties, and being equitable in consideration of how extensively they use the claimed invention, and what constitutes a reasonable royalty with all due respect to the long-standing Georgia-Pacific factors and the commonly applied Goldscheider 25% rule.

I solicit any potentially infringing company out there to contact me or my attorneys to begin licensing negotiations. It may potentially save them a lot of headache and money to take a license.

If I'm contacted by a company and they don't infringe, I'll tell them straight out that they don't need a license. In this campaign, I've looked at many companies with the Ribbon interface that don't infringe, or appear so small, mom-and-pop operations, that a patent license could be a serious bite into their livelihood. Those folks are off my radar. For me, being appropriate in asserting patent rights is the right way to be.

Full post as published by The Patent Prospector on April 17, 2009 (boomark / email).