Gary Odom v. Microsoft (Fed. Cir. 2011)
Gary Odom runs his own patent search firm as well as his own patent law blog – the Patent Prospector – where he provides piquant comments on patent law and practice. Odom is also a patent holder. His Patent No. 7,363,592 is directed toward a modification of the “toolbar” and “tool groups” that are familiar aspects of most computer software displays.
At their broadest, the claims are directed to a method of (1) first displaying a toolbar made up of a set of tool groups with user-manipulable dividers located at the ends of the groups; and then (2) changing the position of the dividers based upon user input.
Odom filed for patent protection in 2000. In 2008, Odom sued Microsoft, arguing that the new “Ribbon” of Office 2007 infringed upon the patent. On summary judgment, the Oregon district court held the asserted claims (1) invalid as obvious and (2) not infringed either literally or under the doctrine of equivalents.
The district court based its obviousness holding on the conclusion that Odom had merely “cobbled 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.” On appeal, the Federal Circuit affirmed.
The obviousness analysis began with Microsoft’s previously filed patent directed to a “composite toolbar” that can be manipulated by a user. (Patent No. 6,057,836 to Kavalam, et al.). The Kavalam patent provides a mechanism for users to re-size toolbar groups. The appellate panel found only one difference between Kavalam’s disclosure and Odom’s claim — that Odom’s tool groups “are on a single toolbar.” However, the court found that difference merely “an insignificant advance over Kavalam.” The court went on to hold that the “weak” secondary considerations presented by Odom could not overcome “strong prima facie” evidence of obviousness.
Considered by the Examiner? Odom’s patent at issue in this case issued as a continuation. In the parent case, Odom had submitted the Kavalam patent in an information disclosure statement and Kavalam is cited as one of 11 references considered by the examiner. The same USPTO examiner worked on both the original and the continuation. However, Odom did not re-submit the Kavalam patent as material art (nor did he submit any other references) in the continuation case and the new patent cites only one reference on its face. As David Jaglowski notes in the comments below, the MPEP indicates that the patent examiner is supposed to review and consider all information that had been filed in any parent application. M.P.E.P. Section 609.02.
The examiner will consider information which has been considered by the Office in a parent application when examining: (A) a continuation application filed under 37 CFR 1.53(b), (B) a divisional application filed under 37 CFR 1.53(b), or (C) a continuation-in-part application filed under 37 CFR 1.53(b). A listing of the information need not be resubmitted in the continuing application unless the applicant desires the information to be printed on the patent.
That rule of examination is followed by a subsequent admonition in M.P.E.P. Section 707.05: “In all continuation and continuation-in-part applications, the parent applications should be reviewed for pertinent prior art.” The actual rules of practice (37 C.F.R. 1.98) state that material must be resubmitted in a continuation unless the information was properly submitted in the prior application.
Whether the Kavalam patent was considered by the examiner is important because it relates to the the pending Supreme Court case of Microsoft v. i4i. In that case, the Supreme Court is likely to approve of some type of divided analysis between invalidity arguments previously considered by the examiner, and those not previously considered. In my estimation, however, the court is unlikely to spell out the dividing line of when an argument may be deemed to have been previously considered. I suspect that the situation presented here will likely fall on the side of not considered because, despite the rules, there appears to be no evidence that the examiner actually considered the reference in the continuation application. Of course that legal and factual conclusion may depend upon which panel of Federal Circuit judges is the first to decide the issue post-i4i. (Note – This issue is merely an aside for Odom’s case as the examiner’s consideration of the reference was not addressed by the Federal Circuit opinion.)
Judicial Bias: The Federal Circuit did address Odom’s argument regarding judicial bias by the Oregon court. Odom’s argument was based on the court’s rulings on Odom’s motion to strike; Odom’s motion to stay; Odom’s motion to block his (former) attorneys from withdrawing from the case; and by allowing Odom’s former attorneys to (allegedly) breach attorney-client privilege by talking with the judge. The Federal Circuit rejected all of those arguments as lacking merit.