Odom v. Microsoft (Fed. Cir. 2011)
By Dennis Crouch
I previously wrote about the Federal Circuit affirmation of the lower court's summary judgment ruling that Odom's claims are obvious when judged against a single prior art patent.
The prior art patent in this case is Patent No. 6,057,836 and is owned by the defendant, Microsoft. The inventors on Microsoft's '836 patent include Jude Kavalam (now CTO at Spoken Communications), Christopher Brown
(now CTO at Opscode) and Jeff Bogdon (named inventor on 25+ patents). The '836 patent provides a mechanism for users to re-size toolbar groups and has a number of similarities to the invention that Odom claimed in his patent and the appellate panel identified the advances offered by Odom as “insignificant.” Odom has now petitioned the Federal Circuit for a rehearing.
An interesting aspect of this set-up is the way that Microsoft used its patent as a priority document to help establish its freedom to operate rather than as intellectual property per se. Microsoft could have achieved the same results by simply publishing its prior invention. Likewise, in the US, Microsoft could have relied on its prior-inventor rights under 35 U.S.C. 102(g). However, the patent-as-prior-art approach has a number of advantages over these alternatives. Of course, alternative approaches are not mutually exclusive and instead can each be part of a layered strategy of protection.
Creating Prior Art - Patent versus Publish: Under 35 U.S.C. 102(a) & (b), any prior publication has the same weight as a prior patent or published patent application. An issued patent additionally offers intellectual property rights. However, even apart from those IP rights, there are several reasons why a company may choose to file for patent rights when attempting to create prior art to forestall infringement litigation. First, because a patent application will be considered prior art as of the date of filing (once published or patented) under 35 U.S.C. 102(e), the company can establish a prior art priority date without actually publicly disclosing the invention for at least 18 months. This delay in publication will often be seen as valuable. The patent approach also comes with a guarantee that the document will qualify as prior art as of a specific, known date — as opposed to a non-patent publication that will be judged and timed according to the sufficiency of distribution or indexing. In addition, the patent rules force a more complete disclosure and therefore may result in better documentation of the invention and a broader scope of disclosure than what would have been otherwise published. Finally, a patent may well provide a sense of authority and an equitable claim-to-right that would not accompany a mere publication.
Creating Prior Art – Patent versus Prior Inventor Rights: In the US, a prior inventor can also invalidate a patent by proving prior invention under 35 U.S.C. 102(g). However, that approach is fraught with potential doctrinal difficulties and a patent disclosure offers a much cleaner mechanism. These difficulties may well have arisen in this case. For instance, Odom presented evidence of Microsoft's recognition that the Kavalam project was unable to achieve the the results claimed by Odom. And, several years later (well after Odom's priority date), Microsoft finally filed for patent protection on what is arguably Odom's invention — arguably recognizing that Odom's invention is distinct when compared with Kavalam. These facts suggest that perhaps Microsoft would not fare well in a 35 U.S.C. 102(g) argument. Adding to this difficulty is the extensive paper trail requirement for proving 35 U.S.C. 102(g).
Four Corners of the Prior Art?: The district and appellate court decisions considered the Kavalam patent on its face and did not bite on any of Odom's arguments regarding Microsoft's actual activities and admissions that could have limited the interpretation of the disclosure. This approach simplifies the analysis, but it is probably wrong once the case steps into the question of obviousness — especially when the alleged prior art was created by one of the parties to the lawsuit. In KSR v. Teleflex, the Supreme Court ordered that courts apply a flexible, common sense approach obviousness. Here, that guidance seems to mean that a court should consider extrinsic facts that tend to expand or limit the interpretation of the prior art reference.
- Odom's patent issued from a continuation application. Odom cited the Kavalam patent in the parent case, but did not re-submit the patent in the child case (examined by the same examiner) and the Kavalam patent is not listed on the face of the asserted patent. The Federal Circuit opinion implicitly suggests that this prior art was not considered by the examiner. Those who disagree may want to support the rehearing request.