Odom v. Microsoft Corp. ( 2011 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
GARY ODOM,
Plaintiff-Appellant,
v.
MICROSOFT CORPORATION,
Defendant-Appellee.
__________________________
2011-1160
__________________________
Appeal from the United States District Court for the
District of Oregon in Case No. 09-CV-0230, Judge Michael
W. Mosman.
____________________________
Decided: May 4, 2011
____________________________
GARY ODOM, of Portland, Oregon, pro se.
JOSEPH A. MICALLEF, Arnold & Porter, LLP, of Wash-
ington, DC, for the defendant-appellee. On the brief were
MATTHEW N. BATHON and ERIC J. MCKEOWN. Of counsel
on the brief was ISABELLA FU, Microsoft Corporation, of
Redmond, Washington.
__________________________
ODOM v. MICROSOFT CORP 2
Before LOURIE, BRYSON, and LINN, Circuit Judges.
LOURIE, Circuit Judge.
Gary Odom appeals from the final judgment of the
United States District Court for the District of Oregon in
favor of Microsoft Corporation (“Microsoft”) finding cer-
tain claims of U.S. Patent 7,363,592 (the “’592 patent”) to
be invalid for obviousness and not infringed by Microsoft’s
software. Odom v. Microsoft Corp., No. 09-CV-0230, Dkt.
No. 211 (D. Or. Sept. 08, 2010) (“Final Judgment”).
Because we agree that the asserted claims of the patent in
suit would have been obvious to a person of ordinary skill
in the art at the time of filing, we affirm.
BACKGROUND
Odom owns the ’592 patent relating to a method for
manipulating groups of “tools” in “toolbars” found in
computer software applications. The asserted claims of
the ’592 patent, claims 8, 10 and 14, recite altering the
condition of a “tool group” based on user manipulation. A
toolbar in a computer software application generally
comprises buttons featuring icons that are commonly
recognized by a computer user as symbolizing various
tasks in the application. Toolbars are a standard feature
of software applications because they allow immediate
single-click access to commonly used features of the
application. ’592 patent, col.1, ll.29-40. Figures 4 and 5
from the ’592 patent depict a toolbar embodiment that
demonstrates the patented method.
3 ODOM v. MICROSOFT CORP
As can be seen, the toolbar is divided into groups,
with a “divider” separating each group. The invention
claimed in the ’592 patent basically relates to the ability
to use the divider to hide or display selected tools. For
example, Figure 5 shows how a divider has been moved to
hide the Undo (2u) and Delete (2d) tools of Figure 4. The
user is alerted to the hidden tools by the Compressed
Group Indicator (7) in Figure 5. Independent claim 8 is
representative of the patented invention:
8. A computer-implemented method comprising:
displaying a toolbar comprising at least one first
tool group,
wherein said first tool group comprises at least
one user-selectable tool,
wherein visibly designating said first tool group
by at least one user-manipulatable divider located
near at least one end of said first tool group,
ODOM v. MICROSOFT CORP 4
wherein said first tool group divider is visually
distinct from a said tool and from any visible
means for directly manipulating said toolbar in its
entirety, and
wherein said tool group divider is user-
manipulatable for altering the condition of said
tool group;
selecting said first tool group;
interactively tracking user indication of move-
ment related to said first tool group until receiv-
ing user indication to cease tracking; and
altering the condition of at least one tool group on
said toolbar based upon said tracked user indica-
tions.
’592 patent, claim 8. Claim 10 is dependent on claim 8
and recites that the altered condition is a change in
number of tools displayed in a tool group. Claim 14,
which is also dependent on claim 8, adds a limitation of
indicating that the condition has been altered. The ’592
patent was filed on May 9, 2005, and issued on April 22,
2008.
User-manipulatable toolbars were known in prior art
at the time the ’592 patent was filed. U.S. Patent
6,057,836 (“Kavalam”), filed April 1, 1997, and assigned to
Microsoft, teaches “customizing a composite toolbar via
direct on-screen manipulation by resizing the composite
toolbar and by rearranging sections within a composite
toolbar.” Kavalam, Abstract. Figure 9 of Kavalam, part
of which is shown below, depicts a number of tools on
multiple toolbars that together comprise a composite
toolbar that is divided into sections, the size of which can
be manipulated by the user by moving section dividers
around.
5 ODOM v. MICROSOFT CORP
Figure 9
In August 2008, Odom brought suit against Microsoft
in the United States District Court for the Eastern Dis-
trict of Texas, alleging infringement of the ’592 patent by
Microsoft’s Office 2007 product, a suite of office productiv-
ity software. The software employs a user interface called
the Fluent User Interface that includes a collection of
“Ribbon” tabs (e.g., “Home”), which in turn have “chunks”
of tool buttons (e.g., “Font”), as shown in the figure below:
ODOM v. MICROSOFT CORP 6
J.A. 392. Microsoft asserted declaratory judgment coun-
terclaims of noninfringement and invalidity of the ’592
patent. Because Microsoft also asserted that Odom was
barred from bringing suit by his employment agreements
with an Oregon-based law firm that had been represent-
ing Microsoft in other patent matters, the Texas court
transferred the case to the District of Oregon. Odom v.
Microsoft Corp., 596 F. Supp. 2d 995, 1004 (E.D. Tex.
2009).
The Oregon court conducted a claim construction
hearing in September 2009 and construed six disputed
terms. See Odom v. Microsoft Corp., No. 09-CV-0230,
Dkt. No. 90 (D. Or. Sept. 21, 2009). The court construed
the term “toolbar” as “a window holding tools that is user-
manipulatable” and “tool group” as “the set of tools be-
tween group dividers, or between one end of a toolbar and
a group divider.” Id.In December 2009, Odom’s counsel, citing disagree-
ment with Odom, moved to withdraw from the case, and
the district court, after conducting an ex parte hearing,
granted the motion. The court stayed the case for almost
two months to allow Odom to retain new counsel. Having
failed to retain new counsel, Odom moved to dismiss his
claims without prejudice, which the court granted. The
court, however, declined to dismiss Microsoft’s declaratory
judgment counterclaims. J.A. 216. In March 2010, the
court also denied Odom’s motion to stay the case under 35
U.S.C. § 318 pending inter partes reexamination of the
’592 patent. J.A. 288-89.
Microsoft moved for summary judgment of nonin-
fringement and invalidity. Odom also filed summary
judgment motions on infringement and validity, and on
Microsoft’s equitable affirmative defenses. On July 26,
2010, the district court conducted a hearing on the vari-
7 ODOM v. MICROSOFT CORP
ous dispositive motions. As for infringement, the court
found that Microsoft’s accused software did not meet at
least two different limitations of the asserted claims: the
“user-manipulatable divider” and “altering the condition
of at least one tool group on said toolbar.” J.A. 28-32. The
court’s summary judgment of noninfringement was based
in part on its earlier claim construction of the term “tool
group.” J.A. 32. The court also found that the record did
not support a finding of infringement under the doctrine
of equivalents. Id.The court also granted summary judgment of invalid-
ity of the asserted claims. Although it found that Micro-
soft had presented “very strong” evidence on the theory of
anticipation, the court held that there existed a genuine
issue of fact precluding summary judgment of anticipa-
tion. J.A. 34. 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.” J.A. 35.
The court reasoned that any differences argued by Odom
between the claimed invention and Kavalam as well as
the “taskbar” in Microsoft’s Windows98 prior art system
were not patentable. J.A. 34. Thus, the court granted
summary judgment of invalidity to Microsoft. Id. The
court denied Odom’s summary judgment motions on
infringement and validity at the same time and declined
to address his motion on Microsoft’s defenses because it
had been rendered moot by its other rulings. J.A. 35, 61.
Following its final judgment, the court awarded costs to
Microsoft under 28 U.S.C. § 1920. J.A. 63.
Odom now appeals the district court’s rulings on
claim construction, infringement, and invalidity of the
’592 patents as well as the district court’s various other
ODOM v. MICROSOFT CORP 8
rulings. We have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(1).
DISCUSSION
We begin with the district court’s grant of summary
judgment on obviousness. We review de novo a district
court’s grant of summary judgment, drawing all reason-
able inferences in favor of the nonmovant. King Pharms.,
Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1273 (Fed. Cir.
2010) (citing Anderson v. Liberty Lobby, Inc., 477 U.S.
242, 255 (1986)).
Odom argues that the district court erred in its obvi-
ousness analysis by looking at separate pieces of the
claimed invention rather than the invention as a whole
and by impermissibly applying hindsight in determining
obviousness. Odom contends that the court misread
Kavalam as disclosing “tool groups” of the claimed inven-
tion. According to Odom, the “sections” of the “composite
toolbar” disclosed in Kavalam are not like the tool groups
on the toolbar that the ’592 patent claims. Thus, Odom
argues, it was improper for the court to look to Kavalam
as invalidating prior art. Odom further argues that there
are strong secondary considerations, such as the commer-
cial success of the invention, that the district court ig-
nored.
Microsoft responds that Kavalam presents undisputed
evidence that each aspect of the claimed invention was
well-known in the prior art at the time of filing the ’592
patent application. It contends that user manipulatable
toolbars, dividers, tool groups and the functionality of
dragging dividers around to show more or fewer tools in a
tool group were all known features that Odom combined
to achieve predictable results. According to Microsoft, the
distinction that Odom draws between his toolbar and
9 ODOM v. MICROSOFT CORP
Kavalam’s composite toolbar is a highly dubious one that
cannot save his claims from invalidity.
We agree with the district court and Microsoft that, in
light of Kavalam, the ’592 patent’s asserted claims would
have been obvious as a matter of law. Obviousness is a
question of law based on underlying findings of fact. In re
Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). The under-
lying factual inquiries include (1) the scope and content of
the prior art; (2) the differences between the prior art and
the claims at issue; (3) the level of ordinary skill in the
art; and (4) any relevant secondary considerations, such
as commercial success, long felt but unsolved needs, and
the failure of others. Graham v. John Deere Co., 383 U.S.
1, 17-18 (1966). In situations where “the content of the
prior art, the scope of the patent claim, and the level of
ordinary skill in the art are not in material dispute, and
the obviousness of the claim is apparent in light of these
factors, summary judgment is appropriate.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 427 (2007); see also Tokai
Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1370 (Fed.
Cir. 2011). Such is the case here.
Odom does not dispute that Kavalam teaches user
manipulation of toolbars, including allowing users to alter
the number of tools displayed. Odom’s primary argument
is that those manipulatable sections of the composite
toolbar in Kavalam are very different from the claimed
tool groups. We find that argument unpersuasive.
Kavalam teaches toolbars that include “groups of com-
mand buttons” and that toolbars can be modified by
adding or deleting buttons or otherwise customizing
buttons according to user preferences. Kavalam, col.1,
ll.34-36, 43-48. It further teaches a composite toolbar
that includes sections to hold each of those “groups of
command buttons” or toolbars. Id. col.7, ll. 7-12. Next, it
teaches how the display of those groups can be manipu-
ODOM v. MICROSOFT CORP 10
lated. For example, referring to Figure 9, it teaches that
the standard toolbar (120) can be collapsed or expanded to
allow the user to view as many or as few buttons as the
user desires. Id. col.9, l.60–col.10, l.3.
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.
As for Odom’s arguments of secondary considerations,
we have stated that weak secondary considerations gen-
erally do not overcome a strong prima facie case of obvi-
ousness. Western Union Co. v. MoneyGram Payment Sys.,
Inc., 626 F.3d 1361, 1373 (Fed. Cir. 2010). Here too, the
invention represents no more than “the predictable use of
prior art elements according to their established func-
tions,” KSR, 550 U.S. at 417, and thus the district court
did not err in concluding that the secondary considera-
11 ODOM v. MICROSOFT CORP
tions advanced by Odom are inadequate to establish
nonobviousness as a matter of law.
We therefore conclude, after considering all facts and
reasonable inferences in the light most favorable to Odom,
that claims 8, 10, and 14 of the ’592 patent would have
been obvious as a matter of law and affirm the district
court’s summary judgment of invalidity. In light of our
disposition, we do not reach issues of claim construction
and infringement of the ’592 patent.
Next, we address Odom’s allegations of judicial bias
and improper judicial conduct by the Oregon court. Odom
argues that the district court repeatedly demonstrated
bias against him. According to Odom, that is evidenced
by the court’s rulings on Odom’s motion to strike certain
factual evidence and his motion to stay the case under 35
U.S.C. § 318, as well as the court’s denial of his summary
judgment motion on Microsoft’s affirmative defenses.
Moreover, he argues, the court allowed his former counsel
to withdraw over Odom’s objection and then conducted ex
parte communications with Microsoft’s counsel. Further,
Odom continues, the court allowed Odom’s former counsel
to breach the attorney-client privilege and later unsealed
the transcript of the alleged breach. Odom also requests
that we reverse the district court’s award of costs to
Microsoft. 1
Microsoft responds that none of Odom’s allegations
has merit and that the court was not biased toward
Microsoft. Microsoft denies having conducted any ex parte
communications with the court.
1 In his opening brief, Odom complains repeatedly
about the Texas court’s decision to transfer the case to
Oregon. However, in his reply brief, he asserts that he
has not appealed that decision to us.
ODOM v. MICROSOFT CORP 12
We agree with Microsoft that there is no basis to find
bias in the district court’s actions. We briefly address
some of Odom’s complaints. With respect to inter partes
reexamination, section 318 commits the grant of a stay to
the district court’s discretion and allows the court to deny
a stay where it “determines that a stay would not serve
the interests of justice.” 35 U.S.C. § 318. Here, the court
evaluated the prejudice to Microsoft from a stay and
found that a delay would further chill Microsoft’s rela-
tionships with its distributors. Odom v. Microsoft Corp.,
No. 09-CV-0230, Dkt. No. 141, at 2 (D. Or. Mar. 18, 2010).
It also found that the reexamination may not fully resolve
the validity of the claims at issue in the case. Id. We find
no abuse of discretion in the court’s decision. See Procter
& Gamble Co. v. Kraft Foods Global, Inc., 549 F.3d 842,
849 (Fed. Cir. 2008) (“[A] stay should ordinarily not be
granted unless there is a substantial patentability issue
raised in the inter partes reexamination proceeding.”).
As for the district court’s decision to unseal portions of
Odom’s former counsel’s ex parte communications with
the court, we agree with the court that those communica-
tions were not privileged and, having granted Odom
ample time to retain new counsel, the court was entitled
to rely on his former counsel’s statements in denying him
a continued stay to seek new counsel. U.S. v. Richey, 632
F.3d 559, 566 (9th Cir. 2011) (“The attorney-client privi-
lege protects confidential communications between attor-
neys and clients, which are made for the purpose of giving
legal advice. . . . If the advice sought is not legal advice, . .
. then the privilege does not exist.”).
We finally find no basis to agree with Odom that the
denial of his summary judgment motion on Microsoft’s
equitable defenses was an indication of judicial bias.
There is also no evidence of ex parte communications
between the court and Microsoft. Microsoft has provided
13 ODOM v. MICROSOFT CORP
transcripts of telephonic conversations conducted with the
court and the record reflects that Odom was present
during each one. J.A. 189-207. Odom’s remaining allega-
tions of such communications between the Microsoft and
the court are mere speculation.
We therefore find no merit to Odom’s allegations of
judicial bias on part of the Oregon district court and
decline Odom’s request to reverse the award of costs to
Microsoft, the prevailing party in this case.
CONCLUSION
We have considered Odom’s remaining arguments
and do not find them persuasive. Accordingly, the judg-
ment of the district court is
AFFIRMED.