This week: Consultant/blogger/inventor Gary Odom sees infringers everywhere, AOL and Yahoo move a little bit closer to "mutually assured destruction," and more.
Patent Hawk Swoops In Again
- Odom v. Attachmate Corporation et al, 09-cv-00406 D. Oregon. [PDF]
Gary Odom is a litigation consultant, and an inventor. Last year, he used his 7,363,592 patent to sue Microsoft—a company that once employed him as an adviser on patent lawsuits—in the Eastern District of Texas. In February, The Prior Art wrote about how Odom's employment contracts with Klarquist Sparkman, one of the firms Microsoft regularly taps as outside counsel, became an issue in Odom v. Microsoft.
In that case, which has since been transferred to Oregon, Odom is demanding that a royalty be paid to him for each copy of Microsoft Office 2007 that is sold in the United States. In February, Odom sued Autodesk, seeking a similar royalty on Autodesk 2009. Odom v. Autodesk. [PDF]
Last week, Odom followed up those suits by filing one in Oregon that names 28 additional software makers. Each of the companies, he claims, owes him royalty payments. The list of defendants includes companies that range in size from British aerospace giant BAE Systems to smaller entities such as Emportal and San Diego-based SmartDraw.
Odom declined to discuss his new lawsuit with TPA, saying: "You're a hack job, man." (Odom also takes issue with TPA's earlier post on Odom v. Microsoft. TPA stands by its reporting.)
Odom's lawyer, Ed Goldstein of Houston IP boutique Goldstein, Faucett & Prebeg, was more helpful. Goldstein explained that his client's 28 new targets all have different software products that have one important similarity—they allow manipulation of "tool groups" instead of changing the entire toolbar or individual tools. Those other techniques, Goldstein says, were "the only ones available" prior to Odom's invention described in the '592 patent, which was filed in 2005. (Its parent patent was filed in 2000.)
Odom, who blogs as Patent Hawk, wrote a recent post in which he described the history of his invention, and promised to have mercy on the tiniest software companies:
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 way to be.
While they're past the "mom-and-pop" level, some of the companies on Odom's new list of alleged infringers are small businesses, and spending the few million dollars required to defend a patent lawsuit will be very difficult for them. "We're very happy to work with these smaller companies to grant licenses which are consistent with their size," says Goldstein.
Odom has never created a product based on the '592 patent, nor has he accused any of the 30 companies he's sued of copying his ideas. Is it fair for Odom to demand money from small businesses—or any businesses, for that matter—when he doesn't even claim to have contributed to their success? "Infringement doesn’t require copying," says Goldstein. Very true. "If they are in fact infringers, why should their size allow them to infringe with impunity? I've said we would work with them."
You've Got Mail! ... From Our Lawyers.
- AOL LLC et al. v. Yahoo! Inc. et al. 09-cv-03774, S.D. New York.
Barely noticed in the press last week: AOL filed a declaratory judgment suit that seeks to invalidate seven patents Yahoo has been using to threaten an AOL subsidiary, Quigo Technologies, which produces a product called AdSonar.
According to AOL's complaint [PDF], lawyers for Yahoo and its onetime subsidiary Overture (now simply folded into Yahoo as the company's search marketing department) started making infringement allegations against Quigo in 2006. AOL bought Quigo the following year, and Yahoo has continued to accuse Quigo of infringing its patents
Of the seven patents-in-suit, one was assigned to Yahoo, four to Overture and its predecessor GoTo.com, and two others were acquired from other search companies. In its complaint, AOL lists 28 other patents and several non-patent publications that the company believes should invalidate Yahoo's patents.
The two sides had been negotiating for several months, but those talks apparently broke down.
AOL declined to comment when contacted by TPA. Yahoo provided a short statement in which the company said it is reviewing the allegations: "Yahoo is confident that the patents are strong and will vigorously defend them."
One of the patents at issue is the same one Overture used to sue Google in 2002—the 6,269,361 patent, filed in 1999 when Overture was still known as GoTo.com. Yahoo inherited that suit when it bought Overture in 2003. The two companies settled the suit in 2004, with Google agreeing to pay between $260 million and $290 million in stock.
That hefty payment may have something to do with Yahoo's more middle-of-the-road stance (compared to other technology companies) on patent issues. On one hand, Yahoo supports patent reform, including limits on damages, and has condemned the problem of "patent trolls" in an amicus brief [PDF] it filed in the landmark eBay v. MercExchange case. (It was in that brief that TPA first read the phrase "mutually assured destruction.")
But when the Supreme Court heard Quanta v. LG Electronics, Yahoo supported LG—as did several large patent-licensing firms, not to mention the AIPLA. In the process, Yahoo broke ranks with numerous tech heavies (Dell, Cisco, eBay, and Hewlett-Packard) that wanted to limit patent holders' post-sale control over products. Yahoo's move surprised some tech industry observers.
AOL is represented by Paul Gupta of Orrick, Herrington & Sutcliffe. Yahoo has no counsel of record yet; in recent patent suits, Yahoo has been represented by lawyers from Quinn Emanuel and Morrison & Foerster, among others.
Also On the Docket
- Aldav, LLC v. Clear Channel Communications et al. 09-cv-00170, E.D. Texas (Tyler).
A new arm of patent-holding company Acacia Research Corp., called Aldav LLC, is using the 6,577,716 patent, related to Internet radio advertisements, to sue large broadcasting companies. Acacia is suing 13 defendants in all, including Cox Radio, Univision Communications, CBS Radio, and Clear Channel. While it's clear from the corporate disclosure that Acacia owns the patent in question, you wouldn't know that from the complaint, which claims that Aldav has a Texas address, at a business center in a Dallas suburb. Not sure what they get out of that, although such tricks do manage to fool some of TPA's competitors. Aldav is represented by a firm familiar with filing suit in E.D. Tex, Williams, Morgan & Amerson of Houston.
- Implicit Networks v. HTC Corp. et al., 09-cv-01628, N.D. California.
Implicit Networks, a Washington state-based holding company, has now filed three patent infringement lawsuits in three weeks. The most recent, against HTC, Nokia, Palm, Samsung, Sony Ericsson, and LG Electronics, asserts the 6,507,349 patent, related to touch-screen controls. Implicit is represented by Spencer Hosie of San Francisco-based Hosie Rice LLP, as well as Goldstein, Faucett & Prebeg (twice in one column!). Hosie is best known for getting hefty settlements from Apple and Microsoft on behalf of Burst.com.
Photo: flickr / HVargas