"Patent Hawk" lawsuit was an inside job, says Microsoft

Patent consultant Gary Odom, who blogs and does business as "Patent Hawk," used to help Microsoft defend itself against patent lawsuits. But in August, Odom slapped his former client with a patent lawsuit of his own. On his blog, Odom took a quick break from denouncing patent reform to announce his new project, in an understated post titled "Tool Groups."

Odom gamely admitted that Microsoft had been his client for years. "They had every opportunity for friendly discussion," he wrote.

New documents filed in the case reveal much more about Odom's relationship with his client-turned-target. Not only did Gary Odom work for both Microsoft and one of its outside law firms over a period of several years—he actually signed contracts in which he agreed not to file his own patent or IP lawsuits, and agreed to disclose his own patent activity. 

But Odom broke those promises many times over, say Microsoft lawyers. He secretly acquired his own patents, ultimately asserting one in this lawsuit, claiming it covers features of Microsoft Office 2007.

Odom responds that the contracts cited in the lawsuit are no longer in force, and that Microsoft raised the issue just to get the case moved out of his chosen venue, the Eastern District of Texas. Microsoft wants to move the case into Oregon, where both Odom and the law firm in question, Klarquist Sparkman LLP, are located.

When I called him Monday, Odom said there's nothing in the contracts stopping him from bringing a claim against Microsoft in 2008. "I don't work for Klarquist anymore," he said. "I haven't since 2001." He added: "Microsoft really doesn’t want to be in the Eastern District of Texas. They really want to slow things down and they put up as much smoke as they could, trying to get to Oregon."

Documents in Odom v. Microsoft show that Odom started work as a litigation technical consultant with Klarquist Sparkman, a 50-lawyer Portland firm, in 1999. His annual salary was $77,000. Odom's salaried employment ended in 2001, and he subsequently signed two consulting contracts with the firm to work on cases defending Microsoft, first in 2001 and again in 2003, charging $115 per hour for his services. (He now charges a $160 hourly fee, per Patenthawk.com.)

Those consulting contracts required Odom not to work for Microsoft's opponents, nor to work "in connection with any other lawsuit or potential lawsuit adverse to Microsoft," and required that he notify Klarquist before he filed or prosecuted any patent applications. [Odom Contracts, PDF] (Pretty interesting that Klarquist saw the threat of patent experts threatening clients or potential clients back in 1999 in light of the recent history of lawsuits instigated by patent lawyers.)

Several months into his employment at Klarquist, Odom began working on the patent application that ultimately led to the patent he's using to sue Microsoft, U.S. Patent No. 7,363,592. Microsoft says Odom kept his outside patent work secret from both Klarquist and Microsoft. Klarquist, based on the affadavit filed by one of its partners, shares Microsoft's view.

In addition to his full-time employment at Klarquist and his later consulting with the firm, Odom worked directly for Microsoft from 2001 to 2004, and visited their Redmond offices. The company says Odom had access to confidential technology and patent strategy info, and "was informed that Microsoft would not retain consultants who were patenting in areas relating to Microsoft development," but didn't tell anyone at Klarquist or Microsoft that he was getting patents. One patent lawsuit that Odom helped Microsoft out with, which is still pending, even includes allegations against Microsoft Office—the very piece of software that Odom now says he should be paid a royalty on.

Odom admits he had access to Microsoft's confidential information, but writes that none of it was "in any way relevant to my own patented inventions... All of my patented inventions were developed independently of my work at Klarquist and for Microsoft."

Odom's patents are about software toolbars and "tool groups." The "parent" of the asserted patent is  numbered 7,036,087, and has just four claims—88 words in total—which describe software that rearranges a toolbar based on how frequently each tool is used. The child '592 patent that's now asserted, by contrast, is a clause nested inside a clause insider a clause and I can't really tell what it describes, but it's also something about how users manipulate toolbars.

Odom wouldn't discuss his invention or how he thought of it with me, saying only: "The invention is fairly simple. It goes to tool groups." He encouraged me to read the patent claims, which I did but as I said, can't decipher. According to his declaration, Odom has been "an inventor in the field of computer technology" since 1987, and started applying for patents in 2000. He's been granted eight patents to date, all prosecuted pro se.

I asked Odom if he thinks Microsoft copied his idea. No, he said, he doesn't believe they did. Publicly available information shows they developed their toolbar independently based on user feedback, he says: "In Office 2003, users couldn't find their tools." When Odom first thought of his "active tool groups" invention and patented it, he "didn't necessarily think it was going to be used."

Microsoft says that while it has no problem litigating in East Texas under normal conditions, the extraordinary nature of this case calls for a transfer to Oregon. Odom wrote that he filed in East Texas "because of the expertise of the court in patent matters, its streamlined procedures, and the likelihood of getting to trial quickly." His Susman Godfrey lawyers are also eager to stay in Judge Davis' court in Tyler. A local paralegal was even sent to the Office Depot in Longview, where she took a bunch of blurry photos of shelves lined with Microsoft Office 2007 products. The photos were filed as evidence to show that, indeed, Microsoft is selling software in East Texas. Shocking. (Are Longview's big box stores the go-to photo stops for patent-holders alleging infringement?) Further evidence of infiltration: "The infringing products are in use at local colleges, including Kilgore College and Letourneau University, which each offer courses on the use of the Microsoft Office 2007 applications."

All in a day's work in the E.D. Tex. Microsoft's lawyers aren't having it, though: "Plaintiff attempts to minimize both the scope and relevance of his long relationship with Microsoft, characterizing this unusual dispute between Microsoft and one of its former, trusted consultants as nothing more than a garden-variety patent case," they write. "But this is no ordinary patent case."

Case No. 08-00331-LED, E.D. Texas (Tyler).

Update: Gary Odom responds to this story.

Update II: Odom's response has been taken down, but was preserved by a commenter (below).

Photo by J. Mullin. "New York Store," Tyler, Texas.

Comments

[IDBIIP]

I'm somehow reminded of that story about the scorpion who requests a ride across a river on another animal's back, promising not to sting it, but eventually stinging it and causing both to drown.

I guess the moral of the story is not to do business with people you don't trust, no matter how many legal documents they sign.

[Whoop]

It looks like the Patent Hawk Removed his response...ha, I wonder why???

Inside Job

Joe Mullin penned a sagging saga of supposedly secret patenting in his entry about Odom v. Microsoft. The Joe Zone of the Unknown will shrink soon, as infringement contentions are due Friday.

Joe seemed mesmerized by Microsoft's bodacious brouhaha about long-expired contracts, flashed his claim construction IQ, and got some details wrong. But, hey, he's just a reporter for the mainstream press, working his beat.

But there is drama afoot in this case. If this is something "more than a garden-variety patent case," as Microsoft contends, it has more to do with the size of the garden patch than with its contention of "misconduct that gives rise to Microsoft's defense of equitable estoppel, waiver, and unclean hands."

Some of the most ridiculous comedy comes packaged as serious as a rattlesnake. Time will tell whose hands are clean. Markman hearing in Odom v. Microsoft is set for November 12, 2009, with trial set for June 7, 2010, in Tyler Texas.

This blogger begs the understanding of its readers that, being a litigant in an active case, discretion is necessary. Your questions are most likely to go unanswered. Thanks.

[Andrew Goldberg]

Whoop,

Thanks for the note. And for preserving Gary's response. I treasure it as an example of great alliteration, above all else. Sagging saga of supposedly secret patenting? Bodacious brouhaha? I wish I could pull that off.

I have two friends who have already sworn to use the phrase "Joe Zone of the Unknown" in the future. So Patent Hawk's post was not in vain.