Odom v. Microsoft Corp., 050411 FEDFED, 2011-1160

Docket Nº:2011-1160
Opinion Judge:Lourie, Circuit Judge
Party Name:GARY ODOM, Plaintiff-Appellant, v. MICROSOFT CORPORATION, Defendant-Appellee.
Attorney:Gary Odom, of Portland, Oregon, pro se. Joseph A. Micallef, Arnold & Porter, LLP, of Wash
Judge Panel:Before Lourie, Bryson, and Linn, Circuit Judges.
Case Date:May 04, 2011
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

GARY ODOM, Plaintiff-Appellant,



No. 2011-1160

United States Court of Appeals, Federal Circuit

May 4, 2011

This disposition is nonprecedential.

Appeal from the United States District Court for the District of Oregon in Case No. 09-CV-0230, Judge Michael W. Mosman.

Gary Odom, of Portland, Oregon, pro se.

Joseph A. Micallef, Arnold & Porter, LLP, of Washington, 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.

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 certain 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.


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.

(Image Omitted)

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,

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 movement related to said first tool group until receiving user indication to cease tracking; and

altering the condition of at least one tool group on said toolbar based upon said tracked user indications.

'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.

(Image Omitted)

In August 2008, Odom brought suit against Microsoft in the United States District Court for the Eastern District of Texas, alleging infringement of the '592 patent by Microsoft's Office 2007 product, a suite of office productivity 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:

(Image Omitted)

J.A. 392. Microsoft asserted declaratory judgment counterclaims of non infringement 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 representing 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 between group dividers, or between one end of a toolbar and a group divider." Id.

In December 2009, Odom's counsel, citing disagreement 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 non infringement 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 various 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 non infringement 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 invalidity of the...

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