Braille Monitor                                                    December 2009

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Update on Freedom Scientific v. GW Micro Patent Lawsuit

From the Associate Editor: The Braille Monitor first reported on the Freedom Scientific patent-infringement lawsuit against GW Micro in February 2009. In summary Freedom Scientific accused GW Micro of using without proper authority its patented "document placeholder," technology that enables an access screen reader to return to a specific place on a Webpage. As far as we know, this case continues to make its way through the federal court system.

On Friday, October 9, 2009, we learned, however, that the U.S. Patent and Trademark Office issued an administrative ruling suggesting that Freedom Scientific's document placeholder patent may not be valid. This decision remains subject to appeal, but, if this ruling is upheld, it surely will undermine the essence of the plaintiff's claim. We reprint below the following release posted on the Blind Access Journal blog and circulated widely among other assistive technology lists and Webpages. Here it is:

The U.S. Patent and Trademark Office has reexamined a patent held by the maker of a screen reader for blind computer users in connection with an infringement lawsuit filed against a competing company. Reliable sources hailed the move as a significant victory for the defendant.

The document placemarker patent, held by Freedom Scientific, Inc., covers a specialized screen-reading capability that allows blind users to save their position on a Webpage and return to the same place at a later time. The company's Job Access with Speech (JAWS) screen-reading software incorporates this feature.

In a July 15, 2008, complaint filed in the United States District Court, Middle District of Florida, Tampa Division, the self-proclaimed "world's leading manufacturer of assistive technology products for those who are vision impaired" accused GW Micro, the maker of the competing Window-Eyes screen reader, of deliberate patent infringement, claiming its placemarker technology is the same as that described in the patent. According to court documents Freedom Scientific is seeking an injunction requiring GW Micro to stop including the placemarker feature in their product, asks for significant unspecified financial compensation for the infringement, and requests recovery of legal fees.

“I believe that this technology shouldn't have been patented to begin with," said Doug Geoffray, vice president of development with GW Micro. "It obviously was around way before what they've done. We have stated that our version, Window-Eyes 3.1 back in 1999, had previous position capability."

The U.S. Patent and Trademark Office agreed. In a reexamination of Freedom Scientific's patent, at the request of GW Micro's attorneys, the office rejected all claims to the invention.

"A person shall be entitled to a patent unless the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States," stated a published document describing the reexamination as the basis for the patent's rejection on the grounds that the technology had already been invented. The document also cited two existing patents and the availability of IBM's Home Page Reader, a product employing place-marker technology prior to the Freedom Scientific patent, in its reasoning behind the decision. "We take that as a positive sign,” Geoffray said.

"It's a victory," said Dennis Karjala, Jack E. Brown Professor of Law, Faculty Fellow, Center for the Study of Law, Science, and Technology at Arizona State University's Sandra Day O'Connor College of Law. "There's no question that, if the reexamination decision is upheld, that's the end of it. There is no patent." He said Freedom Scientific may still have some cards to play in this case. "The patent owner in a reexamination proceeding may appeal," Karjala said. "It goes to an appeals board within the Patent Office, and then they can later seek judicial review. This thing could go on for a while." According to the reexamination document, the Patent Office must receive a response from Freedom Scientific by October 28 if it wishes to appeal the decision.

Karjala said the legal trend points to a probable GW Micro victory. "Because the Supreme Court has been reviewing so many of their cases with an obvious eye to overturning them, the Patent Office is pretty sensitive now that they're being accused of being too patent-friendly," said Karjala. "My guess is, once you got a ruling by the examiner that the patent is invalid, I'd say the chances are pretty good it will be upheld by the board in the Patent Office. If it's upheld by the board, the chances that a court would overturn it in this atmosphere are pretty slim."

Freedom Scientific representatives declined to comment, citing the ongoing litigation.

Notes:

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