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Lawsuit Leads to Reconsideration of Patent

October 9, 2009 • Darrell Shandrow Hilliker

The U.S. Patent and Trademark Office has re-examined 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 a blind person to save their position on a Web page 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 their 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, Inc. “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 re-examination 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 re-examination 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, & Technology at Arizona State University’s Sandra Day O’Connor College of Law. “There’s no question that, if the re-examination 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 re-examination 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 awhile.”

According to the re-examination document, the Patent Office must receive a response from Freedom Scientific by Oct. 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:

  • The examiner cited Patent 6085161 describing the invention of a system for assigning and playing specific sounds when a Web page changes or the user encounters a specific Web page element such as a header or list. All of the claims in Freedom Scientific’s patent were rejected based on the positioning techniques described in this “sonification” system.
  • The examiner also cited Patent 7058887 describing a means of determining the position on a Web page according to user-defined settings, including the page’s domain. This IBM patent was referenced in the re-examination as clarification for the rejection of the sixth claim.
  • The examiner also referred to the IBM Home Page Reader Version 2.5 Manual.
  • Ex Parte Re-examination, Control Number 90/010,473, Central Re-examination Unit, U.S. Patent and Trademark Office. Visit the Patent Application Information Retrieval Web site and enter the specified control number to obtain this document. The Patent Office provides this document only in scanned image PDF, which is inaccessible to blind readers. An accessible copy of this document has been made available using Kurzweil K1000 Version 11.03 optical character recognition software.
  • An accessible copy of Freedom Scientific’s complaint was made available in the July 24, 2008 article about the lawsuit.

7 opinions on “Lawsuit Leads to Reconsideration of Patent

  1. wow, this has to be the definition of a frivolous lawsuit. FS just keeps doing things to make me not like them. Good for GW Micro. I hope this ends soon, and AT companies can go back to making quality products without fighting over things that shouldn't have pattons.

  2. This is great for GW Micro. I think that it has become clear to everyone that Freedom Scientific has no interest in actually helping the blind community. They are only interested in profit.

    I am not American so I'm not sure how the process works, but someone should begin the process of having FS investigated for anti-competitive and antitrust behaviour. Although it probably won't happen, FS should be shut down, the CEO and other higher-ups fined and/or imprisoned, and all their source code released to the public. One can dream, can't they?

  3. Jason Lippford says I am glad G W micro won the case this just shows all of us that freedom syentific never cared about helping us blind people out and that they will always try to ssue us for every little thing. with out a law suit nothing can be made for the blind. for free every thing has to be a charge or a law suet.

  4. Just found out about this in this week's "Top Tech Tidbits," and thought I'd come check it out. I'm so glad for GW Micro and hope they will win in the end, if there ever is to be an end. I used to swear by JAWS, both for DOS and Windows. However, it seems that in recent years the company has made some wrong choices, and I no longer have the need nor the desire to use JFW. Interesting isn't it, reading all this stuff about frivolous arguments and lawsuits within the blindness community?

  5. Hi people.
    I'm usually the last person who blindly (pun intended) bashes freedomscientific simply because I've heard of bad experiences through second and third hand accounts, however, the following incident has made me reconsider.
    note: all names have been omitted to protected the (ahem, cough cough,) innocent.
    I received a short email about the upcoming version of jaws 11, and in the message, it says those who hold an SMA will pay a reduced price.
    But when I rang up our local dealer and inquired about the price, I was told that since I was an SMA holder, I didn't have to pay a cent. Now I was really confused, so I decided to try and clear up the issue and I explained that I found the email a bit unclear.
    But before I could finish my sentence, he got really defensive, Look, I'm not gonna sit here all day and hold a debate about it with you! read the email again, it's quite clear!
    So I said ok, let me bring it up and I'll read what you just wrote.
    so I pulled up the email and read the incriminating line to him.
    Remember an SMA will give you the

    next 2 paid updates at a significantly reduced price. Contact the

    dealer in your state for more information. 
    Then still not believing his own ears, he pulled up his copy.
    I guess he must have read the email and noticed the ambiguous line of text I was referring to, because He sort of hummed and hawed and said, hmmmm. Just ignore that email, you're an SMA holder, so you don't need to pay anything for the next 2 versions.
    If this is the way they treat their paying customers, I'll seek support elsewhere.
    There's no need for that snobbish stuck up attitude.

  6. Though it grieves me to hear of such wasteful litigation, I'm not surprised; (not wishing to simply fall into the FS bashing trap) I am nonetheless disgusted by Freedom Scientific's antics and happy for G W Micro. it is not (sadly) difficult to expect such behaviour from yet another global giant, a_ because they're owned by Microsoft as far as I understand (so nothing's beyond imagination) and b) because it is criminal that any type of functionality that allows a screen reader to do its job should under no circumstances be patented! it is as repugnant a concept as a publisher patenting the alphabet!

    personally, I have saved big bucs by going with SA to go from Serotek and have never had a problem with it; in many ways it is more flexible than JFW.

    As far as I know, I'm one of only a few in Australia that has opted to use it as screen-reader of choice. and haven't looked back – and fear not, I'm not earning one cent of commission for mentioning the product name!!

    Many thanks,

    Sarah.

  7. Darrell – Excellent article! Your journalistic talents are really shining through and the BAJ is really showing a level of professionalism previously unknown in the blinkosphere.

    I've long been an advocate of "Innovation not Litigation!" but I believe that all software patents are broken and suggesting that some have more validity than another serves little to improve the situation as a whole. Yes, the FS patents are frivolous but so are the entire body of software patents – including those to demonstrate that the FS claims of ownership are without merit.

    Many years ago, Richard Stallman and I co-founded the League for Programming Freedom (www.progfree.org) specifically to battle the entire wave of software patents that was building back then. We still hope to influence the legitimacy of this entire class of patent and readers can go to our web site to learn more about how and why software patents aren't helpful in any reasonable manner.

    I must, however, say that I am somewhat guilty for having helped FS write patent applications when I worked there. I had turned into something of a "go along to get along" employee who had chosen (for a while) the wrong side of history on which to make my stand. I think I've since gotten myself back from the dark side and now do most of my work on free and open source software projects.

    BlindConfidential is coming back (I actually did a post this morning) but it will continue in its casual manner and will never have the level of journalistic professionalism that your are demonstrating these days. Keep up the good work, our community needs you.

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