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.