Small Firm Hammers Heavies With Thumbnail Patent Suit

The patent may be subject to a strong invalidation challenge based on 30 years of prior code and articles — even though the priority date for the patent in the suit dates back to 1998, said Raymond Van Dyke, a software technology attorney in the Washington, DC office of Merchant & Gould.

“This suit concerns the commonly used icons used in many software products to represent actual files,” he told the E-Commerce Times. Xerox Parc, for instance, employed this concept in the 1970s, and others did before that.

“One of the problems in software patent cases is the dearth of ‘prior art’ during the ’60s, ’70s, ’80s and even into the ’90s — programmers did not always publish their code and algorithms, and due to a series of confusing Supreme Court cases, many thought that software was not patentable,” he said. “This belief persists today despite the evidence to the contrary. The Supreme Court is not likely to outlaw software patenting anytime soon since these innovations are a core American product.”

Another factor to take into account is the prosecution history of this case, Van Dyke said, referring to the correspondence between investors and the Patent and Trademark Office.

“In the course of the getting the patent, the claims — which measure the patent right — were severely amended, restricting them in scope. In this litigation, the claims will be constricted further due to these amendments and case law.” The Supreme Court has refined the extent patentees can extend their claims to constitute infringement in an earlier decision, he noted. “By virtue of the extensive number of amendments made to the claims being asserted here, the plaintiff will have an uphill battle asserting them against these defendants, who have the means and wherewithal to contest the suit.”

Still a Way

There is a possible path for success for Cygnus — albeit a narrow and uncertain one, Joel J. Felber, an attorney with Ostrolenk, Faber, Gerb & Soffen, told the E-Commerce Times

Cygnus’ complaint describes its patent as relating to methods and systems for accessing one or more computer files via a graphical icon, wherein the graphical icon includes an image of a selected portion or portions of the one or more computer files, he said, citing the patent language.

“The initial response in the industry would appear to be that this is known and that the suit is unlikely to succeed.”

However, the complaint appears to oversimplify all of the limitations of the patent, Felber continued. Particularly, claim 1, and all of the claims generally, requires that the icon “is created while [an] application … was manipulating the icon’s corresponding one or more computer files[.]” Further, claim 1 requires “linking the icon to the application” and “invoking the application for manipulating the … content … upon selection of the icon.”

In other words, the patent seems to require that the same application that manipulates a file, while an icon that includes at least a portion of the content of the file is created, is launched when the user selects the icon, he explained.

“If the defendants intend to invalidate the patent based on prior art, they will have demonstrate that this combination of limitations was known. If they cannot, and if Microsoft’s, Apple’s and/or Google’s methods work exactly in this way, then Cygnus may indeed prevail.”