TX Court Orders Transfer of Microsoft Toolbar Patent Dispute to Oregon

Holding:

The U.S. District Court for the Eastern District of Texas has ordered the transfer of a patent dispute between Microsoft Corp. and its former technical consultant Gary Odom to Oregon. The district court reasoned that the convenience of witnesses and localized interests weighed in favor of transfer. The district court described the case at bench as significantly localized in the Northwest (where the district court of Oregon is found). In particular, both parties are residents of the Northwest, and Microsoft’s equitable defenses all arose out of conduct and contracts in the Northwest. The district court added that no Texas resident is a party to this litigation, nor is any Texas state law cause of action asserted. All identified witnesses -- with the possible exception of one --were located in the Northwest. In this regard, the district court granted Microsoft’s motion to transfer venue.

Detailed Summary:

By way of background, plaintiff Odom, the sole inventor and owner of the ‘592 patent,  claimed that defendant Microsoft has infringed his patent by the manufacture and distribution of Microsoft’s Office 2007 software. In response, Microsoft asserted that during the time period in which Odom filed and prosecuted the patent applications underlying the ‘592 patent, Odom was a technical consultant for Microsoft, and also for Microsoft’s outside counsel, on Microsoft patent matters, including at least one litigation that involved Microsoft’s Office line of software.

Since at least 1999, Odom has resided in Oregon and operated an Oregon consulting company, Patent Hawk,…

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