palmOne Wins Summary Judgment Invalidating Xerox's Unistroke Patent

Posted By: Ryan Friday, May 21, 2004 7:03:56 PM

palmOne announced that summary judgment had been issued in its favor dismissing Xerox Corporation's claim that palmOne's former text-entry system, Graffiti, infringed a Xerox patent. In a decision released today, Judge Michael A. Telesca of the United States District Court for the Western District of New York held that the Xerox patent was invalid.

Xerox first filed the suit in April 1997 against U.S. Robotics, then the owners of Palm Computing, alleging that Palm's Graffiti handwriting recognition software infringed a Xerox United States patent relating to computerized recognition of handwriting. Xerox's input technology is called Unistrokes and was patented in 1997.

The summary judgment ruling will result in the dismissal of a lawsuit brought by Xerox in 1997 against Palm, Inc. and its former parent, 3Com Corp. Palm, Inc. has since spun off PalmSource, Inc., maker of the Palm OS platform, and acquired Handspring, Inc. to form palmOne, Inc. palmOne had retained liability for the Xerox matter.

"We firmly believed that the broad interpretation of the patent, as it evolved in this case, would render the patent invalid," said Mary Doyle, senior vice president and general counsel for palmOne. "We are very pleased that this court has agreed."

"This is a terrific outcome," said Todd Bradley, palmOne president and chief executive officer. "We've persevered for years to achieve this result and the vindication palmOne deserves."

The Xerox patent in question is U.S. Patent No. 5,596,656, which covered unistroke symbols. The court held that the patent was invalid because, "The prior art references anticipate and render obvious the claim," or that the unistroke system was not a unique invention.

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Xerox just got a black eye

RhinoSteve @ 5/21/2004 8:21:53 PM #
This is one of the better legal moves I have seen in a while. I have worked with patent attornies in the past. Most have told me that as soon as you included software in any cycle of a patent claim, the defendability of a patent becomes very shakey.

The barrier that makes a patent valuable is the sheer court and attorney costs to invalidation it. However, when a technology becomes so valuable that invalidating a patent fits in the corporate budget, it is like seeing a six story house of cards fall.

Is this going to hurt Xerox's bottom line? Maybe a stock dip for a bit and that is it. But for a company like PalmSource to have their core technology public domain since they now have market share, one more shadow is moved away.

In summary, Palm now has done two things Apple failed to do. One is spin off their OS IP into an independant company. And now, have the Xerox patent invalidated that the technology is centered around.
RE: Xerox just got a black eye
mikecane @ 5/22/2004 10:33:21 AM #
>>>Is this going to hurt Xerox's bottom line?

Yes. No more royalties/license fees from M$ for Unistroke Graffiti clone.

I wonder if the 2 Palms can now sue M$ for infringing on G1?

Death to G2!

Good.

Tuckermaclain @ 5/21/2004 8:28:14 PM #
Will they return to G1? G1 works fine on my Z72 but was buggy on my T3. TealScript was not the ideal fix. Who knows if G1 will be able to be imported to OS6 as the files from OS4 machines wouldn't work in OS5. A small complaint, for sure, but lots of users prefer G1.

RE: Good.
kevdo @ 5/21/2004 8:35:17 PM #
Bring back Graffiti 1, please!!

-Kevin Crossman, Palm Powered Software Champion
RE: Good.
grg @ 5/21/2004 8:37:11 PM #
Fantastic news ! Now, if it means that they are going to bring back G1 I will be a happy man.

RE: Good.
G M Fude @ 5/21/2004 8:41:22 PM #
Justice prevails -- good ol' "prior art", eh? You'd have to guess that G1 will at least be offered as an alternative on future OS releases now.
RE: Good.
RhinoSteve @ 5/21/2004 8:43:41 PM #
Even more so, I can see Palm OS license holders using different stroke recognition engines.

Even better, PalmSource -- now having this dark shadow gone -- provid a much less restrictive stroke recognition API so third party apps can plug in whatever they want for their app.

Adaptive, cursive handwriting recogntion running on a Palm OS Cobalt thread in native ARM code anyone?
RE: Good.
JKingGrim @ 5/21/2004 8:46:11 PM #
This in no way means G1 will return. Palm is totting G2 to be better and innovative. They are not going to say "just kidding!" and return G1. If we are lucky, G1 might come as a PINlet bundled with Cobalt to add some choices out of the box like PPC has.

RE: Good.
Sandisfan @ 5/21/2004 8:51:25 PM #
Hopefully since the G1 bundle is not that big, you may be able to have the choice to use G1 or G2.

RE: Good.
Strider_mt2k @ 5/21/2004 8:56:17 PM #
I never left G1.
I'm running it on my TH55 right now.

AFAIK anyone can, given a search or two... ;)

:D

RE: Good.
Haber @ 5/21/2004 9:47:22 PM #
Thank god. Although I still need hundreds and hundreds of dollars to replace my hardware accessories if I get a new PDA, at least I might not have to worry about leaving Graffiti behind.

RE: Good.
Patrick @ 5/21/2004 11:08:04 PM #
> This in no way means G1 will return. Palm is totting G2 to be better and innovative. They are not going to say "just kidding!" and return G1.

Well, I'm not so sure. Do you remember New Coke?

RE: Good.
svrontis @ 5/22/2004 12:58:12 AM #
I agree. This is great news.

However, don't get too excited just yet. The US District Court is not the highest court in the land. I guess it is possible that Xerox may file an appeal. Anyone out there know the relevant time limit for appeals?

It is also interesting that this announcement was made by palmOne, not by Palm Source. Does this mean that palmOne ones G1? Will Palm Source bundle G1 with future updates of Palm OS?

Cheers.

RE: Awesome News!
Cheetah @ 5/22/2004 2:56:23 AM #
I hate G2, and after all this time using it have still not mastered it.

I recently posted on Discussion boards staring how frustrated I am with G2.

I hope Palm gives everyone the option of using either G1 or G2 (ala PPC)

RE: Good.
timepilot84 @ 5/22/2004 3:24:57 AM #
Everyone write PalmOne! I already sent an e-mail to them. Demand our beloved G1 be reinstated, post-haste!

RE: Good.
Puppy @ 5/22/2004 3:44:16 AM #
Yeah, let's hope this means G1 is selectable in OS6. Hopefully they'll make it the default, or just drop G2. The insane thing about all of this, is that Microsoft has been including G1 on their PDAs for years now...

RE: Good.
kp* @ 5/22/2004 8:24:30 AM #
I'm still using G1 on my TH55 as well, but it would be great if we could do it on the up-and-up, instead of sneakily trading files around. I've also been worried when our luck would run out and the newer Palms would just plain not work with it (sounds like it's happened already a bit with the T3). Every time I've tried to learn G2, I've been bothered by how little sense it makes to force people to use two strokes instead of one to achieve the same thing. I hope Palm takes the opportunity to go back to unistroke, either original G1 or some new variation on it. I'm willing to learn some new symbols, as long as they're as intuitive as G1.

RE: Good.
n1e4k @ 5/22/2004 9:26:54 AM #
I hope they don't completely do away with G2, cause I for one like it a lot better than G1. Probably letting the user chose between the two is the best bet.
RE: Good.
Strider_mt2k @ 5/22/2004 11:04:45 AM #
Sneaky shmeaky!

MAKE PALM GO NOW.

RE: Good.
HiWire @ 5/22/2004 11:53:36 AM #
Well, I would feel better about buying a new Palm device if I had the choice of getting G1. As it stands now, I'm not too enthusiastic about G2.

Palm m505 User
RE: Good.
Chankla @ 5/22/2004 5:14:38 PM #
Please make G1 or G2 selectable from now on.
In the meantime, continue to allow G1 to be applied over G2. They each have their plusses and minuses - and having both allows new users to learn quickly, and G1 fans to enter things faster...

RE: Good.
I.M Anonymous @ 5/23/2004 8:12:29 PM #
And for those of you who don't know, you can currently install G1 on any OS5 palm. Download Graffiti1.zip from http://www.zansstuff.com/palm, and follow the instructions in the how_to.txt file included with the ZIP.

Make sure to follow the instructions, as not doing so can put your palm into an infinite reset loop.

RE: Good.
Wollombi @ 5/23/2004 9:56:26 PM #
Well, if prior art is the defense, and G1 goes to public domain, doesn't this mean that if PalmSource/PalmOne refuse to provide G1, that a 3rd party could without violating the law?

Just a thought.

Oh, and G1 works just fine on my T3

_________________
Sean

Always remember that you are unique. Just like everyone else.

RE: Good.
elo @ 5/24/2004 11:16:06 AM #
Yes, Xerox could appeal, but they probably won't. Summary judgment means that Xerox's case was so weak that *no reasonable jury* could find for them. It means that the case never made it to trial, and Palm never had to offer its defense.

If Xerox appealed the summary judgment, then the Circuit court would remand the case to the District Court for a trial. No matter who won a trial, the other party could then appeal the result. That's a lot of litigation when the court has already indicated that Xerox cannot prevail.

If Graffiti were the crown jewels of the Xerox Corp., then I would tell them to appeal and to take their best shot. But in this case, it's unlikely that their interests would be well served by continuing.

The summary judgment motion is designed to keep from wasting judicial resources (and defendants' money) with cases that have no chance of success. I haven't seen anything yet to suggest that the District Court didn't rule entirely correctly.

elo

RE: Good.
LiveFaith @ 5/24/2004 10:47:56 PM #
I certainly prefer the G1 strokes to the flaky Jot(G2) ones as everyone else. But does G1 work on a T3 on-screen or in graffiti area only? The ability to use on-screen writing is very-very valuable versus having to keep the VG area alive or opening the slider. IMO, the pain of G2 is well worth the hassle if G1 demands the G-area only, which I' m assuming it does.

Obviously, I'm being disagreed with by a host of "dun-switched" users.

Pat Horne; www.churchoflivingfaith.com

RE: Good.
TooMuch @ 5/25/2004 11:52:27 AM #
Give me the old G1 strokes for "t, k, i and l" and keep the rest of G2. That would be killer.

RE: G1 and G2 - PALM please read and learn...
sam_in_silver @ 7/17/2004 8:57:53 PM #
What I hate about G2 is (a) the problem of the pause required [if I want an ":" and another character, then I must pause], and (b) the problem of it deciding you are block selecting text as opposed to entering text.

G1 is all single stroke, so I agree with other posts, give me back my single strokes. Or allow me that choice, not the ridiculous alternative choices tofor T etc, which are still double stroke. ELIMINATE that darn silly timing issue.

Also, allow me to stay in text entering mode and dont assume I want text-block-select mode.

And get rid of that slider to expose the software keyboard.

And if you must have a hardware keyboard (as in the tungsten C which thank god I sold) please make it usable and ergonomic - hint - look at the motorola pagers, those keyboards are usable.

Simon



And thanks so much to the Patent Office

Patrick @ 5/21/2004 11:09:30 PM #
Without whose fervent efforts to allow inane and obvious software patents we wouldn't have any need for 7 year, financially draining court battles whose end result is that there shouldn't have been a patent granted in the first place.

Well done, sirs and madams.

I've never understood Xerox's claim........

Louis Berk @ 5/22/2004 2:18:15 AM #
..... can someone explain it to me?

De facto, Palm introduced the Palm Pilot in 1995(?) if memory serves me well..... at least 2 years before Xerox's patent, according to the dates in the article.

How could Xerox be allowed to file a patent for something which so obviously already existed?

Does that mean I can patent air and make you all pay for using it?

Louis

RE: I've never understood Xerox's claim........
timepilot84 @ 5/22/2004 3:26:57 AM #
You could apply for a patent on air, and if you demanded that everyone pay, your patent would invalidated the same way Xerox's patent was. Duh.

RE: I've never understood Xerox's claim........
JohnM @ 5/22/2004 5:37:22 AM #
Hi,

Patents are filed frequently for "ideas" that are
completely developed by other parties. A recent
MS patent was filed, for a feature that has been
in the enlightenment window manager for years.

It made me sick to my stomach seeing the "inventor's"
names on the patent. It is complete bull poop.



Independent Palm Software Developer

RE: I've never understood Xerox's claim........
Winter_ @ 5/22/2004 7:21:56 AM #
Timepilot, I think the point is: if someone put a patent on air, the patent would have to be invalidated by someone else, when in fact in a sane system it should have never been granted in the first place.

Meanwhile, lawyers on both sides and the USPTO would laugh their way to the bank...

I remember jokes about M$ patenting 1's and 0's and making everyone else switching to mechanical computing :).

RE: I've never understood Xerox's claim........
timepilot84 @ 5/22/2004 7:59:46 AM #
The patent office is in need of updating, but it's not that ridiculous. I could come up wih a thousand hypothetical situations that make them look like complete boobs, none of would be realistic possibilities.

If air is so easy to patent, some lawyer would have already tried it.

What makes our patent office so ridiculous is that the office has OK'd poorly documented methods, and allowed patents of methods that are commmon practice in industries that the patent office has little experience with or knowledge of. The people who work in the patent office often have little idea what it is that they're looking at when a company shows up with a new software patent filing. If we want a better patent system, we're either going to have to disallow patents of methods, or we're going to have to shell out for the Federal government to hire competent experts in the appropriate fields.

RE: I've never understood Xerox's claim........
Konstantin @ 5/22/2004 8:44:01 AM #
Hold your horses everybody.
If palm1 will make G1&G2 available in the next Palm PDA's (a la PPC) my fear is that M$ will sue P1 because it infringes its patent on using two or more writing recognition techniques on the same device.

yes, sw patents are THAT bad
Winter_ @ 5/22/2004 8:54:37 AM #
Timepilot, the patents system IS that ridiculous - at least regarding software patents.

Did you know that IBM has a patent on a method to draw rectangles?
And that Amazon tried to patent the "1 click buying"? (and managed to do it - partially at least!)

You can see those examples and some other (even nastier?) ones at
http://swpat.ffii.org/patents/samples/index.en.html
(some are in german, but most are in english)

It's INCREDIBLE.

2 sw patent examples on the last year
Winter_ @ 5/22/2004 9:01:21 AM #
1) Try googling for "eolas matter". Or look at the news section at www.eolas.org. Eolas is tiny 1-man firm that patented something like embedding an "interactive application" on a web page (and I remember discussion about that possibly including the embedding of any object, like pictures, on web pages), and used that to sue Micro$oft. He said he only wanted to hurt M$, but the subject was so dangerous and out-of-hand that the open source community actually defended Micro$oft!! (the case is still going on)

2)Do you know Matlab? And Matlab's Simulink? Well, National Instruments sued Mathworks because they used "a method to represent a process with boxes and arrows" (or something similar). (IIRC, the case already was closed against Mathworks - in some states at the very least, like Texas).

Those are only 2 examples that I remember right now as having shocked me during the last year.

Aren't those absurd patents?

RE: I've never understood Xerox's claim........
Winter_ @ 5/22/2004 9:16:31 AM #
Sorry, Eolas' website is at www.eolas.com
:P
RE: I've never understood Xerox's claim........
Scott R @ 5/22/2004 12:34:01 PM #
Actually, Xerox's patent was not frivolous. They really did invent this and based on my past research, Hawkins really did steal it from them. Nevertheless, Hawkins made some real improvements to the Unistrokes concept with Graffiti and I'm glad that things turned out the way that they did. The Unistrokes alphabet required too big of a learning curve.

Scott

http://Tapland.com
- Tapwave Zodiac News, Reviews, & Discussion -

RE: I've never understood Xerox's claim........
palmhiker @ 5/22/2004 2:43:57 PM #
Well, according to the judgement: "The court held that the patent was invalid because, "The prior art references anticipate and render obvious the claim," or that the unistroke system was not a unique invention."

Xerox may have improved on an existing technology, but apparently Palm were able to show that there was prior unistroke technology in use before Xerox was issued a patent.

I would like to see G1, but with some of the features of G2, like capital characters in the middle, etc.

I've been using G2 for over a year and I still can't make an X reliably.


RE: I've never understood Xerox's claim........
timepilot84 @ 5/22/2004 5:59:45 PM #
Winter, you've made my point exactly. Both of the patents which you mentioned are software patents. Both were granted because of the inexperience of Patent officers within the software realm.

These are not real "things", inventions, that are easily cataloged and recorded to show that prior art doesn't exist. These are vague concepts that are being allowed to be patented. These are not patents for air or wheels. These patents suck. And what makes them even worse is that instead of innovating, companies are patenting everything in sight in an effort to stifle their competitors. They are doing this simply because they can, and according to their lawyers, its a sound business practice.

I restate: There is a HUGE difference between patents of real things and patents of methods/algorithms/software in both the difficulty to obtain them and how they are used by the patent holder.

Another factor, barely touched on by most critics of the American Patent Office is that the corrupt nature of our legal system as regards to Tort law. Tort reform is yet another aspect of this problem that needs to be addressed.

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