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I4i v. Microsoft (2009, USA)

Revision as of 09:33, 13 August 2010 by 199.246.72.116 (talk)

i4i v. Microsoft was a 2009 court case in the USA of software patent litigation where Microsoft was convicted, by a jury, of wilfully infringing a patent of i4i inc. The venue was the East Texas district court. On repeated appeals to the U.S. Court of Appeals for the Federal Circuit, Microsoft lost three times.

The issue at stake was a claimed patent infringement by Microsoft's implementation of "custom XML", a proprietary extension within Word's native OOXML document format. Microsoft was forced to withdraw current versions of Word and to remove or reduce the functionality of the OOXML format from future versions.

i4i inc. has confirmed that the free software OpenOffice.org word processor does not infringe this patent.[1]

Timeline and documents

In chronological order, newest first: (yyyy-mm-dd)

  • 2010-05-11: USPTO concludes reexamination, upholds i4i's patent US5,787,449.[2] The reexamination certificate was then published on the 27 July 2010.[3]
  • 2010-04-01: Microsoft's i4i patent appeal denied[4][5]
  • 2010-03-10: CAFC affirms the district court's ruling again[6] after a request from Microsoft to reconsider the initial CAFC decision
  • 2009-12-22: CAFC affirms the district court's ruling(09-1504.pdf)
  • 2009-09-02: Microsoft is granted its request for a stay (delay) in applying the injunction. (Is there a document to back this up?)
  • 2009-08-28?: Amicus briefs supporting Microsoft's appeal: Dell, HP (See also: Dell, HP)
  • 2009-08-18: Microsoft Motion for Emergency Stay
  • 2009-08-11: Judge Davis Memorandum
  • 2009-08-11: The opinion
  • 2009-08-11: The judgement
  • 2009-08-11: The injunction against Microsoft
  • 2008-11-21: (?) Microsoft requests re-examination of claims 14-20, citing DeRose and Cowan: 90010347-4.pdf (Hard to read this document; see Talk:)
  • 1998-07-28: US5,787,449 - "The '449 patent" issued by the USPTO to i4i
  • 1994-06-02: i4i files their patent application[7]

Software patent problems highlighted

This is a good example of why some people think that software patents are so bad (even though, ironically, it hurts one of their strongest proponents).

  • Software ideas are so abstract, the boundaries of their description are unclear
  • Expecting all XML programmers to have been monitoring the patent filings of i4i is excessive, so infringement is unavoidable
  • XML formats are generally part of an attempt to improve compatibility for users. Blocking similar uses of such ideas is not in consumers' interests. With data formats, innovation is useless because compatibility is the goal.
  • MS, and i4i, and every company, community, and individual should be free to write and distribute software.

Who is i4i inc.?

i4i inc. ("Infrastructures for Information") is company founded in 1993,[8] based in Toronto, Canada.[9] They filed their complaint against Microsoft on March 8th 2007.[10] Microsoft recruited i4i to help them on a number sales opportunities where the customer, the US government, required support for user defined XML schemas, a capability that i4i brought to Word and Microsoft was unable to deliver. Microsoft promoted i4i as the solution the government requirement for XML in Word. In 2003 Microsoft visited i4i to advance the relationship and develop a deeper understanding of software with features similar to the now-disputed CustomXML.[11]

In an undated email which can be placed somewhere, a developer on Microsoft's XML for Word team wrote to a colleague "We saw [i4i's products] some time ago and met its creators. Word 11 will make it obsolete".[12] Word 11 was released in 2003, and this email was probably sent before or soon after Word 11's release.

A patent troll?

The patent is held by "i4i LP" (not i4i inc.), and the litigation is financed by i4i Inc., McLeanWatson Capital and Northwater Patent Fund. According to "Excerpts from Trial Transcript (May 12, 2009 Afternoon)"[13] i4i inc. make an add-on, called x4o, which works with Microsoft's word processor. archive.org has webpages of this product dating back to February 2003 [14], which show it being on sale since March 2003.[15] According to Microsoft's Motion for Emergency Stay, i4i inc. didn't lose profits when Microsoft released Word 2003 and actually improved its revenue after the release of Microsoft Word 2003.[16]

Trial misconduct

$40 million was added to the judgement against Microsoft for making arguments that were "persistent, legally improper, and in direct violation of the Court's instructions".[17] During the trial, Microsoft repeatedly argued that i4i was wrong to demand damages since they themselves don't produce a product (i.e. they were accused of being a patent troll). They do have a relevant product (the x4o add-on), but Microsoft's argumentation was judged to be misconduct because there is no law against what i4i is doing even if they didn't produce a product, and therefore it is not relevant to the case.

  • The argument that i4i was a patent Troll was also raised at trial by the Microsoft Legal team. The trial judge sanctioned Microsoft's counsel for repeatedly stepping outside of the court's very clear guidelines on this matter.
  • A previous example of a very similar case, where Microsoft were accused of similar behavior, is Uniloc v. Microsoft (2009, USA) - Microsoft have since been ordered to pay $388 million to Uniloc, in a trial conducted by a federal court in Rhode Island, in a decision handed down in July, 2009.
  • Microsoft seem to be developing a history of such actions, with similar companies. Can you help? which? For a claim like this, we should give examples - and if no examples are documented yet, then let's do that.

Please examine & expand the title; [Microsoft - Patents & Business practice - A simple reminder and primer, as follows;]

Related pages on ESP Wiki

External links

Press coverage

Patently-o

Groklaw

General links, temporary storage

  • Groklaw - The Microsoft Litigation Resource Page
  • Groklaw - All things ODF & OOXML
  • [1] Microsoft - A history in the making
  • [2] Wordstar Class Action
  • [3] Visto - The early years
  • [4] Visto - Microsoft Down; Rimm Next?
  • [5] Wordperfect - Novell strikes back
  • [6] The EU & Microsoft (of things ODF & XML & Standards)
  • [7] Microsoft & the EU (The Incentives Balance Test in the EU Microsoft Case: A More 'Economics-Based' Approach?)
  • [8] The Australian Boffins strike back - the CSIRO & Wi-Fi
  • [9] More giants buckle in CSIRO Wi-Fi patent case
  • [10] Microsoft, Fujitsu, Asus settle with CSIRO
  • [11] The little Aussie battler, CSIRO Wins Wi-Fi Patent Settlement
  • [12] Legal experts: Microsoft's stake in Corel 'dangerous'

References