News

i4i Files Brief Opposing Microsoft's Appeal in Patent Case

• By Kurt Mackie
• March 16, 2011

Continuing the legal battle over "custom XML" technology, i4i LLP has filed a U.S. Supreme Court brief contesting Microsoft's appeal.

In May 2009, a jury found Microsoft had willfully infringed Toronto-based i4i's patent (U.S. Patent 5,787,449) in several older versions of Microsoft Word. A lower court in East Texas ordered Microsoft to pay i4i more than $290 million in damages. Last November, the Supreme Court granted Microsoft a hearing to appeal the decision.

Microsoft is now arguing before the Supreme Court that the standard for disproving a patent is too high in a particular instance. The company's lawyers contend that the courts do not require "clear and convincing evidence" to disprove a patent when the United States Patent and Trademark Office (PTO) lacked prior-art information before approving the patent. Microsoft claims to have amicus-brief backing from Apple, Google, GM, Verizon and the Electronic Frontier Foundation, among others, in this case.

i4i's brief before the Supreme Court argues that Microsoft is seeking to "lower the standard of proof" in patent cases in a way that "conflicts with over a century of judicial precedent," according to i4i's press release. Doing so would "discourage innovation," upset expectations and lead to "marginalizing the United States Patent and Trademark Office," i4i's announcement explained.

The Supreme Court is scheduled to hear the oral arguments from i4i and Microsoft on April 18. Barring further appeals, the Supreme Court is expected to deliver its decision by the end of June.

In addition and apart from these legal proceedings, Microsoft is actively backing Congressional legislation, currently under consideration, that would change some longstanding legal and procedural rules associated with the U.S. patent process. One of the key proposed changes would be replacing the current "first to invent" rule under the U.S. patent system with the "first to file" rule. The first to invent rule allows for the assessment of materials that may show that the first filer wasn't necessarily the first inventor of a technology.

Horacio Gutierrez, Microsoft's corporate vice president and deputy general counsel, recently praised the Senate's passage of S.23, or the "America Invents Act" (PDF download). He claimed that the legislation will provide the U.S. PTO with resources it needs and "help eliminate questionable patents."

The next step for S.23 appears to be reconciliation at the House of Representatives, which has its own H.R. 243 legislation (PDF download). Usually, the House introduces legislation for consideration by the Senate. The backward approach in this case apparently is being carried out to avert past patent-law revision attempts that died in the Senate.

Some industry pressure groups that favor a change in the U.S. patent laws have voiced concerns with some aspects of S.23. Those organizations include the Innovation Alliance (including Digimarc, LSI, Qualcomm and others) and the Coalition for Patent Fairness (including Adobe, Apple, Cisco, Dell, Google, Intel and others).

Another group, the Professional Inventors Alliance (PIA), sees the America Invents Act as "inventions migration to China, India, et al.," according to an e-mailed comment from PIA President Ronald J. Riley. The idea is that foreign countries or large companies might use a first-to-file rule to shore up promising technologies and cut out smaller inventors.