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Court Favors Microsoft in Barnes & Noble 'Patent Misuse' Claim

Microsoft scored a legal victory this week in its intellectual property dispute against bookseller Barnes & Noble over the use of the Android mobile operating system.

Microsoft sued B&N in March 2011, claiming B&N and its hardware partners were infringing Microsoft's patented technologies in the B&N Nook electronic reader tablet devices, which run Android. The open source Linux-based Android OS, largely fostered by Google, is used royalty-free by multiple hardware manufacturers in various mobile devices.

Since Microsoft filed suit, B&N has been working to contest Microsoft's claims. Specifically, B&N said in court filings that five features claimed as intellectual property by Microsoft were "insubstantial" and "trivial," and that Microsoft was abusing the patent system, largely based on its Windows Phone competition with Android-based devices.

Administrative Law Judge Theodore R. Essex issued an initial determination to dismiss B&N's claims of patent misuse on Jan. 31, 2012. The determination is not available as a public document, but the court's description of it suggests B&N lost on its patent misuse claim.

The title of the document is as follows: "Initial Determination Granting Microsoft's Motion for Summary Determination of Respondents' First Affirmative Defense of Patent Misuse" (Document ID 470477).

The dispute is being carried out under Judge Essex's review at a court for the U.S. International Trade Commission (ITC).

David Howard, corporate vice president and deputy general counsel for litigation at Microsoft, affirmed that the judge had dismissed B&N's patent misuse contention.

"Today's action by the ITC makes clear that Barnes & Noble's patent misuse defense was meritless," Howard said in an e-mailed statement provided by Microsoft. "This case is only about one thing -- patent infringement by Barnes & Noble's Android-based devices. We remain as open as ever to extending a license to Barnes & Noble, and invite them to join many other major device makers in paying for the Microsoft-developed intellectual property they use in their devices."

Microsoft is also suing Motorola over Android use, with litigation also occurring at the ITC courts. Initial ITC hearings weren't going in Motorola's favor.

Google, perhaps to protect its hardware partners using Android, has been attempting to buy the Motorola Mobility unit, but the deal is still awaiting final regulatory reviews. Google presumably wants to gain access to Motorola Mobility's patent holdings for defensive purposes should there be future litigation tied to Android. Google has been patent-poor relative to its litigants, which include Apple and Oracle, as well as Microsoft.

Microsoft already has struck licensing deals with HTC and many other device manufacturers over Android use. However, B&N and Motorola have been resisting Microsoft's legal claims strongly.

About the Author

Kurt Mackie is senior news producer for the 1105 Enterprise Computing Group.