Thursday, August 13, 2009

Questionable news coverage of i4i and Microsoft

Tony Bradley writes about i4i and Microsoft and MS Word in a post titled: 5 Reasons Word Will Weather the Patent Challenge:

** 1. The i4i patent is vague. Have you seen the patent in question? The actual patent is attached as Exhibit A to the original court papers filed by i4i. The title of the patent is Method and System for Manipulating the Architecture and the Content of a Document Separately from Each Other. That sounds like XML. Like many patents from the Internet era, the wording seems very broad and the patent seems indicative of problems the United States Patent Office needs to address regarding awarding vague patents.

IPBiz to Bradley: look at the claims, not at the title

**2. Microsoft has its own patent. Microsoft was awarded Patent 7,571,169 earlier this year.

IPBiz to Bradley: in an infringement case, the issue is whether the accused infringer's product falls within the scope of the patentee's claims. Having one's own patent is not a defense to the charge. Whatever patent Microsoft has is irrelevant (unless it might be prior art).

**3. 5. Word is ‘too big to fail'. The United States Supreme Court has ruled previously that injunctions are generally not a reasonable consequence in a patent challenge.

IPBiz to Bradley: that is not what the Supreme Court ruled in eBay.

See also

Patent infringers as criminals? Microsoft and Microsoft Word and i4i.

Will there be Unintended Consequences from the Supreme Court Decision in eBay v. MercExchange?

***In passing, one notes that the decision of Judge Leonard Davis of ED Texas involved many issues.

**Of re-examination:

Microsoft argues that it is entitled to a new trial because the Court excluded evidence
of reexamination of the ‘449 patent. Microsoft’s arguments are meritless. As explained elsewhere
in this opinion, the simple fact that a reexamination decision has been made by the PTO is not
evidence probative of any element regarding any claim of invalidity. Procter & Gamble Co. v. Kraft
Foods Global, Inc., 549 F.3d 842, 848 (Fed. Cir. 2008). Even if it were, the evidence was
substantially more prejudicial than probative. F.R.E.403.

***Microsoft did argue invalidity over prior art:

In three separate motions, Microsoft argues that it is entitled to JMOL or a new trial on the
issues of anticipation and obviousness. The motions involve six instances of prior art, and Microsoft
forwards various arguments concerning how the prior art either anticipates the ‘449 patent or renders
the invention obvious.

***Of Microsoft's own prior work:

Further, with regard to anticipatory prior art under § 102, Microsoft argued to the jury that
its own products, MacWord 5 and WORD 6, anticipated the claims of the ‘449 patent. Microsoft
now argues that the jury’s verdict necessarily rejecting this argument was against the great weight
of the evidence. It is undisputed that Macword 5 and WORD 6 were both sold prior to the critical
date. The parties’ dispute centered around whether a feature generally referred to as “bookmarks”
and its underlying data structure within Macword 5 and WORD 6 constituted “metacodes” and a
“metacode map” as defined by the Court.


The jury was free to disbelieve Mr. Gray’s expert testimony, and there existed contrary
testimony by Dr. Rhyne for the jury to conclude that MacWord 5 and WORD 6 did not meet the
“metacode” and “metacode map” limitations of the ‘449 patent.

***Of obviousness and secondary considerations:

Microsoft further moves for a new trial because the great weight of the evidence supports its
argument that the Rita, DeRose, and S4 references render the ‘449 patent obvious when combined
with Kugimiya. Obviousness is ultimately a question of law, based on underlying factual
determinations. Altana Pharma AG v. Teva Pharms. USA, Inc., 566 F.3d 999, 1007 (Fed. Cir. 2009).
“The factual determinations that form the basis of the legal conclusion of obviousness include (1)
the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences
between the claimed invention and the prior art; and (4) evidence of secondary factors, known as
objective indicia of non-obviousness.” Id. Secondary considerations include commercial success,
long felt but unresolved needs, and failure of others. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). “Evidence of secondary considerations . . . are but a part of the ‘totality of the evidence’ that
is used to reach the ultimate conclusion of obviousness.” Richardson-Vicks Inc. v. Upjohn Co., 122
F.3d 1476, 1483 (Fed. Cir. 1997). In some cases, such evidence is dispositive. Id.

***An interesting argument about burden of proof seems to have been made by Microsoft:

Next, Microsoft argues that it is entitled to a new trial on the basis that the Court improperly
instructed the jury that Microsoft was required to prove invalidity by clear and convincing evidence
regarding prior art not before the PTO. Microsoft bases its claim off of dicta found in the Supreme
Court’s decision in KSR International Co. v. Teleflex Inc. that the rationale behind the clear and
convincing evidence standard seems “much diminished” when defendants present evidence of prior
art not considered by the PTO. 550 U.S. 398, 426 (2007). First, the KSR Court did not specifically
hold that the clear and convincing standard was inapplicable when the PTO did not consider the
particularly relevant prior art. Second, the law remains overwhelmingly that patents are to be
presumed valid and it is the defendant’s burden to prove invalidity by clear and convincing evidence.
See z4 Techs., Inc. v. Microsoft Corp., 507 F.3d 1354-55 (Fed. Cir. 2007); 35 U.S.C. § 282. Finally,
Microsoft has cited no authority firmly supporting its proposed “preponderance of the evidence”
instruction either during the charge conference or now. Microsoft’s argument is overruled.

-->Bloggers might want to look into this argument by Microsoft.

***Of the injunction:

Microsoft moves to stay the injunction on three grounds: 1) Microsoft is likely to succeed
on appeal; 2) Microsoft and the public will be irreparably harmed absent a stay; and 3) the pending
re-examination of the ‘449 patent requires a stay. Whether to grant a stay under Federal Rule of
Civil Procedure 62(c) requires consideration of 1) whether the stay applicant has made a strong
showing that he is likely to succeed on the merits; 2) whether the applicant will be irreparably injured
absent a stay; 3) whether issuance of the stay will substantially injure the other parties interested in
the proceeding; and 4) where the public interests lies.

***Inequitable conduct

Microsoft moves the Court to find the ‘449 patent invalid for inequitable conduct based on
grounds that the inventor failed to disclose the S4 system to the PTO.

--Within the inequitable conduct matter, there is discussion of a government grant proposal-->

First, in 1994, after the
‘449 patent application was filed and two years after S4 was delivered, Mr. Vulpe sought funding
from the Canadian Government and submitted an application to that effect. He submitted a proposal
that, in part, spoke of the ‘449 patent application and represented that “[t]he initial implementation
is embedded into [i4i’s] S4 product.” DX 2395.001. Further, Mr. Vulpe submitted a letter to
potential investors that stated “[t]he basis of the patent and preliminary work on the validation
precedes [i4i].” DX 2051; TT 5/20/09 a.m. at 170:19-171:11. Mr. Vulpe admitted on the stand that
he lied to investors about the creation date of the ‘449 patent. TT 5/15/09 p.m. at 35:24-36:19.
There is also no doubt that Mr. Vulpe understood his obligation to the PTO. TT 5/11/09 p.m. at


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