Microsoft reveals strategy for appeal of Word patent ruling

The case involves i4i's XML-based technology

Microsoft has appealed a final judgment against it in a patent infringement case brought by i4i LP.

The case concerns i4i's XML-based technology, which received Patent No. 5,787,449 from the U.S. Patent and Trademark Office in 1998.


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At stake are sales of Microsoft Word in U.S. markets, which will be enjoined, according to the final judgment. However, Microsoft's appeal states that the ruling will affect "all versions of Word and Office currently available....." Microsoft can't distribute copies of Word containing i4i's patented "custom XML" technology, according to the ruling by a U.S. District Court judge, who confirmed a jury verdict. The prohibition on Word sales takes place 60 days from the judge's ruling, or around Oct. 10.

Microsoft's appeal, filed recently with the U.S. Court of Appeals for the Federal Circuit, essentially argues that the district court's judge was incompetent as a "gatekeeper" and in striking the "delicate balance" needed in patent law disputes.

"That balance can be lost if the district court does not protect the process, and patent litigation then becomes a tax on innovation rather than its guardian," the appeal states.

In a released statement, i4i Chairman Loudon Owen said Microsoft's appeal "captures the hostile attitude of Microsoft toward inventors who dare to enforce patents against them. It is also blatantly derogatory about the court system."

According to the Microsoft's appeal, i4i's patent was only disclosed to "a handful" of Microsoft employees in some marketing materials. Microsoft later came out with a version of Word with functionality similar to i4i's patent.

The appeal continues, "In late 2002, Microsoft released a beta version of Word 2003 that contained all of the functionality accused of infringement. i4i, Inc., which was a member of Microsoft's Developer Network, got an advance copy and evaluated it. But i4i, Inc. did not accuse Microsoft of infringing, even though it knew in fall 2002 that Word did exactly what it later accused of infringement."

The patent doesn't apply to older Office document formats, such as .DOC and .DOT. Rather, it applies to XML document formats (.XML, .DOCX and .DOCM) that "contain custom XML," according to Microsoft's brief.

i4i's patent describes a mapping system that stores metadata separately from the content of the XML document. However, Microsoft's appeal disputes that Word uses this technology.

"Because i4i's own experts admitted that Word does not store a metacode map in a separate file from content, and does not allow for independent manipulation of a metacode map and mapped content, the jury's infringement verdict should be reversed," Microsoft's appeal states.

Microsoft claims "irreparable and immediate" losses for the company if the judgment is upheld. The company was ordered by the district court to pay more than $240 million in damages and other penalties. Microsoft's appeal asks for a reversal of the judgment and a finding of noninfringement. Otherwise, Microsoft is requesting a new trial.

Toronto-based i4i plans to issue a response to Microsoft's appeal on Sept. 7. Oral arguments in the appeal are scheduled for Sept. 23.

Microsoft's position is supported by filings by Dell and HP, according to Microsoft's press agency, and company spokesperson Kevin Kutz indicated Microsoft will continue to fight.

"We believe the court erred in its interpretation and application of the law in this case and look forward to the Sept. 23 hearing before the U.S. Court of Appeals," Kutz said in a statement.

About the Author

Kurt Mackie is the online news editor for the 1105 Enterprise Computing Group sites, including Redmondmag.com, RCPmag.com and MCPmag.com.

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