Microsoft Ordered to Stop Selling MS Word

i4i Ltd. v. Microsoft Corp. (E.D. Tex. 2009)

Texas style, the order from Judge Davis gets right to the point:

In accordance with the Court’s contemporaneously issued memorandum opinion and order in this case, Microsoft Corporation is hereby permanently enjoined from performing the following actions with Microsoft Word 2003, Microsoft Word 2007, and Microsoft Word products not more than colorably different from Microsoft Word 2003 or Microsoft Word 2007 (collectively “Infringing and Future Word Products”) during the term of U.S. Patent No. 5,787,449:

  1. selling, offering to sell, and/or importing in or into the United States any Infringing and Future Word Products that have the capability of opening a .XML, .DOCX, or .DOCM file (“an XML file”) containing custom XML;
  2. using any Infringing and Future Word Products to open an XML file containing custom XML;
  3. instructing or encouraging anyone to use any Infringing and Future Word Products to open an XML file containing custom XML;
  4. providing support or assistance to anyone that describes how to use any infringing and Future Word Products to open an XML file containing custom XML; and
  5. testing, demonstrating, or marketing the ability of the Infringing and Future Word Products to open an XML file containing custom XML.

This injunction does not apply to any of the above actions wherein the Infringing and Future Word Products open an XML file as plain text.

This injunction also does not apply to any of the above actions wherein any of the Infringing and Future Word Products, upon opening an XML file, applies a custom tranform that removes all custom XML elements.

This injunction further does not apply to Microsoft providing support or assistance to anyone that describes how to use any of the infringing products to open an XML file containing custom XML if that product was licensed or sold before the date this injunction takes effect.

This injunction becomes effective 60 days from the date of this order.

In addition to the injunction, i4i was awarded $200 million in compensatory and $40 million punitive damages based on Microsoft's adjudged willful infringement. 

Notes:

  • Read the Injunction Order: File Attachment: 20090811i4iinjunction.pdf (252 KB)
  • Read the Final Judgment: File Attachment: 20090811i4ijudgment.pdf (257 KB)
  • Doug Cawley and Mike McKool (McKool Smith) lead the i4i team; Matthew Powers (Weil) is lead counsel for Microsoft.
  • Microsoft can presumably fix its patent problem by eliminating the .docx format. According to court records, “i4i has presented evidence that it is possible to design a software patch that can remove a user’s ability to operate the infringing functionality.” Alternatively, Microsoft could buy the patent – although the price will now be substantially higher than it was in 2007.
  • Stays pending appeal: Under ther Federal Rules of Civil Procedure, Microsoft has a right obtain a stay of relief pending appeal after it posts an appropriate bond. However, that right only applies to monetary damages. There is no right to stay injunctive relief pending appeal. On occasions, both District Courts and the Federal Circuit will stay injunctive relief pending the outcome of an appeal.
  • Stays pending appeal: The district court has already denied Microsoft’s motion to stay injunctive relief. “The fact of Microsoft’s infringement causes i4i to suffer irreparable harm for every new XML customer that purchases an infringing Microsoft product. To stay any injunction would only prolong that harm without providing any remedy.”
  • Facing OpenOffice: OpenOffice may well be liable as well. If it comes to pass, i4i’s suits against those users may focus on users because no central entity controls its development and distribution (although Sun is a potential target).
  • Bilski?: i4i’s claim 14 may well fail the Federal Circuit’s Bilski machine-or-transformation test. The claim reads as follows:

A method for producing a first map of metacodes and their addresses of use in association with mapped content and stored in distinct map storage means, the method comprising:

  • providing the mapped content to mapped content storage means;
  • providing a menu of metacodes;
  • compiling a map of the metacodes in the distinct storage means, by locating, detecting and addressing the metacodes; and
  • providing the document as the content of the document and the metacode map of the document.

59 thoughts on “Microsoft Ordered to Stop Selling MS Word

  1. Awesome project, Mel! Wow! I love your idea with new use of digi-images! Thank you for sharing tutorial, templates and your wonderful inspiration! more templates easy to download

  2. It looks like OpenOffice.org is safe from this patent, at least. i4i doesn’t think it infringes:
    “i4i said it has looked at OpenOffice and found it doesn’t infringe on its patents.”

    link to gcn.com

  3. Joe:
    Facing OpenOffice: OpenOffice may well be liable as well. If it comes to pass, i4i’s suits against those users may focus on users because no central entity controls its development and distribution (although Sun is a potential target).

  4. OpenOffice doesn’t use custom XML because it uses ODF rather than OOXML as the file format. Microsoft used to tout this as an “advantage” of OOXML over ODF, while critics maintained that it was only part of the standard so that they could import incomprehensible and non-standard proprietary crap into the “open” format that no one else would be able to read.

    And now they have a huge patent judgment against them. Maybe Microsoft should pull its name from that brief asking the Supreme Court not to go too far in upholding Bilski? They’re going to be relying upon it if they have to stop selling Word.

    Or maybe they could adopt the ODF standard and dump OOXML. That would sure be ironic…

  5. The parties in this case were represented by brilliant attorneys, supported by deep benches and huge budgets. Judge Davis has both a strong will and a strong mind. He’ll readily enter summary judgment. If Matt Powers could not defend MSFT from this patent in front of Judge Davis, I doubt any of you other geniuses could either.

    Will the CAFC save MSFT? Without even looking at the patent or the pleadings, I’d predict that the CAFC will accept all of Judge Davis’ factual decisions, will probably agree with all of his legal conclusions, but might find differences of opinion on claim construction.

  6. The “Bilski test” does apply to system claims, but it is entirely unclear what the full test is. Here’s the rub – the Fed Cir in Bilski explicitly stated that they were not going to decide whether the recitation of a computer is sufficient to tie it to a particular machine. As they specifically left this important question unanswered, it is impossible for us to know what is meant by a “particular machine.”

    The amazing part is the Fed Cir did not decide this question because it would have been pure dicta since computer claims were not before them (as admitted by Bilski). Fast forward to now where the Supremes have granted Cert.

    Will the Supremes write some good dicta? Will the Supremes identify the question and leave it unanswered like the Feds? Will the Supremes reprimand the Feds for not deciding important issues they were designed to deside? Will the Supremes create a whole new test for software inventions or maintain they got it right in 1972?

  7. Note that the system claims in this patent were invalidated at claim construction as indefinite because of means plus claims without proper disclosure of structures.

  8. I wanna know the patent prosecutor who wrote this application and the examiner who examined it. It takes a team of dedicated individuals to make a piece of intellectual property of this quality. My hats off to those individuals and the inventors, as well. Do you know how much money was spent on this patent to destroy it. I believe we should all give a big CONGRATULATIONS to those individuals for a job well done. This is what we are all about . . . for we are MONOPOLY MAKERS.

  9. ” there could be a public backlash against software patents”

    Could be? BWAHAHAHHAHAHAHAHAHAHHAAH!!!!!!!!

  10. Thank you JHM for your helpful and witty assistance. (I hope you are clever enough, and I think you are, to know I’m being sarcastic.)

    Current guess as to the ratio of officially sanctioned and sponsored puppets to original posters, 1:2.5

  11. Re the [irrelvant to this case] comment above that “suing individual persons using open-source software for allegedly infringing a patent is going way too far”:
    First, “open-source software” is a copyright enforced restriction, not a right-to-use, has nothing to do with patents, and is no defense to earlier-filed patents. The word “open” is quite misleading.
    Secondly, “suing individual persons” for patent infringement is quite rare, because the costs will normally vastly exceed any damage recovery from the individual.

  12. Cripes on a cracker – a three ring puppet show with counter-positioned puppets have a vigorous debate – how cute.

    “accused of being 6″

    No one has ever accused you of being “6″ Mooney/BigGuy, except you. Boy, you’re really throwing everyone off the trail.

  13. So does this mean that all of us XP using MS Word 2003 users out there will be slightly less inconvenienced by that annoying docx format? I might just have to send i4i a thank you note.

  14. “Applicants got what they deserved there – claiming an ambiguous “system” when they could have easily claimed a “process”/”method” versus an “apparatus.””

    Was actually thinking about Ex parte Atkins (BPAI 2009) and not Benson.

  15. racheal -

    When did Microsoft start infringing? Word97-2003 didn’t support docx. Word2007 outputs docx as a default.

  16. “Tell that to the system claims that were shot down in Benson.”

    Applicants got what they deserved there – claiming an ambiguous “system” when they could have easily claimed a “process”/”method” versus an “apparatus.”

  17. This is an excellent argument in favor of proportional damages, so that the amount of the damages is based on the portion of the product’s value contributed by the allegedly infringed patent. Or better yet, it will inform a coming smackdown by the Supreme Court in Bilski. Not to mention the fact the specific file formats are not cited in the claim language. If suing individual users of open-source software becomes widespread like suing people who download copyrighted music, there could be a public backlash against software patents. I do not advocate downloading copyrighted material, but suing individual persons using open-source software for allegedly infringing a patent is going way too far. There are tens, and maybe hundreds, of thousands of software patents out there. I don’t believe a private individual would hire an attorney to do a clearance search before downloading typical, everyday software. Malcolm Mooney is right, but he doesn’t get enough respect on this blog.

  18. Judges in Texas have made it clear that Bilski only applied to “business” method claims. And, this is not the first decision from Texas on this point. Period.

  19. “Wow, I had a case from that same boutique firm. Based on the way they prosecuted that case I’m not surprised by anything in that decision.”

    I did not look at the Appeal Brief, but why is this an “Informative” Opinion? The analysis section consists of little more than 2 paragraphs on pages 7 and 8 of the Decision. The Appellant apparently wasn’t detailed in their arguments … it happens.

    I just pulled up the Appeal and Reply Brief … it doesn’t look good when they are 10 and 3 pages long, respectively. OK, I’m looking at about 2 pages of argument — this is really sparse. The reply brief maybe has a paragraph worth of arguments.

    Without knowing how cut and dry these arguments were (at least in the mind of the attorney), it doesn’t appear that they really didn’t put a whole lot of effort into them.

    Regardless, I am still curious why this Decision is “Informative.”

  20. “Another goody from 271″

    Wow, I had a case from that same boutique firm. Based on the way they prosecuted that case I’m not surprised by anything in that decision.

  21. As far as Bilski goes….unless the claim truly recites business method style verbiage, Texas will uphold it, not so in California. That is all you need to know.

  22. “BigGuy, it’s not as silly as I thought”

    MM, grant yourself 100 rep points for doing the unthinkable. What poster ever admits that something he/she posted on a blog was less than completely dead on gospel.

  23. Moonbeams, better watch the language, “sleazeball.” Gettin’ a bit close to e-libel there, boy. You are not referring to an anonymous contributor here, but to a named person with deep enough pockets to give your tea bags a good jerk. [If you need inexperienced -- but reasonably priced -- defense counsel, give me a call.]

    Lazarus, with respect to the work you did for Mr. Hyatt, we presume your enthusiasm in unloading on him is motivated by, er… unfulfilled financial expectations? Just guessing.

  24. anytime I see a means plus function limitation in a software case I think of the Aristocrat case and its progeny

  25. “The Bilski test does not apply to the system claims.”

    Tell that to the system claims that were shot down in Benson.

  26. Doesn’t a district court have to follow the ruling of a appellate court?

    Please note, I didn’t say it nullified Bilski, I asked a question. That’s what these things: ? indicate.

  27. Peanut -
    The PTO is applies Bilski to system claims all the time. For in this case n this case they might say that the disclosed –and means for compiling said metacodes — are software, therefore you are claiming a system of software… yadda yadda yadda.

  28. “So, explain it to me.”

    At the risk of being accused of being 6, I’ll start.

    You said: “The court found these claims valid. Therefore, we must assume they pass the machine or transformation test.” That’s just wrong. If you can’t come up with at least 2 reasons why, then I agree with 6, you’re probably not an attorney. And even if your syllogism were correct, you certainly can’t make the further leap to a conclusion that “Bilski is null and void,” as your first comment suggests. Last time I checked, a district court decision can’t invalidate an appellate holding.

  29. The Bilski test does not apply to the system claims. However, the method claims fail the test, at least with respect to how the test is currently being applied by the PTO and courts.

  30. At first glance you’d think this was the worst thing ever to happen to software patents. But, it isn’t that bad considering the exceptions.

    “Therefore, we must assume they pass the machine or transformation test. ”

    Les, you don’t know how courts work. I used to think you were an attorney. Over the course of the last few weeks that is getting les and les likely. (lol)

  31. BigGuy, it’s not as silly as I thought. I hadn’t finished reading the exceptions to the injuction before I wrote my comment. My bad.

    Frankly, I could care less. Like most of these “improvements”, custom xml is just another obvious data manipulation technique that nobody really needs but, if prudently peddled to consumers, will appear to be a profound advance that “you can’t live without.” What you actually get are bugs and incompatibility problems that ruin everybody’s workday.

  32. “What a joke.”

    Which part of 35 USC 271 is a joke, 271(a) (“makes, uses, …”) or 271(b) (“Whoever actively induces infringement …”)?

    I’ve always that 271 is the rock that the patent law edifice is built upon. But hey, what do I know?

  33. issues -
    The issue isn’t a comparison of claimed subject matter.
    The issue is the application of the machine or transformation test. The court found these claims valid. Therefore, we must assume they pass the machine or transformation test. The only way that can be is if the recitation of the storage means is enough to tie them to a particular machine.

  34. “using any Infringing and Future Word Products to open an XML file containing custom XML”

    “instructing or encouraging anyone to use any Infringing and Future Word Products to open an XML file containing custom XML”

    LOLOLOLOL.

    What a joke.

  35. @Les,

    Please read the claims of Bilski’s pending application, as recently published on this blog. Compare the scope of Bilski’s claims to, e.g., claim 1 that you reference above. Report back.

  36. If the following claims are found valid, does that mean Bilski is null and void?

    1. A computer system for the manipulation of the architecture and content of a document having a plurality of metacodes and content by producing a first map of metacodes and their addresses of use in association with mapped content; said system comprising:

    metacode map distinct storage means;
    means for providing a menu of metacodes to said metacode storage means;
    and means for compiling said metacodes of the menu by locating, detecting and addressing the metacodes in the document to constitute the map and storing the map in the metacode storage means; and
    means for resolving the content and the metacode map into the document.

    2. A system as claimed in claim 1 further comprising mapped content distinct storage means.

    3. A system as claimed in claim 1 further comprising raw content distinct storage means.

    4. A system as claimed in claim 1 further comprising means for reading a document having first mapped content and a first multiplicity of metacodes constituting in whole or in part, the menu and detecting, locating and storing the first multiplicity of metacodes, in whole or in part, to constitute the map.

    5. A system as claimed in claim 1 further comprising means for comparing the multiplicity of metacodes in the map with a predetermined set of criteria.

    6. A system as claimed in claim 1 further comprising means for amending the first map to produce a second map.

    7. A system as claimed in claim 1 further comprising means for applying the first map to mapped content to provide first differentiated data.

    8. A system as claimed in claim 7 wherein the mapped content is the first mapped content.

    9. A system as claimed in claim 1 further comprising means for providing a multiplicity of maps in association with a mapped single content.

    10. A system as claimed in claim 1 further comprising means for amending a plurality of maps in consequence of an amendment of mapped content.

    11. A system as claimed in claim 1 further comprising means for amending a plurality of maps in consequence of an amendment of an associated metacode map.

    12. A system as claimed in claim 1 comprising means for amending a first plurality of maps to produce a second plurality of amended maps in a plurality of distinct storage means.

    13. A system as claimed in claim 1 wherein metacode is a description code.

    14. A method for producing a first map of metacodes and their addresses of use in association with mapped content and stored in distinct map storage means, the method comprising:

    providing the mapped content to mapped content storage means;
    providing a menu of metacodes; and
    compiling a map of the metacodes in the distinct storage means, by locating, detecting and addressing the metacodes; and
    providing the document as the content of the document and the metacode map of the document.

    15. A method as claimed in claim 14 further comprising:

    detecting and locating a multiplicity of metacodes constituting the menu in a document;
    storing the multiplicity of metacodes, in whole or in part, in the distinct storage means;
    detecting and locating mapped content in the document;
    and storing the mapped content, in whole or in part, in the mapped content storage means.

    16. A method as claimed in claim 15 further comprising amending the multiplicity of the metacodes to produce a second map.

    17. A method as claimed in claim 16 wherein metacode is a description code.

    18. A method as claimed in claim 14 further comprising comparing the multiplicity of metacodes in the map with a predetermined set of criteria.

    19. A method as claimed in claim 18 further comprising applying the first map to the mapped content to provide a differentiated document.

    20. A method for producing from a document made up of metacodes and content, a map of metacodes and their addresses of use in association with mapped content of the document and stored in distinct map storage means, the method comprising:

    (a) reading the content of the document until a metacode is found;
    (b) copying the content and storing the copied content in a mapped content storage;
    (c) noting in the map the found metacode and its position in the content;
    (d) repeating the processing of (a)-(c) until the entire document has been processed; and then
    (e) providing the document as the content of the document separately from the metacode map of the document

  37. Great news for CS patents.

    The writing may be on the wall even before Bilski is decided. The appointment of Kappos as head of the USPTO and this multimillion dollar judgment are telling.

  38. I haven’t used DOCX yet. Solely to maintain compatibility with outside counsel and partners who still use Office 97-2000. Compatibility mode FTW!

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