Appellate Court Stays Injunction Against Microsoft Word

Microsoft v. i4i (Fed. Cir. 2009)

Without substantive opinion the Federal Circuit has stayed enforcement of an injunction against Microsoft that could have forced the software giant to stop selling its flagship product Word. Absent further rulings, the stay will be in force until Microsoft’s appeal is decided on the merits — likely extending into 2010. In August 2009, the lower court found Microsoft liable as a willful infringer of i4i’s patent relating to xml document processing – a function of Word ’03 and ’07. That court ordered Microsoft to stop infringing by October 10, 2009.

The Stay order indicates that:

“Without prejudicing the ultimate determination of this case by the merits panel, the court determines based upon the motion papers submitted that Microsoft has met its burden to obtain a stay of the injunction.”

Interestingly, the stay order indicates that it is a per curiam decision, but the order was signed by the Federal Circuit Clerk Jan Horbaly “for the court.” I see this as an indication that the judges assigned to the merits panel do not yet want to reveal their identities.

The unfortunate part of this decision is that it does not define what it takes to meet the “burden to obtain a stay of the injunction” – especially in the wake of eBay. How does the court go about deciding whether to stay relief? How important is the fact that briefing of the merits are being expedited? What role did the amicus briefs by HP and Dell play in the decision?

30 thoughts on “Appellate Court Stays Injunction Against Microsoft Word

  1. 30

    Anonymous is right. I assumed, without checking, that Microsoft has simply filed a motion to stay the injunction pending appeal. This case is expedited, and that is highly unusual.

  2. 29

    If the patent is upheld, the patentee can claim treble damages in the period from judgment until eventual settlement. Why seek to cut off such a valuable source of funds from such a well-resourced defendant?

    And if I was for the patenetee I would advise that now is an excellent time for deal-making. Who knows – the CAFC may not be so impressed with the patent.

  3. 28

    It seems that the people who now are using Microsoft Word 2007 also maybe liable for patent infringement.

    Does i4i, the small Canadian company who owns the infringed US Patent No. 5,787,449, have something set up to where Word 2007 users can send them money to settle any infringement claims against them?

    What would a reasonable settlement amount be? Perhaps if each Word 2007 user sent i4i US$10 to US$20, i4i might accept that.


  4. 27

    Mr. Phillips, I’m not sure what you mean when you say that “nothing unusual or accelerated seems to be going on in this appeal.” The district court’s judgment issued on August 17th, and oral argument is scheduled for September 23rd. There’s an order on August 19th that spells this out: MS opening brief due 8/25, i4i brief due 9/7, MS reply and joint appendix due 9/11, argument 9/23. Compare that to FRAP or any other appeal you’re familiar with, and it seems pretty clear that this is running faster than the normal schedule.

    And with good reason, I think.

    Also, if you look at the docket, it appears that the merits panel decided the motion for a stay. Docket entries for orders on prior motions say “BY: MOTIONS PANEL. JUDGE: PROST.” This seems to be consistent with the IOPs.

  5. 26

    It is very common for the Clerk of the Court, Mr. Jan Horbaly, to sign orders. Merits panels are not assigned to appeals until fairly late in the process — after briefing is complete, about two months before oral argument. Before then, any motion in an appeal is decided by either the clerk or the “motions panel,” which is a panel of three judges assigned to decide contested motions that come up in a given month. This is all spelled out in the Federal Circuit’s Internal Operating Procedures (link to See, in particular, IOP No. 2. Nothing unusual or accelarated seems to be going on in this appeal. At least that is the impression of this former Federal Circuit law clerk.

  6. 25

    For what it is worth, the Federal Circuit denied a similar motion earlier this week in the Lincoln v. Transamerica variable annuity case. That order was also signed by Horbaly. I’m not sure how to attach link to order, but you can find it using case number 2009-1403 at this site: link to

  7. 24

    What’s really funny is we have Mooney – who never met a claim to a limited monopoly on an invention that he liked – in effect, defending a real live monopoly.

  8. 23

    Ronk wrote (nice ring to that): “I was actually pulling for Microsoft on this one.”

    I agree, although I’m not a great big fan of MS.

    Kind of hard to make out a case of irreparable harm coming to the plaintiff in allowing damages to be paid or pile up or etc. during the process of appeal.

  9. 22

    Ken Brooks asks, “If the Texas disctrict court is dealt with heavy handedly by the CAFC do yhou think we will hear the Texas Governor suggest seccession, once again?”

    Um, wouldn’t that effectively abolish all Texas (Federal) District Courts?

    Although I suppose it’s possible the governor might not pick up on this nuance…

  10. 18

    ” a credible persuasive defense of the claims. I wonder why.”

    Because REAL attorneys get paid to do that kind of thing Mooney, and they realize that discussions about the merits of claims in blog posts without the full prosecution record before them is better left to sleazebag blog trolls.

  11. 17

    “There’s a mess in Texas…”

    The only mess in Texas, is the one behind that thing with horns that you’re about to step in Mooney. And I don’t see any horns on you boy.

    You’re not here for the rodeo are you?

  12. 14

    IMO this was an outcome-based decision. Making Microsoft stop selling Word before the appeal is decided just wasn’t going to happen.

  13. 13

    Given all the “experts” on software claims who show up here occasionally, I’m surprised nobody has mustered a credible persuasive defense of the claims. I wonder why.

    My bets are on a complete reversal and invalidation. There’s a mess in Texas.

  14. 12

    The CAFC never reveals the composition of its merits panels in advance. They had a brief experiment with it a few years back and didn’t like it.

    Assuming that the merits panel decided this and not a separate motions panel, there’s nothing that “stinks” about the way the order issued. This isn’t personal, and all of the majority opinions signed by judges speak for the institution just as much as the orders signed by the clerk.

  15. 11


    Microsoft has a huge business selling word and they have the assets and solidity to back up any damages that continue to accrue. There is no harm to the patentee and there would be tremendous harm to Microsoft. I would have been surprised if the court had not stayed the injunction.

  16. 9

    Paranoia theory fans: sorry, but is hardly surprising that almost any appellate court would simply delay for a few more months taking one of American’s largest domestic and export products completely off of the world market by a lower court patent decision with the usual good odds of a reversal, for infringement of a very minor component of that product.

  17. 8

    Tell me this doesn’t stink…

    No one wants to be associated with this patently patentee-hostile decision, so they had a clerk sign it – gimme a break.

    On an unrelated note, when someone received something in exchange for something else, in Latin, they call it quid pro quo.

    I wonder if this has anything to do with the onslaught of socialism, where those “elite” who control the means of production can pervert the rule of law to their own ends.

  18. 7

    The Microsoft brief cites Standard Havens v Gencor (897 F2d 511, CAFC 1990) for the rule w/r/t getting a stay of an injunction pending appeal.

  19. 6

    Were there any discussions of inequitable conduct in that case? That always seems a safe bet on politically charged cases such as this.

  20. 5

    If the Texas disctrict court is dealt with heavy handedly by the CAFC do yhou think we will hear the Texas Governor suggest seccession, once again?

  21. 3

    I love the embedded Wikipedia hyperlink, Dennis. Wikipedia and Black’s are my two most used legal references, not counting my dog-eared “Unfair Competition, Trademark, Copyright and Patent – Selected Statutes” book. But if you’re going to highlight “per curiam,” you might want to spell it correctly.

  22. 2

    If it is, the CAFC will eventually do what it did to the E. D. Tex. on its unwillingness to transfer, remand decisions with orders to review with stated checklists.

  23. 1

    This case is on an expedited schedule – largely because Judge Davis (E.D.Tex.) refused to stay relief pending appeal. Is this a roadmap for judges to ensure that appeals in their cases are decided quickly?

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