Wednesday, May 12, 2010
US Patent Office Affirms i4i Patent - Rejects Microsoft
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The United States Patent and Trademark Office (PTO) has confirmed the validity of the patents held by Toronto-based tech company i4i related to the XML, after a Microsoft's inquiry to put them into a reexamination proceeding.
The United States Patent and Trademark Office (PTO) has
confirmed the patentability of all claims of the U.S.
Patent 5,787,449 ('449) that had been put into a
reexamination proceeding by Microsoft.
Loudon Owen, Chairman of i4i, says, "This is a very
material step in our litigation against Microsoft. Put
simply: i4i's patent is clearly and unequivocally valid.
Even though Microsoft attacked i4i's patent claims with its
full arsenal, the Patent Office agreed with i4i and
confirmed the validity of our '449 patent." Mr. Owen adds,
The i4i dispute is over a method of processing electronic
documents using embedded codes that provide instructions on
how information appears. i4i had accused Microsoft for
infringing a patent relating to the use of XML, or
extensible markup language, in the 2003 and 2007 versions
In March 2007, i4i sued Microsoft for willful infringement
of its '449 patent. Awaiting trial, in late 2008, Microsoft
filed an ex parte application with the PTO seeking a
reexamination of certain claims of the '449 patent. Based
on Microsoft's representations, the PTO agreed to reexamine
the patent. As a matter of procedure, any patent claim
subjected to reexamination should be viewed as only
'provisionally invalid' until the reexamination is
complete. While defendants often tout an interim finding of
'provisional invalidity' as being profoundly important,
what it simply means is the PTO is conducting a serious and
detailed review of an existing patent and that the onus is
placed back on the shoulders of the patent owner to prove
the patentability of the contested claims.
On May 20, 2009, Microsoft was determined to have
willfully infringed i4i's '449 patent. On August 11, 2009,
i4i was granted a Final Judgment against Microsoft that
included both an award of damages to i4i and a permanent
Microsoft unsuccessfully appealed the
decision to the Court of Appeals for the Federal Circuit
late last year, and also unsuccessfully sought a rehearing
of the decision of the Court of Appeals earlier this year.
According to the ruling, Microsoft would be prevented from
selling infringing versions of Word from January 11, 2010.
This applied only to copies of Microsoft Word 2007 and
Microsoft Office 2007 sold in the U.S. on or after the
January 11, 2010. Copies of these products sold before this
date were not affected.
Throughout the process, Microsoft has made extensive
reference to the concept that the patent was 'provisionally
invalidated by the PTO'. Confirmation of the validity of
i4i's '449 patent should put this matter to rest. An NIRC
(Notice of Intent to Issue Ex Parte Reexamination
Certificate) was issued April 28, 2010, and a Reexamination
Certificate will be issued in due course by the PTO which
will formally conclude the reexamination proceeding
favorably for i4i.