I4i v. Microsoft (2009, USA)

This page is an overview of the entire conflict. For the Supreme Court ruling, see I4i v. Microsoft ruling by the US Supreme Court on 9 June 2011.

i4i v. Microsoft was a 2009 court case in the USA of software patent litigation where Microsoft was convicted, by a jury, of wilfully infringing a patent of i4i inc. The venue was the East Texas district court. On repeated appeals to the U.S. Court of Appeals for the Federal Circuit, Microsoft lost three times.

The issue at stake was a claimed patent infringement by Microsoft's implementation of "custom XML", a proprietary extension within Word's native OOXML document format. Microsoft was forced to withdraw current versions of Word and to remove or reduce the functionality of the OOXML format from future versions.

i4i inc. has confirmed that the free software OpenOffice.org word processor does not infringe this patent.

Timeline and documents

In chronological order, newest first: (yyyy-mm-dd)

• 2010-11-29: Supreme Court accepts case [1]
• 2010-10-01: Many companies file amicus briefs recommending that the Supreme Court hear the case
• 2010-08-28: MS appeal to Supreme Court (see: Techflash article)
• 2010-05-11: USPTO concludes reexamination, upholds i4i's patent US5,787,449. The reexamination certificate was then published on the 27 July 2010.
• 2010-04-01: Microsoft's i4i patent appeal denied
• 2010-03-10: CAFC affirms the district court's ruling again after a request from Microsoft to reconsider the initial CAFC decision
• 2009-12-22: CAFC affirms the district court's ruling(09-1504.pdf)
• 2009-09-02: Microsoft is granted its request for a stay (delay) in applying the injunction. (Is there a document to back this up?)
• 2009-08-28?: Amicus briefs supporting Microsoft's appeal: Dell, HP (See also: Dell, HP)
• 2009-08-18: Microsoft Motion for Emergency Stay
• 2009-08-11: Judge Davis Memorandum
• 2009-08-11: The opinion
• 2009-08-11: The judgement
• 2009-08-11: The injunction against Microsoft
• 2008-11-21: (?) Microsoft requests re-examination of claims 14-20, citing DeRose and Cowan: 90010347-4.pdf (Hard to read this document; see Talk:)
• 1998-07-28: US5,787,449 - "The '449 patent" issued by the USPTO to i4i
• 1994-06-02: i4i files their patent application

Who is i4i inc.?

i4i inc. ("Infrastructures for Information") is company founded in 1993 by Michel Vulpe. i4i is based in Toronto, Canada. They filed their complaint against Microsoft on March 8th 2007. Microsoft recruited i4i to help them on a number sales opportunities where the customer, the US government, required support for user defined XML schemas, a capability that i4i brought to Word and Microsoft was unable to deliver. Microsoft promoted i4i as the solution the government requirement for XML in Word. In 2003 Microsoft visited i4i to advance the relationship and develop a deeper understanding of software with features similar to the now-disputed CustomXML.

In an undated email which can be placed somewhere, a developer on Microsoft's XML for Word team wrote to a colleague "We saw [i4i's products] some time ago and met its creators. Word 11 will make it obsolete". Word 11 was released in 2003, and this email was probably sent before or soon after Word 11's release.

A patent troll?

The patent is held by "i4i LP" (not i4i inc.), and the litigation is financed by i4i Inc., McLeanWatson Capital and Northwater Patent Fund. According to "Excerpts from Trial Transcript (May 12, 2009 Afternoon)" i4i inc. make an add-on, called x4o, which works with Microsoft's word processor. archive.org has webpages of this product dating back to February 2003 , which show it being on sale since March 2003. According to Microsoft's Motion for Emergency Stay, i4i inc. didn't lose profits when Microsoft released Word 2003 and actually improved its revenue after the release of Microsoft Word 2003.

The "clear and convincing evidence" standard

In late 2010, Microsoft petitioned the US Supreme Court to examine the validity of i4i's patent. Microsoft's claim is that current tests for validity are too strict because they require "clear and convincing evidence" of prior-art, thus presuming the patent is valid and failing to presume the innocence of the accused.

To be more specific, Microsoft is asking that the "clear and convincing evidence" burden of proof be lowered to "a preponderance of evidence" in cases where the evidence was not submitted to the US Patent Office,^{[reference needed]}

at the time that the patent was issued, or reviewed. In this case, Microsoft contends that the I4I technique in question was sold as a part of another product, more than one year before the patent was applied for, which would invalidate their patent. This allegation was not made known to the USPTO - and is in contention, anyway.  Should the Supremes find in favor of Microsoft, the trial will be resubmitted to the lower court, and will have to be tried again, to see if the "on-sale bar" was met or not.

However, the wider question is whether evidence - including prior art - that was not considered by the USPTO upon award of a patent should have a lower burden of proof, when used to attempt to invalidate a patent.

Trial misconduct

$40 million was added to the judgement against Microsoft for making arguments that were "persistent, legally improper, and in direct violation of the Court's instructions". During the trial, Microsoft repeatedly argued that i4i was wrong to demand damages since they themselves don't produce a product (i.e. they were accused of being a patent troll). They do have a relevant product (the x4o add-on), but Microsoft's argumentation was judged to be misconduct because there is no law against what i4i is doing even if they didn't produce a product, and therefore it is not relevant to the case.

• The argument that i4i was a patent Troll was also raised at trial by the Microsoft Legal team. The trial judge sanctioned Microsoft's counsel for repeatedly stepping outside of the court's very clear guidelines on this matter.
• A previous example of a very similar case, where Microsoft were accused of similar behavior, is Uniloc v. Microsoft (2009, USA) - Microsoft have since been ordered to pay $388 million to Uniloc, in a trial conducted by a federal court in Rhode Island, in a decision handed down in July, 2009.
• Microsoft seem to be developing a history of such actions, with similar companies. Can you help? which? For a claim like this, we should give examples - and if no examples are documented yet, then let's do that.
  

Please examine & expand the title; [Microsoft - Patents & Business practice - A simple reminder and primer, as follows;]

Related pages on ESP Wiki

• XML patents
• Microsoft#Microsoft's patent infringements
• List of lawsuits
• Stac v. Microsoft (1993, USA) - a previous conviction for wilful patent infringement
• Case law in the USA

External links

• ZDnet blogs looks at the patent
• i4i's original complaint against Microsoft
• The August 11th 2009 injunction against Microsoft
• The August 11th 2009 judgement
• justia.com's court documents for this case (6:2007cv00113)
• i4i Review Redux, March 2010

Press coverage

• Microsoft to pay $200m to i4i for XML editing
  • same story on techflash.com
  • same story on techdirt.com
• McKool Smith: Judge Upholds Verdict, Enhances Damages, Issues Permanent Injunction Against Microsoft
• MS given 60 days to stop selling Word
• Microsoft knew of the i4i patent in 2001
• 2009-09-23: Judges Hear Appeal Arguments in Microsoft vs. i4i Case

Patently-o

• 2009-08-12: Microsoft Ordered to Stop Selling MS Word
• 2009-08-21: t minus 50: Microsoft Requests Emergency Stay of Injunctive Relief
• 2009-08-25: Microsoft v. i4i: Relevance of the Pending Reexamination
• 2009-08-28: Microsoft v. i4i: Briefing the Appeal
• 2009-09-03: Appellate Court Stays Injunction Against Microsoft Word

Groklaw

• 2009-08-12: The i4i v. Microsoft Orders and Permanent Injunction
• 2009-08-16: Microsoft Files Emergency Motion to Stay Execution of Judgment in i4i
• 2009-08-18: Why didn't Microsoft tell us about i4i's patent litigation during the OOXML standards push?
• 2009-08-18: Microsoft files notice of appeal against i4i ruling; stipulates waiver of bond, begs for stay
• 2009-08-19: Microsoft's Emergency Motion for a Stay Repeats Arguments Already Rejected by District Court
• 2009-08-29: The Dell amicus brief, PDF and text, HP's as PDF
• 2009-09-04: The i4i v. Microsoft Order Staying the Injunction

General links, temporary storage

• Groklaw - The Microsoft Litigation Resource Page
• Groklaw - All things ODF & OOXML
• [2] Microsoft - A history in the making
• [3] Wordstar Class Action
• [4] Visto - The early years
• [5] Visto - Microsoft Down; Rimm Next?
• [6] Wordperfect - Novell strikes back
• [7] The EU & Microsoft (of things ODF & XML & Standards)
• [8] Microsoft & the EU (The Incentives Balance Test in the EU Microsoft Case: A More 'Economics-Based' Approach?)
• [9] The Australian Boffins strike back - the CSIRO & Wi-Fi
• [10] More giants buckle in CSIRO Wi-Fi patent case
• [11] Microsoft, Fujitsu, Asus settle with CSIRO
• [12] The little Aussie battler, CSIRO Wins Wi-Fi Patent Settlement
• [13] Legal experts: Microsoft's stake in Corel 'dangerous'