Microsoft v. i4i (On appeal at the Federal Circuit)
In the past several years, courts have somewhat weakened patent rights. Three cases have been particularly important: (1) KSR v. Teleflex (making it easier to find an invention unpatentably obvious); (2) In re Seagate (making it more difficult to obtain enhanced damages for willful infringement); and (3) eBay v. MercExchange (making it more difficult to obtain permanent injunctive relief to stop ongoing adjudged infringement). In its appellate brief, Microsoft pushes hard on these buttons – explaining their view that the district court misapplied the law.
This post discusses Microsoft's appellant's brief on the merits as well as the amicus briefs filed by Dell and HP. In a prior post, I discussed Microsoft's separate motion for an emergency stay of permanent relief. The court has granted an expedited schedule and will hear oral arguments on September 23, 2009.
Microsoft's frustrations with the court in the Eastern District of Texas are clear based on the company's preliminary statements in its brief:
In patent cases, even more than most, the trial judge's role as a gatekeeper is crucial. As gatekeeper, the judge must define the metes and bounds of a patent through claim construction and then ensure that the evidence presented by the parties' numerous experts is both reliable and rooted in the facts of the case at hand. And after the jury has rendered its verdict, it is the judge who, before allowing that verdict to become an enforceable judgment, must ensure that the verdict is adequately supported by the evidence and supportable under the law. This gatekeeping function is especially important in patent cases because of the delicate balance struck by patent law to achieve its objective of promoting, rather than stifling, innovation. 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.
This case stands as a stark example of what can happen in a patent case when a judge abdicates those gatekeeping functions.
Microsoft's best argument on appeal deals with claim construction. i4i's asserted claim (see claim 14) covers a method of producing a map of metacodes where mapped content is stored in "distinct map storage means." Microsoft argues that the "distinct" language requires that the mapped content be stored "separately and distinctly." The district court rejected that argument and instead that the "distinct" limitation only required distinct addresses in memory. Because Microsoft Word stores the map and the metacodes in the same file, the company argues that it cannot infringe under a proper construction.
Moving from there, Microsoft argues that (1) the claims are invalid under KSR; (2) the injunction cannot be sustained under eBay; and (3) that the enhanced damage award conflicts with Seagate.
Amicus briefs by HP and Dell focus on the permanent injunction. Those two companies argue that the injunction against Microsoft would severely interrupt their business and harm consumers.
- Microsoft’s Opening Brief on the Merits: File Attachment: Microsoft_i4i_OpeningBrief.pdf (462 KB)
- Dell’s Amicus Brief: File Attachment: 2009-08-24 NONCONF Dell Inc Amicus Curiae Brief ISO Defendant-Appellant ER Mtn to Stay Permanent Injunction.pdf (329 KB)
- HP’s Amicus Brief: File Attachment: 2009-08-24 NON-CONF Hewlett-Packard Co Amicus Curiae Brief ISO Defendant-Appellant ER Motion to Stay Permanent Injunction.pdf (358 KB)
- Decision by Judge Davis: File Attachment: i4iJudgementAgainstMicrosoft.pdf (257 KB)
- The i4i Patent: http://www.google.com/patents?vid=USPAT5787449
- Prior Patently-O Posts on i4i: [Link][Link]
Notes: Asserted Claim 14 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.