Microsoft v. i4i: Briefing the Appeal

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.

Documents:

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.

38 thoughts on “Microsoft v. i4i: Briefing the Appeal

  1. 38

    Like Jason Lupo says in his opinion about the Microsoft vs i4i case, Microsoft should just refocus their overall strategy on the XBOX 360 or PC platform gaming.

    -Luke

  2. 37

    Malcolm, I’m not so sure. Storing data and meta codes in the same file may not be storing them in “distinct” storage locations. We should see what i4i has to say on this issue.

  3. 36

    Heller: “I think the argument about “distinct” boils down to what is necessary to permit independent manipulation of the two kinds of data.”

    And the prosecution history is clear that, as far as the applicant was concerned, the data can’t be stored in the same file. Argument over. The problem with the district court’s construction of “distinct” is that it appears to be so broad that it encompasses what was disclaimed.

    Liebel-Flarsheim to the rescue.

  4. 35

    “Malcolm: the patent seems to avoid specifying how exactly the metacode map and text are stored as much as possible, other than the key feature of them being seperate. This is probably wise; there are other ways of storing them like databases, version control systems, network file systems, and likely more I can’t think of. Incorporating irrelevant details like this sounds like a bad idea.”

    I think the argument about “distinct” boils down to what is necessary to permit independent manipulation of the two kinds of data. To MS, this means the two kinds of data have to be stored in two files, albeit, it does not appear that file storage is described in the specification. But during prosecution, the applicants did say that the data could not be stored in the “same file.” MS brief at 26 in relation to the Mizuta reference. This clearly implies that the data be stored in something which is not the same “file” which ordinarily would mean “two files” but which according to the court could also mean distinct locations in memory.

    Now I can clearly see that if data is stored in distinct locations in memory, they can be independently manipulated so long as some addressing was available to identify their respective locations; but what is this if not two “files.”

    I find it bothersome that the answer is not provided by the specification. The phrase is verging on the indefinite, which tell me the real problem here might be a written description problem.

  5. 34

    Makomb, I have a question for you. To be valid, a patent claim has to be supported by an enabling disclosure; the specification has to give the skilled reader enough teaching to enable the reader to put the claimed invention into effect, without needing to do any “inventing” to get there. Of course, the less detail in the spec, the more the PHOSITA has to rely on own knowledge. Then again, if the PHOSITA has a lot of own knowledge, a lot more things are obvious to that same PHOSITA. And there you have it, a “squeeze” between obviousness and enablement. This is what you can do (at least in Europe) when attacking the validity of a claim. Here, if the reader needs no detail to “seperate”, but can do it from their pre-existing background knowledge, isn’t then the “seperate” concept, as such, at that level of conceptuality, obvious?

    The mantra “Be careful what you ask for” should apply. Ask for a monopoly on any and every realisation of a mere concept, by all means, but then face the consequences on validity. Ask for a narrower claim, enjoy an easier ride on validity.

  6. 33

    I’m interested in what Makomk writes at 3.54pm in response to MM. Thus:

    “Malcolm: the patent seems to avoid specifying how exactly the metacode map and text are stored as much as possible, other than the key feature of them being seperate. This is probably wise; there are other ways of storing them like databases, version control systems, network file systems, and likely more I can’t think of. Incorporating irrelevant details like this sounds like a bad idea.”

    Now from his/her earlier remarks, Makomk appears to be a technical expert with an interest in software patents, rather than an attorney. So, it’s not surprising that he sees a rational strategy in writing broad claims and on purpose avoiding including any narrower claims or detailed teaching of at least one way to realise the concept. That would be a “bad idea” he surmises.

    I suppose he thinks it’s a bad idea because then the inventor will be cabined and confined to the specific embodiment described in detail, and no more. So best leave it out, eh?

    Which brings us back to Malcolm, and the validity of a patent which depends exclusively on the patentability of:

    “….the key feature of them being seperate…”

    Now, is that old, and is it obvious? Can the district court cope with that question?

  7. 32

    You can’t discuss claims intelligently without considering the specification. That hasn’t stopped Mooney from doing so for years.

    What does that say about the “intelligence” of Mooney’s endless and incendiary commentary on bald claims?

    I’ll leave that to everyone to figure out.

    You can’t fix stoopid.

  8. 31

    Malcolm: the patent seems to avoid specifying how exactly the metacode map and text are stored as much as possible, other than the key feature of them being seperate. This is probably wise; there are other ways of storing them like databases, version control systems, network file systems, and likely more I can’t think of. Incorporating irrelevant details like this sounds like a bad idea.

    I’m not sure exactly why they didn’t need the doctrine of equivalents – you’d have to ask a lawyer – but I expect the patent’s just sufficiently broad so as to cover Microsoft’s product without resorting to it.

  9. 30

    WOW!!!! the inventor of the laser just took some “crystal” and pumped some “energy” through it. Big Deal.

    Yeah, and that guy that “invented” the transistor. All he did was just take some “silicon” (which everyone knows has been lying around on the beach as SAND for a long time) and put some “wires” on it.

    Another Big Deal.

    /sarcasm OFF

  10. 29

    “there are complications. While Office documents are superficially a single file, they’re actually a Zip archive containing several files.”

    But archived files have been around for a long time. Surely the use of the alleged invention with archived files was contemplated and addressed in the specification. Doesn’t this variation show up in a dependent claim?

    Maybe infringement under the doctrine of equivalents would be more fitting, unless of course there were amendments during prosecution …

  11. 28

    “Yes, that is what this is about – and i4i had a very profitable product range based around this distinction. Imagine you’ve got a form with some standard structure, done as a Word document, and back-end tools need access to the fields of this form. Normally, the back-end tools would need to speak the Word document format. With the i4i products, you can seperate the text out from the formatting and your back end tools only have to deal with the text.”

    WOW!!!!!!!!!! THAT IS INCREDIBLE!!!!!!

    I suppose then somebody “invented” meta-meta data and figured out different “new” ways to store and retrieve it. And then of course there was meta-meta-meta-data, and different “new” ways to store and retrive it! I can only imagine the incredible struggles and costs, not to mention the mental ingenuity, that went into the creation of the highly complex software to handle those incredibly complex “acts” of retrieving and storing data. Without patent protection, nobody would ever bother to go through the enormous labor and effort to achieve these massively profitable results.

  12. 27

    “if that’s what this “invention” is about — whether some data is stored in the same file or a separate file relative to other data — it shows once again why patenting software is a joke.”

    Yes, that is what this is about – and i4i had a very profitable product range based around this distinction. Imagine you’ve got a form with some standard structure, done as a Word document, and back-end tools need access to the fields of this form. Normally, the back-end tools would need to speak the Word document format. With the i4i products, you can seperate the text out from the formatting and your back end tools only have to deal with the text. Even better, their i4o product lets you do this with arbitrary XML data formats, so you can integrate it with third-party systems cheaply, easily and fast.

    This isn’t some minor technical detail – it’s at the core of both i4i’s business model and the claimed benefits of Microsoft’s Custom XML.

    re. the original blog post: You may be right that the claim construction is the best target for appeal – IANAL, so I certainly can’t argue with you there – but there are complications. While Office documents are superficially a single file, they’re actually a Zip archive containing several files.

    This is a common format – every decent OS, and pretty much every computer sold in the last 8 years, has the ability to “open up” the archive and delete, add or replace files – for example, to extract or modify the Custom XML “text” part with a different one. Likewise, I can write a program in (say) Python to do the same thing, using the standard zip access support, without caring about the *existence* of the metacode portion let alone its contents. In all the important ways, they’re stored distinctly. The court decision makes sense, at least from a technical perspective.

  13. 26

    “The opponents of intellectual (and usually of private) property have been attacking patents on several fronts and winning seemingly small victories for years. The result is a patent weakened in random, uncoordinated ways and, thus, weakened far too much.”

    Nice job of linking the specter of communism to those who might express concerns about the limits of patent protection.

    But I’m sorry, I don’t follow the rest of your argument – how does this case, in which the patentee won damages as well as a permanent injunction, support your claim that patents have been “weakened far too much”?

  14. 25

    “Perhaps this case will snap the bench out of its stupor and show that a candle dwindles far faster if you burn it at both ends.”

    Let’s hope not!

  15. 24

    Perhaps this case will snap the bench out of its stupor and show that a candle dwindles far faster if you burn it at both ends. The opponents of intellectual (and usually of private) property have been attacking patents on several fronts and winning seemingly small victories for years. The result is a patent weakened in random, uncoordinated ways and, thus, weakened far too much.

  16. 23

    Re: “Microsoft chose the strategy of waiting to file the reexam in hopes of staying the case on the eve of trial.” [“James”]

    Maybe, but I find it hard to imagine that anyone even lightly following E.D. TX patent cases and their judges would think that that tactic would work now, if it ever did. [There are more typicial unreality and decision avoidance reasons for not filing reexaminations until way too late.]

  17. 22

    After having read the brief, the spec, and some of the apps responses to OA’s I see why MS is arguing the way they are. They’re saying it is prosecution disclaimer of claim scope. And from what I can read, they have a decent case. And the reason they latched onto “separate” is because that was how the applicant themselves answered OA’s. MS does have a good case at the very least in so far as the examiner specifically called out the shinanigans app is trying to pull, but the app insisted that it meant what MS is arguing for today so the examiner let it go.

    Personally, I don’t think the examiner was justified in letting it go. BRI and this claim is DOA on the steps of the office.

    Applicant (in the reexam, called applicant or patentee?) is arguing one way to get around the office’s rejections, then arguing the opposite to get infringement.

    “if that’s what this “invention” is about — whether some data is stored in the same file or a separate file relative to other data — it shows once again why patenting software is a joke.”

    That’s what the “distinguishing feature” boils down to. They allege another distinguishing feature, but the courts weren’t buying I don’t think.

    “because finding balls is a task that software examiners appear to have been instructed to spend little time on.”

    I loled.

  18. 20

    Paul,

    Microsoft chose the strategy of waiting to file the reexam in hopes of staying the case on the eve of trial.

  19. 19

    Tino, I’m not sure I buy your analogy about the sock drawer. But I will say this: if that’s what this “invention” is about — whether some data is stored in the same file or a separate file relative to other data — it shows once again why patenting software is a joke. Seriously, is such an invention that difficult to claim? What does it mean to compile a map “in the means”? Does the compiling step have to be carried out by machinery “in the means”? How else could a map of metacodes be compiled other than “locating, detecting, and addressing” metacodes?

    The claim is so poorly written it sickens. But it’s par for the course isn’t it? A bunch of handwaving functions, and incomprehensible syntax, and of course every embodiment is enabled because nothing unexpected actually happens. It’s just providing data, organizing it, storing it in “a special way” and outputting it, with some of the data given a “special name”. Anyone can “invent” (or re-invent) this garbage simply by “inventing” a new nomenclature. It’s called hiding the ball and it works because finding balls is a task that software examiners appear to have been instructed to spend little time on. I doubt that Kappos will change that.

  20. 18

    “The difference can be seen in the first dictionary’s def and in the second dictionary’s def.”

    —-
    2. Easily perceived by the senses or intellect; clear
    —-

    I don’t see anything in this second definition that requires a separate file.

    Unless there are particular facts to be derived “in light of the specification” to indicate otherwise.

    So how does the brief overcome this apparent obstacle?

  21. 17

    “The addition of the word ‘means’ in Claim 14 or in Tino’s example is totally unnecessary; it only triggers the application of 112(6) which narrows the scope of the claim.”

    Or not. “Without a ‘means’ sufficiently connected to a recited function, the presumption in use of the word ‘means’ does not operate.” York Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1574 (Fed. Cir. 1996).
    A “mere incantation of the word ‘means’ in a clause reciting predominantly structure cannot evoke §112, [¶] 6.” Id.

    Also, the court must “decide on an element-by-element basis, based upon the patent and its prosecution history, whether [§]112, [¶]6 applies.” Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996).

    There is no requirement that “the word ‘means’ be followed by ‘for performing a specified function without the recital of structure, material, or acts in support thereof’.” If it doesn’t, then “means” simply means “means.”

  22. 16

    Tino: It means whatever is described in the spec and its equivalents. So it could be a sock drawer or it could be a separate dresser.

    I would also suggest that “distinct map storage means” does not comply with the 112(6) which seems to me to require that the word “means” be followed by “for performing a specified function without the recital of structure, material, or acts in support thereof”.

    A proper claim element of this combination of steps would be: stored in a means for distinctly mapping the metacodes and their addresses.

    The addition of the word “means” in Claim 14 or in Tino’s example is totally unnecessary; it only triggers the application of 112(6) which narrows the scope of the claim.

  23. 15

    “The district court rejected that argument and instead that the “distinct” limitation only required distinct addresses in memory.”

    What other kinds of addresses in memory are there? Indistinct addresses?

    Mr. Mooney

    I think the claim recites “distinct map storage means”. So the issue is whether infringement requires a map to be stored in its own separate and distinct file, or whether a map that shares space with other data in a single file is still being stored in a distinct place.

    Put more prosaically, does a “distinct sock storage means” mean a separate sock drawer in a dresser, or does it require a separate dresser with nothing but socks?

  24. 14

    “but it seems that i4i would like to read the term out of the claim”

    I’m going to have to agree. On its face it is as the judge says, but when one considers the claim, if they didn’t mean for the “means” to be distinct (i.e. different) from the other means, then what was the point in including the term? i4i is playing a dangerous game of read the limitation out of the claim. They aren’t examiners, and therefore I doubt if they have the proper expertise to properly accomplish this task.

    As an aside, if I were MS, I would have argued for “different” not “distinct and separate”.

    link to thefreedictionary.com

    The difference can be seen in the first dictionary’s def and in the second dictionary’s def.

    Essentially i4i argues for the first dictionary’s def, while MS is arguing for the second. Using the first def reads the term out of the claim for all practical purposes. All means in a patent claim are “readily distinguishable from all others”.

    I haven’t read the spec yet, but I predict a win for MS.

  25. 13

    Paul, I think the brief criticizes the judge’s specific decisions forcefully without criticizing the judge personally. At times the brief describes the errors below in general terms, but the specifics are in the brief.

    To say that the judge failed to perform his proper gatekeeping function, missed things he should have caught, and issued a decision that doesn’t withstand scrutiny–and, critically, to explain these things in detail in the brief–is to point to the sorts of errors at trial that appellate courts can correct.

    I think your general observation is correct, and I’ve read a lot of briefs that read like the content-free ranting of a sore loser, but this one is actually quite good.

  26. 11

    LOL indeed. Listen sleazebag, I can’t make up for your profound ignorance and partisan rancor in one simple post.

    Now give Sarah back her shoes.

  27. 10

    “Very astute analysis of the “nuances” of the claim,”

    LOL. Look, Sarah, er, Blimpy, why not just explain to everyone what what other kinds of addresses there are in memory besides “distinct” addresses? One might have imagined the term to have some meaning but it seems that i4i would like to read the term out of the claim.

    Or is this another of those millions of circumstances where you will plead ignorance and leave it to the (paid) “experts”?

  28. 9

    “providing” “providing” “compiling” “locating” “detecting” “addressing” “providing”

    Very astute analysis of the “nuances” of the claim, sleazebag.

  29. 8

    Arguing the court’s “gatekeeper” role made famous in Daubert…very interesting argument…don’t know if I’ve seen Daubert invoked in a patent case…

  30. 7

    “providing” “providing” “compiling” “locating” “detecting” “addressing” “providing”

    What a joke.

    Microsoft’s argument sounds right on, based on a plain reading of the claim (which appears to have been drafted by an infant).

    “The district court rejected that argument and instead that the “distinct” limitation only required distinct addresses in memory.”

    What other kinds of addresses in memory are there? Indistinct addresses?

  31. 6

    I am, as usual, left wondering why, if the prior art is as solid as it sounds in appellant briefs, a REEXAMINATION was not promptly filed BEFORE being sued, instead of leaving issues of computer technology and terminology to lay juries under greatly increased burdens of presumed validity, clear and convincing evidence, and goverment blue ribbons and seals on the patents?

  32. 5

    Maybe this case would be better sylized as Microsoft v. THE GREAT STATE OF TEXAS? You know what they say . . . don’t mess with Texas. Personally I am rootin for the Longhorns 🙂

  33. 3

    Criticising judges below in general in an appeal, as opposed to specifics of the decision below, can dangerously backfire. The CAFC appeal from Polaroid v. Kodak [the largest patent infringement damages award ever] was a good example.

  34. 1

    So is this unusually early 9/23/09 hearing date the oral argument for the entire appeal, rather than just on the motion to stay the D.C. granted injunction until the appeal is decided, as originally thought?

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