US government sides against Microsoft in Supreme Court patent case

Oral arguments to begin on April 18 with technology companies rallying behind Microsoft in hopes of software patent reform, and government, science and venture capitalists siding with i4i

The U.S. government itself has come out against Microsoft in a Supreme Court case that may decide the way patents are protected. The U.S. solicitor general, which represents the federal government in the highest court, on Friday filed an amicus brief in support of i4i.

The U.S. government itself has come out against Microsoft in a Supreme Court case that may decide the way patents are protected.

The U.S. solicitor general, which represents the federal government in the highest court, on Friday filed an amicus brief in support of i4i, saying that the U.S. Patent and Trademark Office should not be second-guessed by a jury.

Indeed, i4i, which won a $290 million patent judgment against Microsoft, has now accrued 22 amicus briefs in its corner, which represent more than 100 companies, organizations and individuals, including the U.S. government, individuals from the military, and venture capitalists. Compare that to Microsoft's 20 amicus briefs, which represent about 60 companies and individuals, including Google, Apple, Cisco, Intel, Red Hat, the Electronic Frontier Foundation and 37 law and economics professors.

STRANGE BEDFELLOWS: Red Hat defends Microsoft in i4i patent dispute

Additionally, IBM and five others have weighed in with opinions on the case via amicus briefs but have not offered support for either party in this case, offering opinions for the Supreme Court to consider before it rules. That ruling is expected in June, with oral arguments slated to begin on April 18.

The Microsoft vs. i4i patent case has become the new rallying point among those that want to see software patent reform, including open source advocates. The technology industry is generally lining up in favor of Microsoft (making for some strange bedfellows defending Microsoft, such as Red Hat). In i4i's corner are representatives from an impressive array of other fields particularly from science, university research, military and the government -- even the U.S. Patent and Trademark Office itself.

Ideally, it should be Congress that tackles the issue of a software patent system run amok, but session after session passes with no real fix. Those wanting software patent reform claim the USPTO frequently issues so-called "bad" patents for software, meaning patents for software "business processes" that don't meet the statutory standard for a patent. Because a software patent can cover a wide variety of how the business process is implemented, discovering all the appropriate existing patents when applying for new ones (known as "prior art") is difficult, expensive and inconclusive.

At issue in Microsoft v. i4i Limited Partnership, according to the Supreme Court blog, is how much proof someone must come up with to prove that a patent is invalid. "Someone charged with violating a patent can avoid liability by showing that the patent is invalid (meaning that the invention does not meet the statutory criteria for obtaining a patent). The question is whether that invalidity must be proven by clear and convincing evidence," the blog states.

Microsoft and its supporters are arguing that the "clear and convincing" standard inordinately raises the burden of proof to invalidate a "bad" patent. They are advocating a standard known as a "preponderance of the evidence" which could ask the jury to consider more heavily evidence of prior art that the USPTO did not consider when granting the original patent.

David Howard, Microsoft's corporate vice president and deputy general counsel for litigation, explains:

"This case can be summed up in one word -- balance. The current approach taken by the Court of Appeals improperly tilts the scales to reward invalid patents. That approach needs to be corrected in favor of a system that ensures the process for obtaining and defending patents is clear, reasonable and doesn't unduly burden the system or innovation. When a patent issues, despite the fact that the Patent Office never had an opportunity to review the relevant prior technology, it enables the holders of those dubious patents to attack innovative companies with costly lawsuits. We believe a better balance will benefit all patent holders and innovators."

i4i's supporters say if that standard is not upheld, it lowers the burden of proof to invalidate a "good" patent. i4i obtained a big feather in its cap when the federal government officially came down in favor of the i4i argument. The amicus brief from the U.S. solicitor general says that the USPTO can be trusted to be the expert, over a jury:

"The clear-and-convincing-evidence standard also furthers the reliance interests created by a patent grant by affording the patent holder enhanced protection against an erroneous jury finding of invalidity. By allowing a lay jury to second-guess the PTO's judgment even in close cases, the preponderance standard would diminish the expected value of patents and would reduce future inventors' incentives to innovate and to disclose their inventions to the public."

This counters arguments made on behalf of Microsoft such as this one from the amicus brief filed by the Computer and Communications Industry Association:

"By making questionable patents hard to invalidate, the clear-and-convincing standard creates an artificial incentive to apply for patents. It induces more applications and more patents, especially weak, marginal, and invalid patents." [PDF]


It has been almost two years since i4i won its $290 million judgment against Microsoft. i4i claimed that Word's custom XML feature violated i4i's patent on the technology. But more important than the money, the ruling took the almost unheard-of step of issuing a permanent injunction that stopped Microsoft from selling copies of Word that used the disputed XML technology. This affected Word 2007, Word 2003 and Word for Mac 2008. That injunction took effect on Jan. 11, 2010, and all legal attempts to get it overturned failed. Microsoft has since removed the disputed XML technology from affected editions of Word that are still available for sale (Word 2007). In November, the Supreme Court agreed to hear the case.

i4i is not a so-called patent troll, meaning that the company didn't buy the patent in order to shake down others for infringing on it. The company's current CEO, Michel Vulpe, and Stephen Owens filed for the patent in 1994 and it was awarded in 1998 (patent No. 5,787,449). It covers a process that makes it possible for computer users to use regular word processors as XML/SGML editors. On the other hand, just because i4i came by this patent in earnest, doesn't mean it isn't the kind of "bad" software patent that has turned software patents into a mockery.

Microsoft has tried various methods of getting i4i's patent invalidated, to no avail. Microsoft has twice sought an administrative reexamination by the USPTO of the patent, and the USPTO upheld its validity both times.

Hope that the Supreme Court would end the software patent problem had previously been put on the Bilski case, which could have all but eliminated the problem if the Supreme Court had issued a ruling that made "business process" patents difficult or impossible to obtain. Most software patents fall into the "business process" category. The Supreme Court's ruling on Bilski, however, managed to sidestep that issue and create more confusion, not less.

Julie Bort writes the Microsoft Update and Source Seeker blogs for Network World's Microsoft Subnet and Open Source Subnet community sites. Follow Bort on Twitter @Julie188.

Copyright © 2011 IDG Communications, Inc.

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