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Microsoft Considering Legal Options After i4i Patent Validated

Microsoft has been dealt another blow in its ongoing patent infringement suit with i4i, a Toronto-based developer of collaborative content solutions.

On Tuesday, i4i announced that the United States Patent and Trademark Office (PTO) had validated i4i's patent on certain "custom XML" technology. This XML-based technology creates a metacode map to manipulate a document's structure without reference to content. It allows a document such as a Word file to be converted to XML without loss of content.

"This latest ruling is an affirmation that the patent is legitimate and literally takes Microsoft's fundamental argument away," said an i4i spokesperson in a telephone interview.

In 1994, i4i filed for a patent on the technology (U.S. Patent 5,787,449). In March of 2007, i4i sued Microsoft, alleging the software giant had infringed i4i's patent by including the technology in versions of Word with XML editing capabilities. In 2008, a federal court jury in Texas sided with the plaintiff and awarded i4i $290 million in damages plus court costs and interest. The court also ordered Microsoft to stop selling versions of Word with the technology in the United States.

In response, Microsoft issued a patch for Word versions 2003 and 2007 that disables the technology, but it also filed an appeal. The initial appeal was blocked in December 2009 by the U.S. Court of Appeals, but Microsoft countered by filing for an en banc review that would have 12 judges consider the courts' decisions.

In March, the court issued a revised opinion (PDF download) indicating that Microsoft willfully infringed on i4i's 449 patent and reconfirmed i4i's motion for a permanent injunction. On April 1, the court denied Microsoft's request for an en banc review.

Microsoft had asked the court to reexamine the patent for validity. The U.S. PTO decision validating the patent may dampen those prospects.

"Our patent claims were put under intense scrutiny by the PTO during its reexamination and this decision is a resounding confirmation and a further validation of the '449 patent," said Michel Vulpe, i4i founder and coinventor of the technology, in a released statement.

Although i4i sees the USPTO decision as a watershed moment, Microsoft may not be giving up yet.

"We are disappointed, but there still remain important matters of patent law at stake, and we are considering our options to get them addressed, including a petition to the Supreme Court," said Kevin Kutz, director of public affairs for Microsoft, in an e-mailed statement.

According to i4i, Microsoft has 90 days from April 1 to apply for a writ of certiorari to request a hearing at the Supreme Court.

About the Author

Herb Torrens is an award-winning freelance writer based in Southern California. He managed the MCSP program for a leading computer telephony integrator for more than five years and has worked with numerous solution providers including HP/Compaq, Nortel, and Microsoft in all forms of media. You can contact Herb here.

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