Examine the patent that made selling Microsoft Word a crime

Examine the patent that made selling Microsoft Word a crime

Summary: Updated: Microsoft is barred from selling any Microsoft Word products that can open XML files (.xml, .

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Updated: Microsoft is barred from selling any Microsoft Word products that can open XML files (.xml, .docx and .docm), according to a U.S. District Court ruling in favor of i4i, a small Canadian company that sued the software giant for patent infringement.

What's this mean (Techmeme)? For now, not much. Microsoft will appeal and the legal proceedings will continue. But examining the patent, awarded in 1998, may be instructive. How thin is this patent (not to mention i4i's original complaint)? I grabbed the pertinent documents:

Download the PDFs in the case: i4i's 2007 complaint against Microsoft (with patent in question), the Aug. 11 injunction, and judgment against Microsoft.

According to the injunction, Microsoft is enjoined from selling "Microsoft Word 2003, Microsoft Word 2007, and Microsoft Word products not more than colorably different from Microsoft Word 2003 or Microsoft Word 2007." Microsoft also can't offer support or basically use XML.

I'm not patent lawyer, but i4i's patent (Exhibit A in its original complaint) sounds a bit generic. Meanwhile, Microsoft may already have a workaround anyway. Earlier this month, Microsoft won a patent for XML in word processing documents. Microsoft's patent is "directed at providing a word-processing document in a native XML file format that may be understood by an application that understands XML, or to enable another application or service to create a rich document in XML so that the word-processing application can open it as if it was one of its own documents."

Also seeMicrosoft patents XML word processing documents

Here's a look at i4i's case (download the complaint for the images and diagrams).

And the patent features many drawings that are a derivative of this one:

At least McKool Smith, the law firm representing i4i, got a good press release out of it. Judge Leonard Davis of the U.S. District Court for the Eastern District of Texas signed a permanent injunction against Microsoft and ordered total damages and interest of more than $290 million.

Under the ruling, Davis found that anything that touches custom XML formatting in Word infringes on i4i's patent. The patent, No. 5,787,4999, covers software designed to manipulate document architecture and content.

Davis ruled that Microsoft should pay $200 million in damages, $40 million for willful infringement, $37 million in prejudgment interest and damages by the day. However,

According to court documents, i4i filed its original complaint in 2007.

Many of the documents in the case were sealed, but the original complaint is worth a read. Did Microsoft get hosed in this one?

Update: A bevy of Talkbacks below ask about Open Office and other suites---basically anything that uses XML. I contacted, Douglas Cawley, the McKool Smith attorney leading the i4i case, and got the following:

Unfortunately, i4i can't reveal its licensing and enforcement strategy at this time.

Cawley added that i4i has no other pending suits at the moment.

Update 2: i4i tell CNet News that it's not out to destroy Microsoft. It just wants its patents recognized---and some dough.

Topics: Legal, Collaboration, Microsoft, Software

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335 comments
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  • XML Dead?

    Does this mean any commercial software can't use XML without a license? Maybe I have misunderstood, but that's how it seems. I don't like M$, but this doesn't seem like a fair or appropriate ruling.
    backpacker299
    • it's unclear

      XML isn't the problem but using it appears to
      be so yes it could be dead. But then again
      Microsoft just got an XML patent that could be
      a workaround.

      See:

      http://news.zdnet.com/2100-9595_22-329645.html

      Very curious
      Larry Dignan
      • Time limit

        Hi, are there any limits on how long you can have a patent but not enforce it as 11 years and 2 versions, soon to be 3 versions of a product violating your patent seems a long time.
        planruse
        • So I'm hosed?

          So pretty much every piece of software I've written in the last 8 years that uses XML was done illegally? I realize its for "document manipulation" but that could be argued for almost any type of data manipulation these days if it comes out in the form of a report. I must be missing something here...
          charrisgw
          • We all are criminals...

            We just do not have enough money to be sued :)
            paul2011
          • That is exactly it.

            Notice they only go after Microsoft because that is where the money is. Look at Eolas. Same thing. Microsoft has to get patents to protect itself from others.
            Erroneous
          • I'm with MS on this. Legalised criminality, that's all this is.

            Luckily they're outnumbered by people with at least half a brain so it won't stick for too long.

            Oh, and follow the money, just to apply extra pressure ;-)
            fr0thy2
          • follow the money

            Hmm, WHAT IF we followed the money and found this to be a suit funded against M$ by M$ just to shut down XML? Might be a long shot... but... to make sure it is or isn't perhaps one should look closely at both companies. It might not be a M$ scam either and just a company wanting to try for "easy $$$" like SCO. (although it has been seen that SCO had M$ funds pumped into it before the linux allegations.)

            But yes... indeed... follow the money in and out to see where it goes or doesn't go.

            DaemonSlayer
          • Why is everyone against MS

            Its like everyone is against MS. Thats a bad thing. The more people are against them, The more they go.
            bolfakl
          • To bolfakl on "Why is everyone against MS"

            Becouse they have a bad track record of abusing other smaller companies (customers, "allies" and competitions).

            So it is actually fun to see them getting from the other side of the stick...

            But in this case I think it shows clearly that patent laws is sooo fucked up in US of A.
            Jxn
          • More made off of suing MS than their GDP

            Some companies and countries seem to make more money from suing MS than they make from providing value. It seems that so many, especially in Europe spend all their time laying traps for companies that actually produce value and then suing them than they make by making anything themselvs.
            TOO MANY LAWYERS!!
            anonymous
          • BAER only misses by degree ...

            All companies and countries that sue MS make more money from suing MS than they make from providing value.
            Too Old For IT
          • Re; We all are criminals. No. Not everybody.

            People OUTSIDE the US generally do NOT reckognize software "patents".
            It is mainly a north-american "fault".
            Elsewhere they see to much trouble and too little benefit from such a "contraption".

            So here is yet more evidence that software "patents" is a very silly idea.
            hkommedal
          • Not quite so

            as US companies has lobby other countries to take the same path. Like Japan and some european countries (and European Pattent Office).

            They tried to do this in EU, but got it back so badly, so it will at least take a couple of years till they try again.
            Jxn
          • How about sueing i4i for damages?

            You'd have to ask an attorney about this, but why not sue i4i for failure to properly disclose ownership, licensing policies and prices regarding their XML Patent.

            Withholding this pertinent information prevented you from producing legal programs that did not infringe on their Patent and other patented technology.

            I have not heard of i4i in relation to XML before. Have you?

            Seems to me, that this is a case of using the legal system to defraud people. That by the way, is illegal.

            At least I would hope it is.
            satovey@...
          • It's your job, not theirs.

            If you are going to market a product, then it is your responsibility to exercise due diligence in checking that you are not breaching anyone's rights in so doing.

            The patent office maintains copies of existing patents, so that you can check your proposed product against existing art. i4i have, by the requirements of the law, "properly disclosed ownership": it is for a potential licensee of their invention to apply to them for a license.


            If Microsoft failed to make a proper search, then it is their fault for that failing. If the patent office failed to maintain a system that enabled Microsoft to discover the pre-existing patent, then they may be at fault, though they are probably immune from action, being part of the state.

            The question of whether a patent should have been issued to either party in the first place is another matter entirely, as is that of software patents in general.
            philculmer
          • Royal dumbness

            >> If you are going to market a product, then it is your
            >> responsibility to exercise due diligence in checking
            >> that you are not breaching anyone's rights in so doing.

            Phil, I don't know what you do for living but you can't be
            in the software development or else you would have known how ridiculous is that claim of yours. No sane and honest
            software developer can read a software patent and understand
            it. Software parents are an abomination. They are
            meaningless bag of words thinly trying to obscure the
            obvious and make their claim seem to carry weight when it's
            not. Software patents are royal dumbness created to give
            jobs to leeches.

            As a professional software developer I know that I cannot
            write any non trivial function without violating countless
            number of idiotic software patents. Why then should I ever
            look at a patent or find the 4911 patents the function I
            wrote today 'violates'? Who is going to pay for this
            m*tubation activity?

            >> The patent office maintains copies of existing patents,
            >> so that you can check your proposed product against
            >> existing art.

            Great, why innovate? why create value? We can sit all days
            and read software patents until we die. This way, at least,
            we won't have time to write infringing code.

            >> i4i have, by the requirements of the law, "properly
            >> disclosed ownership": it is for a potential licensee
            >> of their invention to apply to them for a license.

            i4i should suffer greatly for this, just as Microsoft should
            suffer greatly for aggressively using their fake FAT patents
            against TomTom.

            Ooouch, I'm going to throw up.
            drorharari
          • Good idea, but

            Good idea, but you'd probably get further by just
            putting a contract out on the i4i legal team. In
            reality they are probably the biggest winners from
            this complete debacle..and therefore probably the
            ones driving this piece of legalised robbery.
            wez@...
          • MS knew all of that

            i4i and MS had been in discussion and MS had copiers of the i4i product/application and they basically said thanks but no thanks...then they included it in word.

            They knew and helped themselves anyway
            tom@...
          • The Patent System is seriously broken

            First of all, I am an XML developer and I develop applications that use XML for managing the content and formatting of structured legal documents. I have been doing this for 10 years now. I develop applications on top of various XML editors such as XMetaL and the like or I develop custom apps outright. The applications I write are used to write 10's of thousands of prominent documents every year.

            This patent is most alarming. Having submitted a patent myself (to protect myself from companies like I4i), I was alarmed at what it took to write a patent. Once everyone was happy, I know longer even understood what it was that I had "invented". As a developer expected to navigate the minefield of dubious patents out there, the task is impossible. First of all, even finding the patents is difficult. Secondly, interpreting them is next to impossible. The roundabout legalese that the attorneys drive towards results in patents that are non-sensical. I don't really even know what a software patent is anymore. I cannot, for the life of me, see the boundaries of what is and what isn't unique.

            It is depressing that companies like i4i even exist.
            JSALZ