Microsoft requests another hearing in Custom XML patent infringement case

Microsoft requests another hearing in Custom XML patent infringement case

Summary: Microsoft already has issued a patch that removes Custom XML from Office/Word 2007 after losing a patent infringement case involving that technology. But that isn't stopping the Redmondians from seeking another hearing in the i4i matter.


Microsoft already has issued a patch that removes Custom XML from Office/Word 2007 after losing a patent infringement case involving that technology. But that isn't stopping the Redmondians from seeking another hearing in the i4i matter.

On January 8, Microsoft filed a request seeking such a hearing. Kevin Kutz, Director of Public Affairs for Microsoft, sent me the company's statement via e-mail. It reads:

"Today Microsoft filed a petition with the United States Court of Appeals for the Federal Circuit for both panel rehearing and rehearing en banc in the i4i case. The petition details significant conflicts we believe the December 22 decision creates with established precedents governing trial procedure and the determination of damages, and we are concerned that the decision weakens judges’ authority to apply appropriate safeguards in future patent trials. We look forward to the next steps as the Court considers our petition, while continuing to move ahead with our plans to comply with the injunction by January 11, 2010."

From Microsoft's rehearing petition:

"This case is symptomatic of the new wave of patent litigation where aggressive plaintiffs substitute purported 'expert' testimony for actual evidence and seek lottery-like verdicts without any connection to the real world."

The Microsoft rehearing petition called the damages award ($200 million) "egregiously excessive." (That amount was supplemented by another near $100 million in fines, etc.)

In December, after Microsoft lost its appeal and the Federal Circuit Appeals Court awarded i4i nearly $300 million in the patent infringement case, Microsoft was told it had until next Monday, January 11, to remove the offending technology from copies of Office and Word that were sold on or after that date.

Late last year, Microsoft issued a patch for OEMs designed to remove Custom XML from Office 2007 and Word 2007.

Before the ruling, Microsoft officials warned of major disruption to its customers and partners if it were told to remove Custom XML from its products. After Microsoft lost its appeal in the case in December, its officials said that few individuals actually used Custom XML.

The Custom XML ruling has no impact on SharePoint or any other Microsoft technologies outside of Office and Word 2007.

Update: It seems Custom XML is part of Office 2003 and Word 2003, as well. Microsoft has pulled Office 2003 from its MSDN and TechNet sites and is attributing that decision to the i4i court ruling. I've asked Microsoft for further information on Custom XML and Office 2003 and will add any further specifics once I hear back. Here's more info on how to tell whether your version of Office is affected by the ruling, from a posting by a Microsoft official official in December.

Microsoft did not include Custom XML in the beta builds of Office 2010, company officials said. Custom XML is not related to Open XML; instead, it is technology for adding support for custom-designed schemas that is designed to integrate business data and processes with documents.

Topics: Collaboration, Microsoft, Software


Mary Jo has covered the tech industry for 30 years for a variety of publications and Web sites, and is a frequent guest on radio, TV and podcasts, speaking about all things Microsoft-related. She is the author of Microsoft 2.0: How Microsoft plans to stay relevant in the post-Gates era (John Wiley & Sons, 2008).

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  • but nobody listens

    M$ just wants to get off cheaper.
    They won't contest the patent validity.
    Linux Geek
    • //Troll-bat



      "The views expressed here are mine and do not reflect the official opinion of my employer or the organization through which the Internet was accessed."
      • Unless . . . .

        That thing is made of Titanium, all you're gonna do is damage your bat . . . . ;)
    • Patents are profitable

      Blame Marty Goetz and even he doesn't like the direction software patents are going but yet he used software patents to force IBM's hand and got rich in the process, what did he think was gonna happen, not only did he attain the first software patent, he showed the world how to utilise it to generate huge amounts of money from other companies (through licensing or suing).

      Where software patents get even messier is when companies are formed specifically to patent software and then charge royalties or license fee's (with no intention of commercializing said software) to generate profit. Others patent software to use as bargaining chips with other software manufacturers/developers (sound familiar).

      It's a vicious circle.

      So if i'm in the software business then i'm gonna have to use software/hardware patents to protect my interests, so before a software is even designed, patents are being drawn up to protect such software against the above described companies and piracy. Everybody's doing it hence the number of court battles, and it will continue long into the future.

      A consequence of capitalism.

      The real issue is about software protection and revenue protection because that's what software patents should be about and not profit.

      Its just ashame most OSS fans have forgotten who there enemies are (anyone that utilizes software patents). So focused on MS they forgot about the rest when MS is one of the biggest (free) cross license contributors to OSS and is the very reason they can write applications like GIMP, OO and the likes.

      Other companies would have gladly retained exclusivity of their software patents and seen the entire OSS community eventually collapse as a result.

      Yes software patents are messed up, but its the only means in which these companies can protect their products, hence protect revenue, just think, if it wasn't there what would i4i have done to stop MS, surely most of you would have been screaming blue murder.

      And guess what, MS and any other major company can still get round patents (any kind of patent), they just buy the company that owns the patent, hence hostile takeovers, ask Google, ask Apple, ask Red-Hat, ask Sony, ask Tesco's and the list goes on, this is how its done and its been going on for years, some would call it aggressive (based on personal opinion), companies call it business, product and revenue protection.
  • RE: Microsoft requests another hearing in Custom XML patent infringement case

    As they should! There is no way i4i should be able to get away with this extortion of money. After Microsoft wins they should counter-sue i4i. Microsoft is doing this for you and for all of the XML world. People aren't realizing it but Microsoft is actually on your side.
    Loverock Davidson
    • Believe it or not I found your drivel so funny that...

      I almost peed myself laughing.

      You're funny man, hope you have more like that.

      Bring it on!
      The Mentalist
    • However...

      It would appear that no one other than Microsoft is infringing on the i4i patent, so how is Microsoft doing this for the "XML world?"

      Who knows, next you'll be claiming that Microsoft invented XML and the world should bow down and pay them for the great and stunning innovation from the shiny polished folk at Redmond..
      • Pretty soon...

        he'll be claiming Microsoft invented letters, without which we wouldn't have X, M or L. They only want what's best for us, after all. That's why they pursue the same kind of litigation whenever they feel their intellectual rights have been violated.
    • 9.5

      You're still no Mike Cox, but the "Microsoft is actually on your side" should have been thrown out there two weeks ago for consideration as the funniest quote of the 00's. I'm still chuckling.
      • 8.0, at best.

        If a perfectly good line hadn't be grammatically butchered, I'd probably go a bit higher. Nowhere near Mike, but getting better.
        Dr. John
    • XML is 'FOR' exchanging data.

      [i]There is no way i4i should be able to get away with this extortion of money.[/i]

      This is exceptional for me, defending Microsoft, but I completely agree with LD and Microsoft.

      XML is a generic grammar for data exchange, you should not be able to patent this use. It's like patenting burning things with fire. The i4i patent is one of the worst examples of a frivolous patent that I have ever seen. So exceptionally bad that it totally trumps my enjoyment at seeing Microsoft lose a court case.
      • Custom XML

        is not XML. You can still use XML as a generic grammar for data exchange.
        Viva la crank dodo
        • XML is useless without a schema

          This probably means nothing to you though, as do the words 'deadline,' and 'money.'
      • MS TOOK the i4i product/solution

        The patent specifically covers a method/process for adding this editing capability to word.

        MS had copies and had a demo from i4i and added it anyway, bypassing the i4i product.

        Their product is an add on to word and is a REAL product that has been available for several years prior to MS adding it to word
        Tom in Toronto
        • And?

          They didn't invent anything. This is just another example illustrating that patent clerks are rarely qualified to judge the patents they review.

          Just because someone releases add-on application for your product doesn't mean you can't at some point at it yourself to the base product. What you say implies we should all have to buy brake pads separately from new cars because delphi doesn't hold the patent on them.
          • Google docs = patent infringement

            Good assessment. This ridiculous anti-MS "patent infringement" crap has been going on forever. I do believe MS is guilty of legitimate wrong-doing in many of the cases it is accused of. But this does not make it guilty by default, which is where these mindless patent cases seem to be based on.

            Corel WordPerfect should sue Google docs for patent infringement of their content-editing software, correct?
          • And...

            The fact remains, i4i had a legal patent, whether you personally agree with its validity or not is beside the point. The courts did. Once again MS took what wasn't theirs and did what they wanted with it as if they were above the law.
      • ( )1

        I don't personally care for xml, I think it offers no advantage to defined data formats when you consider that all xml has to have a schema to be useful, and even then it's at least 70% non-sequitur data.

        That being said, what they're patenting here, shouldn't be patentable. It's akin to patenting the letter T. A derivative implementation of a technology that is so boneheaded everyone implemented it on their own to the degree of ubiquity, should not be patentable. That in mind, I see this as a money grab, because most every company using xml violates their patent.

        It's ralph baer all over again.
        • So how do you feel about Microsoft patenting page up / page down keys?

          [i]"The software giant applied for the patent in 2005, and was granted it on August 19, 2008."[/i]
          • That depends!!!

            If there using the patent to stop manufacturers from including said keys on there keyboards or stopping developers from using said keys then i have a big problem with that.

            However, if the patent was made to protect MS products then i have no qualms. If MS was able to acquire such a patent, then what would have stopped someone else doing the same and then forcing any company to pay for its use or suing for usage, forcing companies (including MS) to exclude page up and page down features in their software.

            Take a look at Compton's NewMedia Inc.