Adobe-Macromedia suit: Born to settle? Pt II

Settlement or trial?

Those odds were echoed by David Pressman, a San Francisco-based patent lawyer and the author of Patent It Yourself and other books. "A few patent cases go to trial when there's no preliminary agreement, but usually the cost of a patent suit, which starts at $500,000 or more, is prohibitive," he said.

Pressman declined to venture whether the prohibitive cost factor would apply to a company the size of Adobe, which reported a record $95.8m profit in the second quarter of 2000 alone.

Aside from a lack of settlement, patent cases also go to trial when the plaintiff seeks an injunction against the defendant, Pressman said.

Although Paragraph 27 of Adobe's complaint mentions seeking a "temporary, preliminary and subsequently a permanent injunction" against the alleged Macromedia patent infringement, this is not the same as asking for an initial injunction, which could halt the sale of named Macromedia products, said intellectual property lawyer Rubin Turner, a partner at Turner, Aubert and Friedman.

Instead, he said, that paragraph puts in place Adobe's request for a permanent injunction against such products should Adobe take the case to trial and win.

"If they haven't filed for a temporary restraining order, which can be asked for before a hearing, in the complaint, they probably won't," Turner said. "In any case, a temporary restraining order covers a brief period of time -- about ten days." To get a preliminary injunction, which could also take effect before a trial but remain in place longer, Adobe would have to go before the court and prove the continued sale of named Macromedia products resulted in "irreparable harm" to Adobe.

"It'd be a mini-trial, in a way," Turner said.

Linda White, an Adobe spokeswoman, wouldn't say whether the company would seek either a temporary or preliminary injunction. She did say that Adobe's filing of the complaint was prompted in part by public demonstrations of the beta of Macromedia's Flash 5, which features a user interface that Macromedia officials explicitly described as "similar to Adobe's Photoshop".

"They were publicly taunting us," White said.

Adobe's complaint alleges that Macromedia publicly announced that such a user interface would become common across the company's products; the complaint also alleged that "one of Adobe's advantages over Macromedia in the marketplace has been the existence of the Adobe user interface", and that such an advantage would be lost should Macromedia adopt a similar design across its products.

White said Adobe had not been aware that the complaint's filing date, 11 August, was the same as that of Macromedia's shareholder's meeting.

According to White, Macromedia has 20 days from the complaint to file a response or request for an extension.

Before that, however, Macromedia could file for a change of venue, Turner said. Although both companies are incorporated in Delaware because of its less stringent corporate laws, both are headquartered in California.

"Usually, the principal consideration in place of filing is the principal place of business," Turner said. However, Macromedia would have to request the change of venue before it made any other move or lose the right.

Should the case go to trial, Macromedia's lines of defence are laid out in its press release, Pressman said. In that release, the company claimed that Adobe's claims are without merit, the patent is invalid and unenforceable, and Macromedia did not violate the patent.

"These are the common defences in patent suits," Pressman said. "The main defence is that Adobe's patent is invalid because it's not novel or unobvious over the prior art," he said. In this case, Pressman said, "prior art" would refer to previous user interface innovations outlined in Adobe's patent -- if Macromedia can prove that its use of moveable tabs in floating palettes is an obvious derivation from previous user interface elements, it has a change of invalidating Adobe's patent and complaint.

When asked if Adobe was seeking a settlement, company spokeswoman White said "What we're asking for is that they stop infringing on our patent. It's up to the court to decide how."

Go back to Pt I/ Born to settle?

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