Microsoft Ordered to Stop Selling MS Word

Along with $200 million in compensatory and $40 million in punitive damages, a Texas court has ordered Microsoft to stop selling Microsoft Word for violating i4i Ltd.’s U.S. Patent No. 5,787,449.  See U.S. Patent No. 5,787,449, the  Permanent Injunction and the Final Judgment.  Below is a portion of the Court Order:

In accordance with the Court’s contemporaneously issued memorandum opinion and order in this case, Microsoft Corporation is hereby permanently enjoined from performing the following actions with Microsoft Word 2003, Microsoft Word 2007, and Microsoft Word products not more than colorably different from Microsoft Word 2003 or Microsoft Word 2007 (collectively “Infringing and Future Word Products”) during the term of U.S. Patent No. 5,787,449:

  1. selling, offering to sell, and/or importing in or into the United States any Infringing and Future Word Products that have the capability of opening a .XML, .DOCX, or .DOCM file (“an XML file”) containing custom XML;
  2. using any Infringing and Future Word Products to open an XML file containing custom XML;
  3. instructing or encouraging anyone to use any Infringing and Future Word Products to open an XML file containing custom XML;
  4. providing support or assistance to anyone that describes how to use any infringing and Future Word Products to open an XML file containing custom XML; and
  5. testing, demonstrating, or marketing the ability of the Infringing and Future Word Products to open an XML file containing custom XML.

This injunction does not apply to any of the above actions wherein the Infringing and Future Word Products open an XML file as plain text.

This injunction also does not apply to any of the above actions wherein any of the Infringing and Future Word Products, upon opening an XML file, applies a custom tranform that removes all custom XML elements.

This injunction further does not apply to Microsoft providing support or assistance to anyone that describes how to use any of the infringing products to open an XML file containing custom XML if that product was licensed or sold before the date this injunction takes effect.

This injunction becomes effective 60 days from the date of this order. 

In accordance with the Court’s contemporaneously issued memorandum opinion and order in this case, Microsoft Corporation is hereby permanently enjoined from performing the following actions with Microsoft Word 2003, Microsoft Word 2007, and Microsoft Word products not more than colorably different from Microsoft Word 2003 or Microsoft Word 2007 (collectively “Infringing and Future Word Products”) during the term of U.S. Patent No. 5,787,449:

1.      selling, offering to sell, and/or importing in or into the United States any Infringing and Future Word Products that have the capability of opening a .XML, .DOCX, or .DOCM file (“an XML file”) containing custom XML;

2.      using any Infringing and Future Word Products to open an XML file containing custom XML;

3.      instructing or encouraging anyone to use any Infringing and Future Word Products to open an XML file containing custom XML;

4.      providing support or assistance to anyone that describes how to use any infringing and Future Word Products to open an XML file containing custom XML; and

5.      testing, demonstrating, or marketing the ability of the Infringing and Future Word Products to open an XML file containing custom XML.

This injunction does not apply to any of the above actions wherein the Infringing and Future Word Products open an XML file as plain text.

This injunction also does not apply to any of the above actions wherein any of the Infringing and Future Word Products, upon opening an XML file, applies a custom tranform that removes all custom XML elements.

This injunction further does not apply to Microsoft providing support or assistance to anyone that describes how to use any of the infringing products to open an XML file containing custom XML if that product was licensed or sold before the date this injunction takes effect.

This injunction becomes effective 60 days from the date of this order.

David Kappos Confirmed as New Director of the U.S. Patent & Trademark Office (USPTO)

*** From the USPTO August 7, 2009 ***

David Kappos Confirmed as Patent and Trademark Office Director
The U.S. Senate today confirmed David Kappos as the new Under Secretary of Commerce for Intellectual Property and Director of the U.S Patent and Trademark Office (USPTO).

U.S. Commerce Secretary Gary Locke issued the following statement:

“We are grateful to the Senate for its swift confirmation of David Kappos to lead the U.S. Patent and Trademark Office. “It’s no secret that the agency currently faces significant and persistent challenges, but David is the right person to meet them and carry out my top priority for the USPTO — dramatically reducing the unacceptably long time it takes to process patent applications.”

Kappos Background

Over a 20-year career, David Kappos has accrued deep knowledge of the patent system and broad respect from professionals across the field – including the biotech, life sciences and high tech sectors. Most recently, he was the vice president and assistant general counsel for intellectual property at IBM. Specifically, Kappos managed IBM’s patent and trademark portfolios – protecting and licensing intellectual property worldwide.

He takes control of an office that provides incentives to encourage technological advancement and helps businesses protect their investments, promote their goods and safeguard against deception in the marketplace. The office continues to deal with a patent application backlog of more than 770,000, long waiting periods for patent review, information technology systems that are regarded as outdated and an application process in need of reform.

Recently, Kappos has served on the Board of Directors of the American Intellectual Property Law Association, the Intellectual Property Owners Association, and the International Intellectual Property Society. He also has been the Vice President of the Intellectual Property Owners Association. He has held various leadership positions in intellectual property law associations in Asia and the U.S. and has spoken widely in Asia, Europe and the U.S. on intellectual property topics.

Kappos received his bachelor’s degree in electrical and computer engineering from the University of California-Davis in 1983, and his law degree from the University of California Berkeley in 1990. He joined IBM in 1983 as a development engineer and has served in a variety of roles before taking his current position, including intellectual property law attorney in IBM’s Storage Division and Litigation group, IP Law Counsel in IBM’s Software Group, assistant general counsel for IBM Asia/Pacific, IBM Corporate Counsel and assistant general counsel.

Benefits of Using Provisional Patent Applications for Inventors and Small Businesses

Provisional patent applications (PPA) can be an extremely valuable tool for inventors and small businesses. PPAs provide inventors with one-year of “patent pending” and then automatically expire. It is therefore important to have a formal patent application (a.k.a. “non-provisional patent application”) filed during this one-year pendency period so your formal patent application is able to claim priority to the PPA’s earlier filing date.

A well-drafted PPA can potentially be licensed or sold to a third-party during the one-year period of patent pending. It is important to note that a poorly drafted PPA can have the opposite effect by deterring a potential purchaser or licensor. Also, if you are manufacturing displaying your product or displaying it at a product show, you can put the “Patent Pending” notice on the product during the one-year period.

Finally, a PPA is significantly easier to draft than a formal patent application which requires the complex claims section and is examined by the U.S. Patent & Trademark Office. Using commercial tools such as PatentWizard software (owned by Neustel Software, Inc.), you will be able to easily prepare your own quality PPA at a fraction of what a patent attorney would charge – and you just might write a better PPA!

Federal Circuit Agrees to Rehear Controversial Tafas v. Doll

On July 6th, the Federal Circuit granted a petition to rehear the Tafas v. Doll case which a 3 judge panel previously held that the USPTO had authority to adopt rules limiting the number of patent claims in a patent application and the number of requests for continued examation (RCE), although it could not limit the number of continuation applications.  This is an important case for inventors and businesses because if the previous decision is upheld patent applicants (1) will be significantly limited in the number of claims they can include in a patent application and (2) have to file continuation applications instead of the faster RCE route.  See the Tafas v. Doll Order.

Michael Jackson Patent

Many people believe Michael Jackson is just a singer and performer when he also was an inventor of a patent on a “Method and Means for Creating Anti-Gravity Illusion” (U.S. Patent No. 5,255,452).  The patent is for a shoe system that allows the shoe wearer to lean forwardly beyond their center of gravity (a slot within the heel of the shoe would removably engage a hitch member on the stage by the wearer simply sliding the shoe forward).  See U.S. Patent No. 5,255,452.

USPTO Revenue Dropping

Reuters is reporting that the U.S. Patent & Trademark Office revenue has dropped from $6.9 million a day in January (2009) to just $5.9 million a day last week.  This is a result of the dramatic decrease in patent allowance rates the past three years combined with the poor economy.  The USPTO is seeking to temporarily transfer a portion of the trademark surplus to help out.

BPAI Reports Dramatic Rise in Appeals in January 2009

The Board of Patent Appeals and Interferences (BPAI) has reported a large increase in BPAI appeals and in its backlog.  The backlog of appeals has almost doubled to over 10,000 pending appeals.  This is the result of the USPTO implementing strict review procedures which have result in an allowance rate of only about 42% (historically the allowance rate has been around 70%).  Changes are occuring at the USPTO as I write this post, so we should see the BPAI appeals level off before the end of the year (and hopefully see the allowance rate get to a healthier level).