Brian PrenticeIt’s gotten to the point where patent infringement actions in the mobile technology market are about as numerous as offshoots of The Real Housewives reality TV series. And the patents which feature so prominently in these cases seem to share many characteristics with the women in the TV shows – they’re more likely to be found in the middle of a confrontation then in any type of actual money generating activity and they’re convinced of their own unique talent when, in fact, they’re unoriginal and uninspiring.
Sadly the default solution to most patent infringement cases is a confidential, negotiated settlement. I say sadly because everyone else is left to wonder whether it was the quality of the patents that brought the defendant to the table or whether it was a simple economic decision that the cost of the agreement was cheaper then the cost of litigation.
So then, a big, fat shout out to Barnes & Noble. After having been sued (along with Foxconn and Inventec) by Microsoft for infringing a few of their patents in their Nook e-reader, they’ve decided to submit a court filing refuting Microsoft claims. And it looks like they decided to take the gloves off before doing so.
It has been my long held view that software and method patents are needed to support innovation in the IT industry. Especially since they’re a better option than the available alternative. Unfortunately, software and method patents are being debased as an entire category of IP protection by a slipshod review process. It’s gotten to the point where it’s nearly an act of faith to assume a software or method patent is valid before it runs through the court system. The presumption of patent validity, I might add, is a key point that Microsoft is arguing against in the Microsoft v. i4i case being heard by the Supreme Court at this moment.
If you’ve ever had the patience to wade through the dense and overly complex claim language surrounding most software and method patents you probably found yourself muttering “I’m pretty sure I’ve seen this before,” or “well, duh!” These are the types of responses that would indicate a patent claim is not valid. So it was quite insightful to read Barnes & Nobles’ careful examination of the novelty and non-obviousness of Microsoft’s patents they’re being accused of infringing upon. Consider their observation of patent 6,891,551 – Selection Handles in Editing Electronic Documents
“The asserted ’551 patent relates to using handles to change the size of selection areas for selected text. By 2000, when the ’551 application’s provisional was filed, text was routinely selected when reading, review or editing, and handles were routinely used to change the size of selections. The simple act of using handles for their very purpose–changing the size of selections—was neither novel nor non-obvious.”
Or how about patent 5,889,522 – System Provided Child Window Controls
“The asserted ’522 patent relates to nothing more than putting known tab controls into an operating system for use by all applications, rather than providing these tabs on an application-by-application basis. However, the specification of the ’522 patent makes clear that before the filing of the patent, prior art operating systems were already providing applications with a toolbox of common controls to utilize. While the prior art purportedly did not disclose the claimed tab controls in this toolbox, numerous applications already employed tabs to allow users to navigate between pages of information in the application. Simply putting existing tab controls into the toolbox already provided by the operating system was not inventive or patentable.”
On face value I think Barnes & Noble are making one heck of a compelling rebuttal. Of course, we need to wait for the courts to sort this out and I for one am hoping Barnes & Noble is prepared to see this through. Should they do so, and should the courts agree with their position, then that might well give many organizations pause to consider the veracity of Microsoft’s claims to a high quality patent portfolio.
But that’s not all folks! This filing also sheds light on manner in which Microsoft seeks to reach licensing agreements around their patent portfolio. Based on Barnes & Nobles comments it would seem Microsoft is prepared to use a negotiation style reminiscent of the its pre-DOJ days.
When this suit was originally announced, Microsoft Corporate Vice President stated “We have tried for over a year to reach licensing agreements with Barnes & Noble, Foxconn and Inventec.” Apparently a significant part of that time was negotiating an agreement simply to see where Microsoft believed their patents were being infringed. As Barnes & Noble points out:
“Microsoft had prepared claim charts purportedly detailing the alleged infringement but insisted that it would only share the detailed claim charts if Barnes & Noble agreed to sign a non-disclosure agreement (“NDA”) that would cover the claim charts as well as all other aspects of the parties’ discussions. Noting that the patents were public and that the infringement allegations pertained to Barnes & Noble’s public product, Barnes & Noble refused to sign an NDA”
Sorting this out took nearly five months but once an agreement was reached Barnes & Noble asserts:
“Tellingly, although Microsoft had insisted on entering into an NDA covering these claim charts, the charts did not contain confidential information but instead did nothing more than set forth the published claims of certain Microsoft patents on the one hand and publicly known features purportedly employed by the open source Android™ Operating System and the Nook ™on the other hand”
This certainly begs the question of why an NDA was being sought. I’m guessing that some people might conclude that a primary motivation could have been to limit the ability an organization using Android to coordinate a defensive response. Just as interesting was Microsoft proposed pricing. As the filing states:
“After sending the proposed license agreement, Microsoft confirmed the shockingly high licensing fees Microsoft was demanding, reiterating its exorbitant per device royalty for Nook™, and for the first time demanding a royalty for Nook Color™which was more than double the per device royalty Microsoft was demanding for Nook™. On information and belief, the license fees demanded by Microsoft are higher than whatMicrosoft charges for a license to its entire operating system designed for mobile devices, Windows Phone 7.”
Here again, if these assertions are accurate this would call into question the extent to which Microsoft is prepared to support a regime of reasonable and non-discriminatory (RAND) licensing around its patent portfolio.
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