UPDATE: Court Tells Microsoft To Stop Selling Word in U.S.

Microsoft lost a patent dispute with Toronto-based i4i LP, and has now been ordered to stop selling Microsoft Word in U.S. markets.

The issue concerned the use of "custom XML" in Word in the Microsoft Office 2003 and Microsoft Office 2007 productivity suites. A final judgment (PDF) issued on Aug. 11 by Leonard Davis, U.S. District Judge for East Texas, found that Microsoft "willfully" infringed on i4i's patent (U.S. Patent No. 5,787,449). A jury had handed down the verdict back in May.

The judgment orders Microsoft to stop selling Word products "that have the capability of opening a .XML, .DOCX, or .DOCM file ('an XML file') containing custom XML." In addition, Microsoft must pay $290 million in damages to i4i, as well as interest and other costs.

The ruling takes effect 60 days from the date of the judge's order, so if the ruling holds, Microsoft would have to stop selling Word in the United States by around Oct. 10, based on the court's conditions.

Microsoft didn't provide details on the case, but Microsoft spokesperson Kevin Kutz suggested that the company plans to fight the judgment.

"We are disappointed by the court’s ruling," Kutz stated in an e-mailed response. "We believe the evidence clearly demonstrated that we do not infringe and that the i4i patent is invalid. We will appeal the verdict."

Beyond XML
XML is a recommendation of the Worldwide Web Consortium and consequently is an open specification. However, i4i received a patent on a method of manipulating an XML document's content and architecture separately from each other.

"The invention does not use embedded metacoding to differentiate the content of the document, but rather, the metacodes of the document are separated from the content and held in distinct storage in a structure called a metacode map, whereas document content is held in a mapped content area," according to i4i's filing with the U.S. Patent and Trademark Office (USPTO).

The invention sounds a lot like using a schema to describe metadata for an XML file. However, it's apparently more complex and centers around i4i's custom XML.

"XML is clearly in the public domain," said i4i's Chairman Loudon Owen. "What we have developed at i4i is what's customarily referred to as 'customer-centric' or 'custom XML,' which is allowing people to create customer-driven schema -- we'll call it templates or forms. So, while XML is used to tag and to mark the data that's created, our technology is used to create the whole schema and the management of the data."

The invention goes beyond XML, according to Owen.

"XML in and of itself -- just like the letters in the alphabet -- is not terribly useful," he said. "This implementation leverages XML."

The dispute concerned Microsoft Word, but Owen suggested that other applications using the technology might be next.

"Clearly, if there are other applications using it and other parties using it, and we have validation of the integrity of the patent itself, it could have a wider ranging application."

Other Implications
The court's final judgment might even affect Microsoft's broader Office Open XML document format technology, which has been approved as an international standard (ISO/IEC 29500). Microsoft currently uses an earlier form of OOXML technology in Microsoft Office 2007 applications, such as Word, Excel and PowerPoint.

Michel Vulpe, the inventor of the patented i4i technology and founder of i4i, suggested that ISO/IEC 29500 might be affected.

"i4i will do its utmost to support custom XML users, which is particularly important to implement the ISO 29500 OOXML standard," Vulpe stated in a press release.

Owen provided further explanation about what Vulpe's statement might mean relative to ISO/IEC 29500.

"One, we are well aware of the standard and we clearly believe that it's a very important standard," Owen said. "Secondly, we believe this [patent] is potentially integral to the standard. And we've been in business since 1993. We're going to do whatever we can as a business to help people comply with the standard and support custom XML users."

Guy Creese, vice president and research director at the Burton Group, explained that the patent probably would not affect the OpenDocument Format (ODF), which is another international standard for document formats. The current version, ODF 1.1, doesn't use this custom XML approach. The next version, ODF 1.2, "supports a much richer metadata mechanism, but it's not custom XML-based, but rather RDF-based [Resource Description Framework]," he noted in a blog post. RDF achieves much the same effect as i4i's custom XML approach but it uses a different method, he explained.

The whole move toward using XML for document formats started in the first place because older binary file formats were proprietary to the software companies that devised them, resulting in document files that became unreadable as applications disappeared from general use, Creese noted.

On the idea that the Microsoft's other Office apps might be subject to litigation, Owen said that "we have not brought any other cases at this point."

i4i currently provides its XML technologies to life sciences companies such as Amgen, Merck and Bayer, Owen said, as well as other industries. For instance, the technology is used to help maintain the integrity of drug label data. The USPTO itself is a client and gave i4i an award for what they've done, he added.

Ironically, earlier this month, Microsoft was granted a U.S. patent on a technology that's also concerned preserving document formats using XML.

"The present invention is directed at providing a word-processing document in a native XML file format that may be understood by an application that understands XML," states the filing for Microsoft's patent (U.S. Patent No. 7,571,169), "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."

About the Author

Kurt Mackie is online news editor for the 1105 Enterprise Computing Group.

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Reader Comments:

Thu, Aug 27, 2009 Brian Patrie

Perusing the patent i find: "in sharp contrast to the prior art[,] the present invention is based on the practice of separating encoding conventions from the content of a document. The invention does not use embedded metacoding to differentiate the content of the document, but rather, the metacodes of the document are separated from the content and held in distinct storage in a structure called a metacode map" Gee. That sounds an awful lot like how Macintosh style resources have worked since the mid 1980s. How can they get away with claiming infringement of a patent that hinges upon the notion that there were thenceto no systems that kept serial formatting metadata in a separate structure, when it was part of one of the most fundamental components of a popular system that had been on the market for over 14 years at the time?

Tue, Aug 18, 2009 S.E.Brown Illinois

i4i is looking for a big pay-day from Microsoft. This is their economic recovery plan.

Mon, Aug 17, 2009 Dan Iowa

Sure, i4i doesn't claim a patent on XML itself; just on using it to represent a document. Come on! If this is allowed, then companies can get patents on every purpose that XML might be used for. Documents have been represented in a variety of formats for years; long before i4i existed. Just because an open standard comes along does not mean they can patent the use of it. It's time to make these kinds of frivalous lawsuits a criminal activity!

Mon, Aug 17, 2009 Frank Boyd Fredericksburg, VA

Nothing like having the USPTO, judges, and lawyers awarding patents and deciding cases that are steeped in technology topics they simply can't grasp. Much like awarding patents for human genes... Where was i4i during the lengthy ISO/IEC 29500 process? It was widely covered in the trade rags, and i4i had plenty of oppotunity to raise their concerns during the process. Do they really think they are the only developers that could come up with such a concept? This ruling should be thrown out.

Sat, Aug 15, 2009 Al Macintyre Evansville Indiana

The i4i patent is for the concept of instead of storing documents as one large file that combine both content (e.g., text) and formatting intermixed, they instead separate the content from the formatting markup into separate files, allowing content to be changed independently of style. However, the exact structure of the separation is not detailed in the patent, just the concept of separation.

This is the basis of IBM's external file definitions which goes back how far? When I converted from S/36 to AS/400 how many years ago (15?) it was new to me, but didn't S/38 also use this concept, which goes back how far? (gotta be at least to 1980's if not 1970's) This could invalidate the i4i patent.

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