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Microsoft Looks to Supreme Court as i4i Patent Confirmed

The U.S. Patent and Trademark Office (USPTO) confirmed i4i's patent, sending another blow to Microsoft's legal strategy to deny intellectual property claims surrounding i4i's "custom XML" technology.

Toronto-based i4i announced on Tuesday that the USPTO had "issued a Reexamination Certificate" (PDF). The certificate confirms U.S. Patent No. 5,787,449, which contains i4i's invention claims for an XML-based technology that was used in Microsoft Word. Microsoft has been engaged in a losing legal battle with i4i concerning the technology after a Texas jury found in 2008 that Microsoft had "willfully infringed" i4i's patent.

i4i made a similar claim back in May that the USPTO had confirmed the validity of the "449" patent. However, Loudon Owen, i4i's chairman, clarified what actually happened in a phone interview on Tuesday.

"Earlier, they [USPTO] issued a notice of intent. They said it is our intent to issue a reexamination certificate, which means a patent is reinstated," Owen said. "What happens is when you are put into reexamination, the Patent Office has to put the legal onus back on the patent owner. And the way they do that is through a phrase where they say your patent is declared 'provisionally invalid.' So that puts the onus back on the Patent Office that it is indeed a valid patent.

"What happened in May, is that the Patent Office said that they intended [to issue a] Notice of Intent to Reissue the Certificate (NIRC) and reinstate the patent, but they hadn't actually issued it. And of course there's been a lapse of time from May until now," Owen said. "But this is the definitive statement, based on the information we have as of today from the patent office, and the patent is reinstated."

Microsoft now appears ready to take the battle all of the way to the Supreme Court. On June 8, Microsoft petitioned the Supreme Court to delay its appeal (PDF download), and that delay was granted, according to Owen.

"As far as we know, Microsoft has declared its intention to file with the Supreme Court a petition for cert [certiorari]. And they actually obtained the permission of the Supreme Court to file it late," Owen said. "So they asked, and they now have until August 27 to file their petition for cert."

If Microsoft files with the Supreme Court, i4i will have time to respond, which is typically about 30 days, Owen said. After that time, it's anyone's guess what happens.

"We think their appeal path has been exhausted, but I never say 'never,' and you just don't know what Microsoft will do," Owen said.

About the Author

Kurt Mackie is senior news producer for 1105 Media's Converge360 group.

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